Protecting a Trademark

The company must realize a structural policy of Industrial Property to coordinate the legal and commercial department. Both departments must know the geographic zones of marketing products and services, as well as, the actual and future product and service portfolio to protect them around the world as trademark.

The areas of products and services protection are in keeping with a triple typology of trademark:

  • National Trademark

If the company consider that their activity never seriously develop outside Spain –neither will establish out nor will export-, then the products and services protection is sufficient in that/those class/es of the corresponding Nice Agreement through a national trademark.

The national trademark is granted to the applicant following an administrative procedure provided in the Spanish Trademark Law and staffed by the Oficina Española de Patentes y Marcas (Spanish Patent and Trademark Office «SPTO»). The owner wins the exclusive right to use it for ten years, renewable indefinitely for periods of ten years.

The national trademark, once is granted, protects the exclusive rights to use the sign in the market, to trade products and services covered to the trademark in those classes corresponding Nice Agreement chose by the applicant.

The owner has the right to avoid the use of his trademark (or any similar sign) by any third party, without its consent, to trade similar products or services.

The owner has the obligation to use the trademark to avoid the revocation for lack of use, as well as, renovate the trademark if his intention is still using the protected sign.

Link to Spanish Trademark Law

Link to the proceeding before the SPTO

 

  • European Union Trademark

If the company consider that their activity will develop internationally in any European Union country, may be willing to protect their products or services through a European Union trade mark.

The EU trade mark is a sign, provided by the Regulation (EU) 2017/1001 of the European Parliament and of the Council, of 14 June 2017, on the European Union trade mark, that once is granted following an administrative procedure staffed by the European Union Intellectual Property Office (EUIPO), and through the payment of an administration fee, allows the owner the exclusive use of the trade mark in the European Union as a whole.

The EU trade mark, once is granted, protects during ten years the rights to trade, in exclusive, products and services covered to the trademark in those classes corresponding Nice Agreement chose by the applicant.

The owner has the right to avoid the use of his trade mark (or any similar sign) by any third party, without its consent, to trade similar products or services.

The owner has the obligation to use the trademark to avoid the revocation for lack of use, as well as, renovate the trademark if his intention is still using the protected sign.

Regulation (EU) 2017/1001 of the European Parliament and of the Council, of 14 June 2017, on the European Union trade mark

Link to the proceeding before the EUIPO

 

  • International Trademark

If the company consider that their activity will develop internationally beyond the border of the European Union, has two options to protect their products and services:

a) File a trademark application with the trademark office of each country in which you are seeking protection (see above national trademark), or...

b) you can use the Madrid system to file an international trademark if the selected countries have signed the international agreement.

The international trademark allows the extension of a national trademark in the selected countries, if they have signed the Madrid Agreement and the Madrid Protocol. Both are international agreements staffed by the World Intellectual Property Organization (WIPO).

The distinctive feature of the international trademark lies on the fact that the procedure allows the owner of a trademark extends the protection of a national trademark, in several countries, using a single procedure.

The trademark office of each country (in Spain, the Oficina Española de Patentes y Marcas), will send the application for the registration of an International trademark in several countries to the WIPO, with headquarters in Geneva. Later, the WIPO will send the application to the trademark office in the countries selected, moment wherein the application is divided in a bundle of national applications following a single procedure in that country.

Link to Madrid Agreement

Link to Madrid Protocol

Link to proceeding before the WIPO