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Why you can’t just replicate someone’s brand? All about trademarks.

Trademarks and Brands

A trademark or brand is a distinctive sign. Its function is to differentiate and individualise goods or services on the market from other identical or similar goods or services. It helps to identify a business’ origin and, to a certain extent, is an indicator of quality.

What is a trademark and why is it important?

The importance of the trademark and brand lies in leaving an unmistakable and memorable mark in the minds of customers that allows them to return to consume the products again and again. In addition, the owner of a registered trademark can stop any third party from using, without the owner’s consent, in the course of trade. This identical or similar sign may confuse. 

Another benefit is that it increases the commercial value and gives the business a more serious and professional image. It can also become a new source of income since if someone wants to use your trademark, they must pay you for it through a licence.

How to obtain a trademark?

To register a trademark or brand, we must first decide what scope of protection we want to give it. For example, if we apply with the Spanish Patent and Trademark Office (SPTO), we seek a brand that only produces effects in Spain. On the other hand, if we seek protection across the European Union, the application must be filed with the EUIPO.

  1. How long does it take to obtain a trademark?

The trademark application takes around six months for both European and Spanish trademarks. However, the maximum period available to the SPTO to decide on a trademark application is 12 months if the application has not been rejected and has not been opposed. This increases to 20 months if it has been rejected or has been opposed. 

  1. How much does it cost to register a trademark?

The trademark office charges €126.61 if filed online as a first-class trademark, and €82.02 for the second and each successive class. For an EU trademark, they charge €850 for the first class and €50 for the second.

By “class” we refer to the goods and services that the trademark or brand is protecting. The Nice Classification is an international classification of goods and services used to register trademarks. An example of a class would be: Class 33 includes mainly alcoholic drinks, essences and extracts.

  1. Does a trademark expire?

The trademark registration is granted for 10 years from the date of application for both Spanish and EU. If you wish to keep the trademark or brand in force, you must renew it. 

  1. Can a trademark be modified?

The trademark cannot be altered once it has been filed. However, if necessary, the details of the owner may be changed, subject to a fee.  

Is there an international trademark or brand?

Europe has a trademark registry that protects the trademark throughout the region and can be applied for directly with the European Union Intellectual Property Office (EUIPO).

There is also an international trademark but this doesn’t provide full protection in all countries worldwide. This type of trademark is part of a registration system for countries that are members of the Madrid System and parties to two international treaties, the Madrid Agreement and the Madrid Protocol.

The Madrid System covers 116 countries worldwide and you can apply for trademark protection in the EU through this method. Unfortunately, you cannot protect trademarks in non-member countries.

What’s the difference between a trademark and a trade name?

A trademark’s function is to differentiate goods or services on the market from other identical or similar goods or services. However, a trade name is a sign or denomination that identifies a company in the course of trade. It serves to distinguish it from other companies carrying out identical or similar activities.

Therefore, the trade name distinguishes the company that manufactures or markets the goods or provides the services. On the other hand, the trademark distinguishes the goods or services manufactured, marketed or provided by that company.

Can someone else use my trademark or brand with my permission?

It’s not enough to simply give permission to use your trademark, either in whole or in part. You must sign a licensing agreement for the trademark in question and states how it can be used.

This contract does not need to be registered. But it’s highly recommended that you file it with the SPTO so that it can be enforceable against third parties.

How can a lawyer help me ?

A lawyer can help make the trademark registration process easier and faster by helping the chance of a successful registration outcome.

A lawyer can also advise whether it is necessary to register a trademark as sometimes there are other routes more suitable for a client’s needs. In the event that registering a trademark is the right move, a lawyer will help uncover if the trademark or similar ones are registered. They will also support obtaining the right paperwork and fighting any opposition to its registration. 

Lastly, once the trademark is registered, the lawyer will be able to advise on how to protect it from third parties.

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