Registering a trademark

Many of you have asked me whether it is necessary to register a trademark, how to do it and what it entails. Today’s post, and to start the year, I will dedicate it to clarify this bureaucratic and in some cases tedious and long, but necessary to protect your brand legally.

Registering your trademark is crucial from the very beginning of a new project. This registration is the only way to have intellectual ownership, exclusive rights and legal protection of your brand. And therefore, this step will define the success of your services or products in the market.

Moreover, there are other benefits added to this legal procedure. For example: consumers can identify you more easily, you differentiate yourself from the competition, you generate connection with your audience, build customer loyalty, and most importantly, you protect the best intangible asset you can have.

What is a trademark in legal terms?

A trademark is a distinctive sign that identifies the products or services of a certain company in the market and distinguishes them from the rest of the competitors. In other words, legally, a trademark is a word, figure, drawing, legend or any other sign, which is owned and used by a natural or legal person, to market its products or services.

Therefore, when learning how to register a trademark, we must take into account the different possibilities of registration. Let’s look at an example with the Nike trademark:

• Name: the word or name registration will consist of the word Nike only.
• Mixed: the mixed registration would reflect the word Nike associated with a particular graphic element.
• Graphic: the graphic registration would be of the graphic element only. In this case the famous swoosh.

Trademarks are protected intellectual property rights, which guarantee the protection of your ideas, concepts, image, articles, goods, services, etc.

Registering and protecting a trademark in Spain

Do you know how to register a trademark in Spain? Where and how to do it? How much does it cost to register a trademark? What do I need to register my trademark? Why is it important for your business?

The registration of a trademark is essential in order to have intellectual ownership of the trademark, as well as to obtain exclusive rights and legal protection. Failure to do so exposes your trademark to two risks:

• On the one hand, you could fall into trademark infringement (perhaps unknowingly).
• Other third party brands may try to market goods and/or services identical or similar to those of your brand.

How to avoid these risks? The best thing to do in all cases is to register the trade name of your trademark. Let’s see how to register a trademark:

The first thing you should know is that to register a trademark in Spain you can do it online or in person. However, in either case, you will have to file the application and pay the corresponding fees.

If you choose the in-person procedure, you must fill in the Trademark Registration application form. Here you will have to specify the data identifying your trademark and your information as applicant or representative. Then, you must submit this application to the Spanish Patent and Trademark Office (OEPM in Spanish, SPTO in English), with your respective proof of payment of the application fee.

The SPTO is an autonomous body attached to the Ministry of Industry, Trade and Tourism and is responsible for granting patents, utility models, trademarks and trade names in Spain. It is also where you can perform the functions of receiving, studying and granting the different types of industrial property granted in Spain.

After submitting the documents, they will be reviewed by the agency. If other people’s trademark rights are affected, or if there are flaws in the documentation, the applicant is allowed to modify his application within a defined time.

If you intend to register your trademark online, go to the Spanish Patent and Trademark e-Office (SPTO) and follow the steps below:

• Click on “Procedures for distinctive signs”.
• Go to the section “Application for trademarks, trade names and international trademarks”.
• Fill in the information requested there.

Likewise, once you have completed this procedure, all the information you provide will be reviewed in order to rule out any errors in the documentation or any imitation of previously registered trademarks.

But before registering your trademark, I recommend that you go through a filter with these 3 steps:

If the trademark does not exist in the SPTO database, because there are no associated search results, great! You can now proceed to register it.

I also recommend that you check on internet search engines to see if a trademark or trade name like the one you have in mind already exists before registering it. Not only to see if it already exists and save you the whole process, but also to see if there is a domain with that name on the internet. This does not mean that the trademark is registered, of course! But it can guide you on how to position yourself online (especially if your brand is oriented to digital media) and if it is worth changing the trade name of your brand before registering it.

Legal aspects to take into account when protecting a trade mark

We already know that brilliant ideas need to be backed by the legal framework, otherwise they run the risk of being damaged by the usurpations of third parties. Therefore, it is essential to learn the following legal aspects to protect your brand.

Trademark law

It consists of a legislative framework on trademark issues. This Law 17/2001 of 7 December is a regulation that governs the legal regime of distinctive signs and is applicable at national level.

In 2015, the Trademark Law underwent certain amendments introduced in a new reform. In order to unify criteria between European countries regarding the registration of trademarks. Among the most relevant points mentioned in this reform are:

Intellectual Property Law

The Intellectual Property Law is regulated by article 428 of the Civil Code and by the Royal Legislative Decree 1/1996, of 12 April. This Law refers to the protection of works of unique value, which may be tangible or intangible. It also protects originality in all its facets.

