Trade Mark Registration
A trademark is a recognizable sign by the consumer, a design or expression that serves to distinguish goods or services of a particular trader from those of other traders. Trademark registration and the rights conferred are territorial, meaning that they must be registered on a country by country basis. Therefore, you need to choose where you would like to register your trademark; commonly this should be in the countries where you intend to use it.
Registering a trademark for your product or business is a must, regardless of the size and scope of your company, being a valuable asset that will ensure protection of your brand, being a connection in the public mind between the provider and the goods and services provided, a marketing tool that will serve to let your customers recognize your products and services as well as their quality, to protect and differentiate them from those of your competitors, adding value to what you are doing in the marketplace you are operating in. It is the most effective protection against infringement and unfair competition, considering that a successful brand will inevitably attract competitors.
How Abecsa Can Help You? The value-added trademark services we provide can be summarized as follows:
Plan Your IP Strategy. We can help you plan your IP protection strategy in the related territories, according to your needs and budget, but always with the aim to obtain the widest protection as possible by also avoiding common filing mistakes that could suppose a threat to the validity of your IP rights in the future.
Full Assistance. Abecsa can represent and assist you if you in all the process if you want to register a Spanish National trademark (OEPM) or a European Union Trademark (EUIPO) and later, if you would like to designate other countries through the Madrid System (WIPO) for International Trademark Registration or via National Trademark registration directly in the countries of interest. Our fees for trademark filings, prosecution and registration are fixed for each stage or action to take in each national or regional Office of our jurisdictions so you can foresee the estimated costs for your trademark protection in these territories.
Search Services. We will conduct a free basic search in Spain and in several European Registers to help you finding a legally available trade mark for your new product or business before we apply for the desired trademark on your behalf and prior to using a new product or business name by checking any earlier trademarks that could conflict with yours by finding, if they are identical or confusingly similar. Our trademark search service can save you time, and a fortune in wasted design and incurred advertising costs, efforts and can evade your potential legal liability in using by mistake a very similar name to someone else’s registered trademark. If you wish, we could also carry out an in-depth and comprehensive clearance search with our written search report and a risk assessment, by using tools and databases that are not publicly available. This is a highly skilled work that should be conducted by a specialized trademark professional.
Trademark Filing. The initial strategic steps are decisive to achieve success in the future with your trademark, therefore we take particular care and assist on the following features:
- Where to register your trademark. Depending on the countries where you are currently doing business with your brand or where you would like to expand to in the nearest future, we can plan and give advice on the best routes to take for trademark filing; National, EU, International, which we will electronically file in your name.
- What & How to protect. We will evaluate the predominant visual elements of the sign and/or propose to exclude those which may negatively affect your trademark or trade name protection, bearing in mind both how will the mark be represented (logo, design or standard characters), the scope of the classes and specification of goods and services that should be comprised, such as how your mark will be used, business sector, but eliminating any specific good, service or other element that could conflict with other’s trademark.
- When to apply. Commonly it should be filed as soon as possible ensuring you are the first-to-file. However, if your trademark application is about to be filed but its availability is likely to be threatened by a prior mark or be uncertain along the procedure, we would see and propose when this trademark should be filed (priority) so we minimize or avoid undesired conflicts with others.
- Who. The applicant(s) and hence the ownership of the trademark should be always held by person or legal entity who will likely use the sign in invoicing, who markets the intended goods or makes the advertising and promotional investment.
Prosecution and Management. We will monitor the whole process of your trademark application until it is finally registered and duly inform you of every official communication we receive from each Office, along with our preliminary advice on the step to take, if needed, as well as by sending you the publications and informing you of all deadlines to have in mind, including reminders and next renewal due notices, well before the given time limit, in order to avoid extra charges or any resulting loss of rights.
Defense – Office Actions. If your trademark is objected by the Spanish Office (OEPM) or European Trademark Office (EUIPO) based on formal requirements or if it is opposed by a third party, we can study the cited grounds for refusal or the relevance and differences of the earlier right on which the opposition has been based and file the Office action response in defense of your rights within the given time limit, by designing the adequate strategy so we likely ensure success and obtain the desired registration of your mark, and hence a solid enforceable trademark protection. – Litigation. In enforcement, we can represent and assist either the claimant or the defendant in trademark rights infringement and unfair competition proceedings with the Spanish and European Courts.
