Main steps to complete for the application for registration of national marks

It is essential to take into account when considering the registration of a national, community or international trademark, that once the corresponding fee has been paid, regardless of whether the trademark is finally registered or not (because it is challenged by a third party or denied by the competent trademark office), the amount of the fee paid will not be refunded. We must start from the basis that the brand must be: (i) distinctive (consumers must be able to recognise its sign for what it is, that is, for its indication of origin); and, (ii) you must not describe what you sell (the brand must not monopolise a sign that simply describes the products and/or services you offer). Additionally, it is necessary to verify mainly that the brand is not previously registered or that the brand that is intended to be registered for certain services or products is not similar to a previous brand, as well as that it does not affect any absolute or relative prohibition. Specifically, at the international level it is necessary to take into account the different internal regulations of each country that are not always flexible and that could slow down the registration procedure.

1. Introduction: trademark law

The brand is the sign that distinguishes in the market the products or services of a company, and as a distinctive sign, its function is to differentiate and individualise in the market some products or services of other identical or similar products or services, as well as identify its business origin.

According to article 4.1. of the Law on Trademarks: “brand means any sign that is capable of graphic representation that serves to distinguish in the market products or services of one company from those of others”.

There are different types of brand:

• Denominatives: arbitrary denominations, social reasons, pseudonyms, etc.
• Graphics: graphic symbols, logos, etc.
• Mixed: the combination of word and graphic elements.
• Three-dimensional: containers and wrappers, etc.
• Sound: as long as these sounds in which the brand consists can be represented graphically.

When choosing a brand, it is necessary to keep in mind that a series of legal prohibitions are classified as absolute and relative and that can be found at the end of this article.

Once the brand has been chosen, it is convenient to request a search report from the Spanish Patent and Trademark Office (hereinafter, the “SPTO”) to ensure that the sign is available. However, this search report will only inform us of the absolute prohibitions; To be more confident about the possibilities of registering our brand, it is important to request an individual investigation from an expert lawyer in industrial property to analyse the risks we face.

The trademark registration can be requested by any natural or legal person. Non-residents in a Member State of the European Union must act, in any case, through an Industrial Property Agent.

2. Processing of the national trademark application

The minimum data to obtain a date for filing the application for registration of the brand and with which the forms offered on the SPTO website will be completed are: (i) statement that a trademark is requested; (ii) identification and signature of the applicant; (iii) name in which the brand consists of a design if it is mixed; and, (iv) products or services to which it will apply (Nice Classification[1]).

Upon receipt of the request, the competent body will examine the documentation (form, payment of fee and attached documentation), in addition to verifying that the applicant is entitled to be the owner of a Spanish trademark. Subsequently, it is referred to the SPTO where its legality will be examined and it will control whether it is contrary to public order or good customs. If this examination is passed, the application will be published in the Official Bulletin of Industrial Property for a period of 2 months. (the B.O.P.I. is published daily) so that it may be opposed by its inscription who considers it appropriate.

If the requested trademark does not incur any prohibition and if no oppositions have been filed against it, the SPTO proceeds to grant the trademark.

In accordance with the Trademark Law, the maximum period available for the SPTO to resolve a trademark application is:

• 12 months if the application does not suffer any suspense and has no objections.
• 20 months if he suffered any suspense or had oppositions.

Simulation:

We give as an example the registration of a national brand in the SPTO to market consumer products such as cheese and wine, which has a rate that will vary depending on whether a brand is registered for one or several classes to choose from the classification list Nice with which a classification of products and services for the registration of trademarks is established.

The registration of a mixed brand (including, as indicated above, name and graphics / or logo) for the marketing of cheeses would be included in the following class number (29):

29

Meat, fish, poultry and game meat; meat extracts; preserved fruits, vegetables, vegetables and legumes, frozen, dried and cooked; jellies, jams, compotes; eggs; milk and dairy products; edible oils and fats.

33

Alcoholic beverages (except beers).

All kinds of cheeses are included in the aforementioned class (as an example: fresh, processed, sheep, mould-cured, etc.) except cheese-flavoured cereal snacks, corn-cheese snacks, or puffed corn snacks with cheese flavour.

The registration of the aforementioned mixed Brand at the national level including a single class implies the cost of a fee that currently amounts to € 144.58 if the documentation is submitted to the Delegation of the Spanish Patent and Trademark Office. In the event that the registration request is made online, a discount of 15% is currently applied.

In the event that the trademark is registered for more than one class, for example, for cheeses and wines, the two classes should be included in the aforementioned form, for the case at hand would be classes numbers (29) and ( 33), and pay the fee corresponding to the two classes that today amount to € 238.24.

It is necessary to bear in mind that an application fee must be paid for each requested class. And in the event that the brand includes any graphic element, a certain type of letter or colours must present the reproduction of the corresponding brand, attached or printed in the box of the corresponding form. The reproduction of the brand must have good contrast and sharpness and cannot exceed 8 cm wide by 12 cm high.

Also, once the trademark registration is published in the Official Bulletin of Industrial Property (BOPI), it is necessary to know that the registration is for a period of 10 years from the date of application, and if you want to keep the trademark in force, must proceed to its renewal. The renewal must be requested within 6 months prior to expiration; or in the 6 months following expiration, paying a surcharge for late renewal fees.

Eva Isabel Gallego Morales - Diego Fernández Maldonado

[1] The international classification of products and services, divided into 45 classes and available on the following website: http://tramites.oepm.es/clinma....

[2] The official rate for 2015 is € 144.58 for a brand for a single class, and € 93.66 for each additional class to be requested.