Intellectual property is defined in this law as:

“The literary, artistic or scientific work, expressed in any medium (books, writings, musical compositions, plays, choreographies, audiovisual works, sculptures, pictorial works, plans, models, maps, photographs, computer programs and databases) that corresponds to its author by the mere fact of its creation, who has the right to exploit it and dispose of it at will”.

This means that any creator or owner of a work can and should enforce his or her copyright. Because there is a legal framework that ensures the protection of the work.

On the other hand, it is important to mention that a few years ago and after multiple negotiations, the European Parliament approved article 13, which also regulates intellectual property rights in the digital environment. The aim is to allow publishers, scriptwriters, musicians and others to remunerate their works in online media.

Requirements to take into account when registering a trademark in Spain

In Spain, in order to register a trademark, there are four main requirements:

• Filing the registration document.
• Reproduction of graphic elements (if any).
• If it is a three-dimensional trademark, a two-dimensional graphic or photographic reproduction must be submitted (for example: in the case of Coca Cola, a photo of its bottle, or of Toblerone, a photo of its prismatic packaging).
• Application fees.

In addition to this, it is essential that you submit the following with your trade mark application:

• Declaration requesting the trademark registration.
• Identification of the applicant, which may be one or more natural or legal persons.
• Authorisation of the representative, in the event that the representative makes the application.
• Denomination, in the case of a denomination mark.
• Goods or services to be protected, according to the Nice Classification.

You will obtain the filing date after they are stamped or filed at the SPTO’s electronic headquarters. Then, this Office will examine them and publish them for opposition for two months in the Official State Bulletin of Intellectual Property (BOPI). If no opposition is received from third parties, it is granted.

These are some of the legal keys that you should bear in mind when registering a trademark in Spain. You should also be aware that after the granting decision has been taken, no modifications may be made to the distinctive sign of the registered trademark or trade name, except for the exception provided for in Article 33 of Law 17/2001, of 7 December, on Trademarks. Nor can modifications be made at the time of renewal of a trademark or trade name.

How much does it cost to register a trademark?

The price to register a trade mark depends on the class to which it belongs and the method of payment. A trade mark with a single class costs EUR 147.49, when it is not done electronically, and an additional EUR 95.55 is charged for each successive class (2022 fees). If you want to do it electronically, the fee for the first class is 125.36 euros, with subsequent classes costing 81.21 euros.

These costs are actually not that high when you consider how long they are valid. In most countries registration lasts 10 years, as in Spain, so it is a long-term investment.

Terminologies to take into account

Before registering your trademark, there are certain terminologies that you need to know and distinguish in order to successfully protect it. Let’s look at some clarifications:

Trademark, trade name and company name

The terms trademark, trade name and company name are often confused, but they are not the same. In the case of the trademark, it refers to the sign that distinguishes the product or service in the market. The trade name, on the other hand, is the name that identifies the company’s activities in the commercial register. The company name refers to the official name of a legal entity, which is used for legal and administrative matters. Therefore, it does not need to coincide with the trade name.

A trademark can be protected internationally, whereas a trade name can only be protected on a country-by-country basis.

Let’s understand the difference better with this example:

• Trademark: Fontvella
• Trade name: Danone Group.
• Company name: Danone S.A.

Difference between a trademark and a logo

As mentioned before, a trademark is the singular sign that belongs to a certain product or service. The brand is the corporate image that the audience perceives of that product or service.

While the logo is the simplest identifier of the company, represented by a particular icon or distinctive sign. The logo is the graphic element that accompanies the brand. Let’s say that it is its cover letter.

In short, it could be said that a brand can change its logo, but a logo cannot change its brand.

Conclusion.

When a new project is created, registering its trademark is an essential step for its protection. Brands usually change their image and logo by re-branding, but being forced to change your brand because you haven’t registered it is a big step backwards.
To avoid confusion among your clients and to ensure that the project you are so passionate about moves forward, I recommend registering your trademark so that you can build your project on good, solid foundations.
Undoubtedly, you should register your trademark to acquire the unique rights to which you are entitled. But also because the benefits outweigh the disadvantages.

Hi, I’m Roberto Vidiella.

I am the founder and Creative Director of VIDI. I am passionate about graphic design, and through this blog, I try to deepen my knowledge and share what I have learned during my career. If you leave me a comment, you help me to keep learning and improving, and I’m really excited about it!