What is a trademark and why is it important to protect it internationally?
An brand is much more than a name or a logo.
It is the sign that identifies and distinguishes products or services of a company compared to its competitors in the market.
It can take many forms: a word or set of words, numbers, letters, images, symbols, designs, three-dimensional shapes, and even invisible elements such as sounds or fragrances.
From a legal point of view, a trademark constitutes a intellectual property rights which can be registered to ensure its exclusive use.
This gives the owner the power to prevent third parties from using identical or similar signs for related products or services.
Registering a trademark is not just a formal matter: it is a strategic decision which directly influences the differentiation of the company, its market positioning and protection against possible imitations or misuse.
In fact, it often becomes a real problem. quality indicator, generating trust among consumers and acting as a powerful marketing and loyalty tool.
How long is a trademark protected?
El Trade mark confers rights for an initial period of 10 years, renewable indefinitely, provided that the corresponding legal requirements are met.
Where is a registered trademark protected?
Protecting a Brand It is not automatic worldwide.
The geographical scope of protection will depend on the location where the registration was requested.
Thus, a trademark can be registered:
- Only in Spain (national registry).
- In the European Union (EU trademark).
- Or in several countries through mechanisms such as the System Madrid of WIPO.
What are the advantages of registering a trademark?
Usually, We companies understand the need to differentiate our products or services in the market through a brand.; however, we do not value their protection enough.
Registering a trademark grants a sole right about a brand.
That is, it prevents third parties from using it and marketing their products or services under the same brand as your company, and if they do so, they may be subject to legal proceedings.
A brand is representative of business values and strategies, so the success of the company may depend on its reputation.
Who doesn't know Coca Cola?
How to protect a Spanish brand internationally?
As we have already commented on several occasions, internationalize a company It is not just about exporting, it is about gaining recognition in a particular market in which you normally operate.
Therefore, to enter a market, we must also work on our brand, both in terms of its adaptation to the target market and its international protection.
The international brand It is a system with which a brand can be protected simultaneously in several countries, provided that they are covered by the Arrangement of Madrid and Protocol Madrid about international brands.
Today 80 countries they are part.
However, to register a trademark internationally according to the system of Madrid, we must always start from its national protection.
The trademark that is intended to be registered internationally must be identical to the trademark applied for in the country of origin.
In fact, The international trademark is dependent on the national trademark for the next 5 years from registration.
The cancellation, revocation or expiration of the national trademark will cancel the international trademark in all designated countries.
Process to protect a Spanish brand abroad
The international brand It may be requested by both natural and legal persons provided that, in this case, have their domicile in Spain.
To apply for international trademark protection, a single request, in a single language and paying a single fee in Swiss francs.
This protection may subsequently be extended to member countries.
The registration procedure for an international trademark follows 3 phases:
1. Spanish Patent and Trademark Office
The application will be received and a formal examination will be carried out with which It is verified that all the data displayed coincide with those of the national brand.
Once completed, the request is sent to the WIPO.
2. World Intellectual Property Organization (WIPO)
This institution will conduct a formal examination again.
Then will publish the brand with an international number in the WIPO International Trademarks Gazette.
3. National Office of the requested country
Each country is part of the international registry.
That is, the international trademark will have the same effects in the destination country as a national application from that country.
Therefore, the country of destination, in accordance with its national legislation, will study whether or not the international trademark with designation in that country should be recognized.
To To file the application for an international trademark, it is necessary to attach the established forms MM1, MM2, MM3.
How to protect a Spanish trademark in the European Union?
If you wish to extend the protection of your registered trademark in Spain to the rest of the countries of the European Union, you can request a European Union trademark.
This figure offers unitary protection in the 27 EU Member States through a single process and a single procedure.
What is a European Union trademark?
La European Union trademark It is a distinctive sign that allows products or services to be identified throughout the European territory. It has a character unitary, which means that it can only be registered and granted for the entire territory of the European Union as a whole, not partially or individually by country.
Where do I apply for an EU trademark?
There are two ways to file a European Union Trademark application:
- Through the EUIPO (European Union Intellectual Property Office), based in Alicante.
- Through the OEPM (Spanish Patent and Trademark Office), headquartered in Madrid, which acts as an intermediary and forwards the application to the EUIPO.
How is the application submitted?
The process is simple and can be done entirely online through the portal of the EUIPO, where an electronic form is enabled to register the trademark.
This process can be done online through the following form:
Tips for completing the European Union trademark application form
Although it may seem easy, registering a European Union trademark is a complex process; above all, because we need to be very clear about what we want.
That is, before starting we must plan exactly what we will answer on the form.
The application can be denied (and the fees are not low), so any preparation is insufficient.
How do we prepare the European Union trademark application form?
- Ask yourself if that brand is the best one for you. Once the trademark is registered you will not be able to modify it and it will be valid for 10 years, renewable indefinitely.
- Analyze if that brand represents your products or services, and above all, your differential value and business strategy.
- Study which products or services exactly you want to protect. The recognition of a trademark occurs only for the specific heading in which you have registered it.
- Think about whether you are going to use the brand in the next 5 years. The European Union establishes that it must have an effective use so that it is not subject to challenge.
- Check that your brand is not already used in the market. In the EU there are currently more than 11 million trademarks registered; so if yours is no longer available, the request will simply be denied. Perform a search through the database used by the EUIPO: eSearch plus, which contains data on trademarks registered in the European Union. You can also use TM view, a database with information from national intellectual property offices in the EU, as well as some international offices outside the EU.
- Be clear about what type of brand it is. There are different types of trademark: a) word, in which words, letters or numbers are used; b) figurative, with special characters, with graphics or colors; c) figurative with word elements; d) shape, in which a three-dimensional shape is used; e) in form with word elements; f) position, consisting of the specific way in which the brand is placed on the product; g) pattern; h) colored; i) sound; j) movement; k) multimedia; and, l) hologram. These different brand typologies must be able to distinguish their products and services from those of competitors, taking into account that the brand must be distinctive and cannot describe what it sells. If these requirements are not met, your application will not be accepted.
Once the application is submitted, the EUIPO the will process to confirm that the trademark is available following several phases:
- Request receipt.
- Exam period.
- Publication of the application.
- Opposition period.
- End of the opposition period.
- Registry.
- Trademark Publication
Do you want us to help you register your trademark?
We are intellectual property attorneys.
RRYP Global, lawyers of intellectual property y trademark registration.
