Protecting trademarks and trade names: types, requirements and rights

An important precaution that companies must take is to ensure the protection of trademarks and trade names that they manage as part of their activity. In this regard, it is pertinent to review a series of concepts related to the process of registering such trademarks and trade names. Likewise, we will describe the requirements necessary to obtain such protection and what rights are acquired with it.

First of all, it is necessary to define and establish the basic differences between trademarks and trade names:

A trademark is a distinctive trademark that serves the function of distinguishing a company’s goods or services on the market in order to differentiate them from those of its competitors. While a trade name is another form of distinctive trademark expressed in written and phonetic form that also identifies a company in the course of trade. The purpose of this name is to distinguish the holder of the name from other companies carrying out identical or similar activities.

A recommended step before applying for trademark and trade name protection is to select one or more ‘classes’ from the so-called Nice Classification, an international classification system that categorises goods and services by means of unified codes. This provides for 34 different types of goods, as well as 11 different classes for the protection of services.

In essence, when we talk about trademark or trade name protection, we are referring to industrial property titles that grant the holder the right to use the protected trademarks exclusively, to assign them to the goods and/or services for which he/she applied for registration. Moreover, this right of exclusive use is reinforced with the right to prevent the use of trademarks that may create confusion among consumers to market products or services similar to those designated with the protected trademarks and denominations.

According to the concept of trademarks expressed in article 4 of Law 17/2001, of 7 December, on Trademarks, they may be:

  • Denominative. That is to say, they consist solely of words or letters, numbers in standard characters, without requiring specific graphic, layout or colour characteristics.
  • Figurative. Specifically, these are trademarks made up of words, letters or numbers with characters, designs or non-conventional layout. They may or may not include graphic or colour elements or may only file graphic elements.
  • Three-dimensional. In general, three-dimensional trademarks are external elements, such as the container or packaging of a product, which allow it to be identified in order to differentiate it from other products. The diamond-shaped bottle of Anís del Mono is an example.
  • Positioning. They consist of the particular way in which the trademarks are arranged on the products.
  • Pattern. These are those consisting only of a set of elements repeated in sequence.
  • Colour. This is the name given to the trademarks consisting of only one colour or a combination of colours without contours.
  • Sound marks. As the name suggests, these are trademarks identifiable by means of a sound or combination of sounds.
  • With movement. Precisely, the particular characteristic of these trademarks is the movement and/or change of position of the elements of the trademark that identify them.
  • Multimedia. These are trademarks made up of a combination of image and sound.
  • Holograms. These are trademarks designed using the holographic technique. This consists of creating three-dimensional images based on the use of light and using a laser beam that engraves a photosensitive film.
  • Other. These are trademarks that do not have the above-mentioned characteristics.

The aforementioned Trademark Act also regulates and protects collective trademarks and guarantee trademarks. Collective trademarks are those trademarks that distinguish on the market the products or services produced by the members of an association of manufacturers, traders or specific service providers. This association is the owner of the trademark rights.

On the other hand, the trademark is the registered trademark that certifies and guarantees that certain products or services to which it is applied comply with a set of common requirements. These conditions are usually related to the quality, components or ingredients, geographical origin, method and technical conditions of production, etc. Interestingly, it is not the owner who uses the trademark, but third parties expressly authorised by the owner. This occurs after evaluating and verifying that the products or services of such third parties meet the requirements of the trademark.

For the protection of collective and guarantee trademarks, it is essential to attach the corresponding regulations for use to the application for registration. In particular, in order to register a guarantee trademark, in addition to the regulations for use, it is essential to file with the application the favourable report of the competent administrative body in accordance with the nature of the goods or services referred to in the trademark.

In order to register a trademark, the trademark must meet two essential conditions:

  • It must be lawful. In other words, it must not be subject to any of the prohibitions established in Article 5 of the Trademark Act.
  • It must not affect prior rights. In fact, the trademark for which protection is sought must not conflict with other prior rights, whether as a trademark or any other proprietary right. The right to a name and intellectual property rights are examples of prerogatives that must not be affected.

You can learn more about absolute prohibitions and relative prohibitions when registering a trademark by following these links.

On the other hand, the cost of applying for trademark protection varies according to the number of ‘classes’ applied for. Naturally, the more classes you apply for, the higher the amount of fees you will have to pay. In Spain, the official fee for trademark or trade name protection applications is around €150 for the first class.

If you apply for registration at the electronic office of the Spanish Patent and Trademark Office (OEMP), there is a 15% discount. This procedure can also be carried out at the regional industrial property information centres, at post offices or in person at the physical headquarters of the SPTO. In the latter case, Article 14.2 of Law 39/2015 on the Common Administrative Procedure of Public Administrations establishes that the filing of the application on paper only applies to those who are not obliged to relate electronically with the Public Administration.

In reality, you can decide the scope of protection of your trademark or trade name, either on a national level only or extend it to an international level. It is possible to extend protection in two ways:

  • Applying for European Union (EU) Trademark registration, to obtain protection in its Member States. However, if a National Trademark of a Member State coincides with yours, the affected owner can prevent the grant of protection. You can do this through the EU Intellectual Property Office (EUIPO) or through the SPTO itself.
  • Apply for an International Trademark Registration. Thanks to this option, you can obtain protection in more than 120 Member States subscribing to the Madrid System. It should be noted that the essential requirement for this application is that the trademark be previously applied for or already registered at national level or as an EU Trademark.

Regarding the duration of trademark and trade name protection in Spain, protection is granted for renewable periods of 10 years from the date of application. We recommend applying for trademark renewal six months before the expiry of the term and paying the corresponding fees to maintain the validity of the protection.

Finally, it is important that, before filing the trademark registration application, you search the free databases of the SPTO and the WIPO. In this way, you will know if there are already other trademarks or trade names that are the same or similar that could be an impediment to the grant of protection. For the same purpose, you can check the OEPM File Consultation (CEO). This is a public tool that allows you to search by names, applicants, classes applied for and status of trademarks or trade names.

ISERN accompanies you in the process of registering your trademark.

At ISERN we have 100 years of experience in the registration and legal protection of trademarks and patents at national and international level. Our team of expert professionals will advise you and take care of all the necessary procedures.

If you need effective support in protecting your company’s trademarks and trade names, contact us and visit us at any of our 12 offices in Spain.

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