Trademarks are one of the most valuable assets of any business project, as they identify the products or services offered in the market, distinguish them from those of other competitors and are associated with a certain reputational value.

Protecting trademarks through registration is not only essential to prevent plagiarism and counterfeiting, but also provides competitive advantages and ensures the exclusivity of the goods or services offered. 

Why register a trademark?

Registering a trademark is essential to obtain ownership over the name, logo or slogan that distinguishes an entrepreneur's products or services in the marketplace.

As established in Article 2 of the Trademark Law, ownership of trademarks is acquired through registration with the competent body, which is the Spanish Patent and Trademark Office (SPTO) at the national level. 

This implies that if I do not register the trademark I use in the market, I will not legally own my own trademark and I will be unprotected against plagiarism by third parties. However, there is an exception, as the law grants protection to the user of a well-known trademark even if it is not registered.

Renowned brands are those that, due to their prestige, are known by the general public. We are referring to brands such as Coca-Cola, Zara, El Corte Inglés, or Telefónica. So unless you are the owner of one of these trademarks, the only way to obtain legal protection is by registering it.

By registering a trademark, the owner obtains exclusive rights over the use of that distinctive sign in the market. This means that he may prohibit other persons or companies from using marks similar or identical to the registered mark.

Ultimately, trademark registration provides the following benefits:

  1. Property: It gives us legal ownership of our brand.
  2. Exclusivity: It ensures that the owner is the only one authorised to use the mark.
  3. Reputational value: It increases the commercial value of the company.
  4. Legal action: It grants its holder the right to take legal action against infringers.

Differences between trademarks, company names and domain names

It is crucial to understand the differences between trademarks, company names and domain names, as each protects different aspects of business identity.

  • Brand: It is a distinctive sign that identifies the products or services offered by a self-employed person or company. Its ownership is acquired through valid registration with the SPTO at national level.
  • Company name: This is the name of a company or legal entity and serves to identify it in the market. Its ownership is obtained by application to the Central Mercantile Register and its validity depends on the subsequent execution of the deed of incorporation of the company before a notary.
  • Domain name: It is the online address of a company or project on the Internet. Its ownership is obtained by purchasing it from a domain name registrar.

Contrary to what seems to be a widely held belief, neither company names nor domain names confer trademark rights on their owners, i.e. only by registering a trademark can competitors be prohibited from using the same or similar names, expressions, logos or slogans. to those protected by our brand.

How to avoid legal problems related to your brand

Before registering a trade mark, it is essential to carry out a previous search to ensure that the trade mark is available, in the sense that there is no identical or similar trade mark that has been previously registered and that could create conflicts with our trade mark.

This search involves checking the databases of trademarks registered with the competent authorities, such as the Spanish Patent and Trademark Office (SPTO) or the European Union Intellectual Property Office (EUIPO), among others. 

Pre-searching helps to avoid this:

  1. Conflicts with existing trademarks: By verifying that there are no similar or identical brands in the same sector.
  2. Additional costs: Avoid unnecessary expense in the process of registering a trademark that is already registered by someone else.
  3. Litigation: Prevent potential trademark infringement claims, which can be detrimental to the company's reputation.

Registration process

The process of registering a trademark consists of several stages:

  1. Application: The first step is to file an application for registration with the competent authority, either at national or international level. 
  2. Examination of substance and form: The authority shall review the application to ensure that it complies with the relevant formal and substantive requirements.
  3. Publication: If the application is accepted, the trade mark will be published in the official trade mark bulletin so that any third party can file oppositions if they consider that the registration of that trade mark infringes their rights.
  4. Concession: If no oppositions are filed or if the oppositions are resolved in favour of the applicant, the trade mark will be officially registered and a certificate of registration will be granted.

Duration and content of trademark rights

Once registered, a trade mark confers on its holder exclusive rights on their use in connection with the registered products or services. These rights include:

  1. Exclusivity rights: Only the trade mark owner has the right to use the trade mark in the market within its scope of application, which means that he can prohibit competitors from using it.
  2. Right of transfer: The holder can transfer or license his right of use to third parties, which can be a source of income.
  3. Legal right of action: The owner can sue for infringement against those who use a similar or identical mark without authorisation.

The trademark registration has an initial duration of 10 yearsThe trademark is renewable indefinitely for successive periods of 10 years. It is important to note that if the mark is not used for a prolonged period, it may be subject to cancellation.

It is essential to have specialised advice to ensure the correct registration of our trademark in order to avoid legal problems. If you need help, get in touch with us. At MBR Lawyerswe are expert trademark lawyers.