Commercializing goods and services of diverse nature requires a distinctive element that differentiates them from similar products and establishes a bond with consumers. This distinctive, known as a trademark, plays a critical role in the business world by creating recognition that influences purchasing decisions. But how do companies ensure that their trademarks are protected and supported by the corresponding legal framework? What does registered trademark protection consist of?
The essentials of registered trademark protection
In Spain, Law 17/2001, of December 7, on Trademarks, is the fundamental norm that regulates the protection of trademarks and trade names. This law establishes the guidelines for granting protection to graphic and/or denominative combinations that distinguish similar products in the market and that are offered by different economic entities. In other words, it provides a legal umbrella that protects these distinctive signs.
By duly registering a trademark, any company has the ability to reflect it on a variety of media. This allows it to position itself in the market and differentiate itself from both its competitors and the commercial universe as a whole. Specifically, trademarks perform multiple key functions, including:
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- Establishes the identification and differentiation of products and services, making visible the distinction between those of one company and those of others.
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- Contribute to generating consumer trust by conveying concepts such as quality and guarantee.
- Serve as a reflection of the company’s unique identity, establishing its individuality in the market.
¿Para qué sirve el derecho de marcas?
In essence, trademark law has a clear purpose: to protect the distinctive signs applied to a company’s products or services. For a trademark to be under this protection, it is fundamental to register it with the competent body. In Spain, the Spanish Patent and Trademark Office (OEPM) is the responsible agency. Later, we will explain which correspond to broader protection needs.
In terms of application, the Trademark Law establishes that by registering a trademark, industrial property rights are acquired over it. The trademark holder enjoys the right of exclusive use and has the power to take legal action, both civil and criminal, against those who infringe their rights. Likewise, this exclusive right allows the owner to grant usage licenses to third parties, thus generating income through license agreements or franchises.
It is important to highlight that the jurisdiction of the Trademark Law is national, with the OEPM being the body responsible for supervising its application. Likewise, the autonomous communities have competencies in intellectual property matters within the national scope.
Geographical scope of registered trademark protection.
According to Article 4.1 of Law 17/2001 on Trademarks, a trademark is a sign capable of graphical representation whose main objective is to differentiate products or services in the market. To ensure adequate protection, trademarks must be registered with the OEPM. However, registered trademark protection can take three different forms:
- National trademarks. These offer exclusivity in Spanish economic traffic for renewable periods of ten years. The holder has the right to prevent unauthorized use of identical or similar signs by third parties. If you want more details on how to register a trademark in Spain, consult this link.
- European Union trademarks. These grant the holder the exclusive right throughout the entire territory of the European Union. This right is unitary and registration can be applied for directly with the European Union Intellectual Property Office (EUIPO) for an initial period of 10 years, renewable indefinitely.
- International trademark. This allows extending protection beyond the European Union, covering countries signatory to the Madrid Agreement and the Protocol of the World Intellectual Property Organization (WIPO). With a single application and the payment of fees, protection can be sought in up to 130 countries. For this purpose, the process can be carried out through the eMadrid platform, attached to WIPO.
How registered trademark protection is based.
On the other hand, the protection granted by trademark registration is based on a series of fundamental principles that seek to safeguard the originality and identity of trademarks. These principles include:
- Differentiation and originality: A registered trademark must not be identical or similar to another previously registered or “well-known.” This principle ensures that each trademark retains its uniqueness in the market.
- Avoiding generic terms: It cannot consist solely of generic signs, indications, or habitual expressions to designate products of that nature. Also, registered trademark protection seeks to prevent trademarks from becoming common descriptions.
- Not misleading: Indeed, it is important that the trademark does not seek to mislead the buyer about the product’s real nature, quality, or geographical origin. Transparency and authenticity are fundamental in this aspect.
- Specificity in economic activity: Distinctive signs are exclusive in relation to the specific economic activity carried out. Therefore, a trademark can protect a food product, but another entrepreneur could use the same trademark for different products without conflict.
Furthermore, the use of trade names is prohibited.
Scope of registered trademark protection.
The protection provided by trademark registration extends to various rights and faculties of the holder, including:
- Right of exclusive use: Of course, the holder has the exclusive right to use the trademark in economic trade, granting them a privileged position in their sector.
- Prohibition to third parties: Third parties are prohibited from using an identical or similar sign to distinguish similar products or services. This applies especially when dealing with the same or similar activity, product, or service.
- Assignment and license: A unique aspect of registered trademark protection is that the holder has the right to assign the trademark or grant licenses for its use to third parties. This option facilitates access to various collaboration opportunities and income generation.
Trademark defense.
The holder of a trademark or trade name has the power to exercise both civil and criminal defense actions against those who infringe their right. In the civil sphere, these actions may include:
- Cessation of infringing acts. The plaintiff may request the cessation of acts that violate the right to use their trademark.
- Compensation for damages. In fact, one of the key benefits of registered trademark protection is that the rights holder can claim compensation for damages resulting from the infringement.
- Measures to prevent future violations. Certainly, the plaintiff in a trademark rights violation case may request the adoption of measures that prevent the continuation of the infringement.
- Destruction or humanitarian assignment of illicit products. In extreme cases, the destruction or assignment for humanitarian purposes of products illicitly identified with the trademark may be requested.
- Publication of the judgment. Finally, the plaintiff may request the publication of the judgment to inform the public about the violation and the legal resolution.
Rights of the holder of a trademark or trade name.
The registration of a trademark confers exclusive rights on the holder, allowing them to prohibit various actions regarding signs applied to products and/or services identical or similar to those registered:
- Placement of the mark: They can prohibit the printing or placement of the sign on products or their packaging.
- Commercialization and offering of products: They have the right to prevent the offering, commercialization, or storage of products bearing their mark.
- Importation or exportation: They can prohibit the importation or exportation of products using the mark without their express consent.
- Use as a trade name: Specifically, they have the power to prohibit the use of the sign as a trade name or company name.
- Advertising and use in digital media: They are empowered to prevent the use of the trademark in commercial documents, advertising, telecommunication networks, and as a domain name.
Proof of use of the priority mark.
In line with the above, as part of registered trademark protection, holders can prohibit the use of the sign only if they can prove its use in economic trade, except for justified reasons for non-use. This proof of use can be requested if the trademark registration occurred at least five years before the action was filed.
At ISERN, we register and protect your trademark.
With 100 years of experience in the registration and protection of trademarks, patents, and intellectual and industrial property, ISERN monitors the potential fraudulent use of your trademark. Whether it is a sign registered nationally, European, or internationally, we have the technology and resources necessary to track, warn, and act legally against any infringement of use, inside and outside the country.
In this sense, our experts in registered trademark protection keep you informed and advise you on the procedures to be carried out.