Trademarks

It depends on the type of trademark you want to apply for, whether it is national, international, or community.

• Spanish trademarks are registered in the Trademark Registry of the Spanish Patent and Trademark Office (OEPM).
• National trademarks in foreign countries are registered at the corresponding registry office in each country.
• International trademarks are registered with the OEPM or WIPO (World Intellectual Property Organization), based in Geneva, Switzerland.
• Community trademarks are registered with the EUIPO (European Union Intellectual Property Office).
• In Mexico, trademarks are registered with the Mexican Institute of Intellectual Property (IMPI), upon application for registration of a distinctive and registrable sign, complying with all legal and regulatory requirements.

A trademark can be extinguished for two reasons: expiration or invalidity of the trademark.

Expiration:

• Failure to renew trademark registration.
• Renunciation by the trademark owner.
• Failure to make genuine use of the trademark for five consecutive years.
• Commoditization of the trademark.
• In the event that the trademark could mislead consumers as to the nature or geographical origin of the goods or services it designates.

Invalidity:

• Having been registered in contravention of absolute or relative prohibitions on registration.
• When it has been applied for in bad faith.

• Injunction: aimed at prohibiting future use of the infringing trademark and ceasing any activity that infringes the right
• Prohibition action: this is intended to prevent the act of trademark infringement from occurring.Removal action: this aims to eliminate the persistent effects that the trademark infringement may cause and ranges from the withdrawal of the product from the market in the hands of resellers to the request for publication of the conviction.
• Action for damages: this consists of compensating the owner of the infringed trademark not only for the losses suffered but also for the profits lost.

Trademarks may be subject to various types of contracts:

• Trademark assignment: the assignment may be total or partial, and there are no restrictions on the products or services on which the trademark may be used. It involves a change of ownership.
• Trademark license: this is a contract in which the owner grants the right to use the trademark in exchange for financial compensation.

The trademark is an intangible asset that can be transferred by any means permitted by law, and may be given as collateral or be subject to other real rights.

• Yes, the trademark owner must make actual and effective use of the trademark for all the goods and/or services for which it was registered and when the trademark is used exclusively for export activities.
• If, within five years from the date of publication of its grant, the trademark has not been put to genuine and effective use in Spain for the goods or services for which it is registered, or if such use has been suspended for an uninterrupted period of five years, it may be declared invalid and its registration may be canceled, unless there are justifiable reasons for non-use.

This is the possibility of claiming priority for the Spanish trademark application within two months of applying for an international trademark. In this way, the international registration will have the date on which the national application was filed with the office of origin, provided that the International Bureau has received it within two months from that date; otherwise, it will have the date on which it was received by the International Office.

If we do not register our trademark in time, any third party can register it and obtain the rights to it through registration, since the rights to the trademark arise from its registration, regardless of who created or designed the trademark.

It is not possible to modify a registered trademark. Hence, it is necessary to implement a methodology for periodically reviewing the company’s trademark portfolio in order to measure and, if necessary, correct the level of legal certainty in the use of the trademarks. It may happen that the modification made to a distinctive sign is so substantial that it constitutes a new trademark. In such a case, the new trademark is subject to re-registration.

Trademarks are classified by class (in accordance with the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of June 15, 1957, amended and revised several times, with the latest update on January 1, 2007). This is a classification of goods and services for the registration of trademarks, in accordance with an international nomenclature that describes in very general terms the nature of the goods or services contained in each of the classes. According to this international nomenclature, distinctive signs may be:

• Products: classes 1 to 34 inclusive.
• Services: classes 35 to 45 inclusive. The use of the Nice Classification by national offices in different countries allows for the unification of the classification system in the filing of applications, thereby simplifying it considerably.

Currently, 83 states are party to the Nice Agreement. The Nice Classification is also used by the trademark offices of more than 65 countries that are not party to the Nice Agreement, four organizations, and the International Bureau of WIPO.

Trademarks are governed by three basic principles:

• Attributive principle: in order to be the owner of a trademark, it is necessary to complete a registration process at a state office.
• Principle of territoriality: the trademark is effective in the territory where it has been registered (throughout the national or regional territory).
• Principle of specialty: it protects those products or services for which the trademark has been registered.

• By the nature of the sign chosen: word mark, graphic mark, mixed mark, three-dimensional mark.
• According to their degree of recognition: renowned trademark, well-known trademark.
• According to their owner: individual trademark, collective trademark.
• According to the object they designate: product trademark, service trademark, guarantee trademark.
• By territorial scope: national, international, community.

The trademark is granted for ten years. This period is counted from the date of application and can be renewed every ten years indefinitely.

The law establishes a series of prohibitions:

• Signs that do not have sufficient distinctive character: for example, a dot or a line without any other characterizing element.
• Generic and specific signs: for example, chocolate to distinguish “chocolate,” those that consist exclusively of signs that in commerce or in everyday language have come to constitute a necessary or usual name for the product or service in question, for example, “spring rolls” to distinguish food products.
• Descriptive signs: those consisting exclusively of signs or indications which serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of the goods or of rendering of the service, or other characteristics of the goods or service, for example, “select edition” or “May strawberries.”
• Misleading signs: for example, “oleoliva” to distinguish all types of edible oils and fats.
• Signs contrary to the law or public order: for example, any xenophobic or sexist trademark.
• Forms that are imposed for technical reasons or due to the nature of the products themselves or that affect their intrinsic value: for example, the representation of a satellite dish to distinguish satellite dishes or that of a windshield wiper for windshield wipers, or the representation of a pencil without any element of fantasy.
• Certain legally protected signs such as flags and coats of arms of states, autonomous communities, etc.

The following signs or means may, in particular, constitute a trademark:

• Words or combinations of words, including those used to identify individuals.
• Images, figures, symbols, or graphics.
• Letters, numbers, and combinations thereof.
• Three-dimensional shapes, including wrappers, packaging, the shape of the product, or its presentation.
• Sounds.
• Any combination of the signs or sounds mentioned in the previous sections, including but not limited to those mentioned above.

The trademark, as a property right, may belong to several persons. The resulting community shall be governed by the agreement between the parties.

Any individual or legal entity that intends to use a trademark or authorize its use by third parties may apply for its registration.

A trademark is “any sign capable of being represented graphically that serves to distinguish the goods or services of one company from those of others on the market.”