Watching Services. Abecsa will provide its clients with a watch service, keeping an eye on what third parties are attempting to register. If we find a new published application that might be potentially conflicting with your prior rights, then we will send you an alert proposing you the filing of an opposition within the statutory deadline of the Office in question.
Main points About Trademarks
What Trademarks Can Be Registered? Any sign capable of being represented graphically, in particular words, names, including personal names, designs, letters, numerals, the shape of goods, their packaging (they may consist of two-dimensional or three-dimensional elements), slogans, sounds, solely or in combination, as long as it is distinctive for the goods and services you sell or provide and sufficiently far from other registered trademarks for the same goods or services. Besides the protection of individual marks, many countries of our jurisdictions may allow registration of collective and certification marks.
Collective Marks. For signs which may distinguish products as geographical indications or origin, material, mode of manufacture or other common characteristics and quality of goods or services of different enterprises that use the collective mark. The owners can be associations, public institutions or cooperatives. These applications must go along with the regulations that rule the use, by which the defined membership standards and use by SMEs of the collective mark must be met.
Certification Marks. For signs which guarantee that the products involved comply with the required quality standards. These are not restricted to any membership. These are to be owned and certified by a competent entity or organization, who may inform the consumers that the product has been validly checked and complies with the necessary requirements.
Suggestions for Choosing the Ideal Brand Name:
We can help you determine if the name you have devised and adopted for your trademark is likely to pass the examination process, avoid a possible third-party opposition or official objections and desirably get registered straightforward, but also taking care that all the relevant aspects are covered for the intended trademark protection. Not all names can be trademarked. You should choose a “unique” name, the shorter the better and easier to be recalled, be sure it is yours only, preferably if it is not a real word. Although some allusive words may be accepted, you must avoid names that describe the character or quality of goods or services to be trademarked or any common terms which other traders can legitimately use in the conduct of their business. If you find other potential conflicting brands or businesses using the same name, try choosing a different name, which you must create especially for the products or services you will offer.
Classification of Goods and Services. A trademark must specify the goods and services on which the mark is used or proposed to be used in the near future. All goods and services fall into 45 categories or classes of the Nice Classification.
Validity. Spanish, International Trademark Registrations and European Union Trade Marks last forever if maintained by payment of renewal fees, extending their validity for subsequent ten year periods.
Unregistered Marks. Whenever an unregistered mark has been used in goodwill prior to when the plaintiff’s mark was filed, it may be determined, if sufficiently proven, that both could coexist in the marketplace, even if they are very similar. However, it is preferable to register your trademark or trade name, because without registration it can be very difficult to protect and to prevent others from using your mark. Although trademark rights derive from both use and registration, it will be significantly easier to bring legal action against third party’s infringements or unfair competition acts if your trademark is duly registered and in force.
Registered Trademark. Once your trademark has been registered you can then use the ® or ™ symbols (this is usually placed on the top right of the trademark) on all your business’s marketing material, confirming the trademark is registered and act as a warning to any unfair competitors seeking to copy or imitate your mark.
Please do contact us via our contact form if you need advice on any trademark issues such as:
- Registering your brand in Spain, Europe or in multiple countries, or looking for the associated trademark searching and trademark watching services.
- Opposing a Spanish or European Union trade mark applied for registration by others.
- Defending your challenged Spanish, European Union trade mark or IR designating Spain or the EU, from oppositions, appeals or cancellation actions.
- Taking legal action against another person or company who is infringing your trademark right in Spain or in Europe.
- Renewing your trademark for another ten-year-period.
- Licensing the use of your trademark or selling your portfolio ensuring the recordal of assignment of some or all the trademarks to the buyer.
Confidentiality. It would be advisable that you do not disclose your trademark protection plans to avoid others registering it before you. However, you can safely discuss them with us, because as registered trademark and patent attorneys and lawyers, any information you disclose to us is legally privileged and confidential, using it strictly for the purpose or needed service we are instructed to handle in your name.