How and why should I register my trademark?
In a globalised and highly competitive world, intangible assets have become one of the most valuable elements of companies, as they not only reflect the economic figures of the business, but also represent the corporate identity, the perception of clients and the reputation of the company.
The annual report prepared by Interbrand in 2023, in which the consulting firm gives an economic valuation to renowned Spanish brands, valued brands such as BBVA at 5,643 million euros, Repsol at 1,990 million and Mercadona at 1,724 million, among many others. Likewise, the report published in 2023 highlights a 10% growth in the valuation of Spanish brands.
For this reason, in this article we are going to look at what a trademark is, what benefits trademark registration can bring to our company and how we can register a trademark.
What is a trademark?
A trademark is a distinctive sign that identifies and distinguishes the goods or services of an enterprise from those of others in the marketplace. This sign can be a word, a logo, a symbol, a sound, a three-dimensional shape, a colour or a combination of these elements.
When applying for the registration of a trademark, it is essential to specifically select the goods and/or services of the Nice International Classification for which you wish to obtain protection. In this way, our trademark will be registered ensuring the protection of the products and/or services we offer in the market and obtaining exclusive rights to its use in the territory where it is registered. This allows trademark owners to protect the trademark against unauthorised use by third parties and to take legal action in case of infringement.
What are the benefits of trademark registration?
Registering a trademark offers a number of significant benefits that can strengthen and protect your business. Some of the main benefits include:
- Legal protection: registering a trademark gives you exclusive rights over its use, allowing you to take legal action against third parties who attempt to use it without your permission.
- Preventing unfair competition: it helps to prevent competitors from using similar names, logos or symbols that may confuse consumers.
- Brand value: A registered trademark can increase the value of your business, becoming an intangible asset that can be sold, licensed or used as collateral for financing.
- Consumer recognition and trust: A well-managed trademark can become synonymous with quality and reliability, strengthening client loyalty.
- Territorial protection: registration gives you exclusive rights in the territory where the trademark is registered, which is essential for national and international expansion.
In short, registering a trademark gives us exclusivity in its use in a given market, allows us to differentiate ourselves from the competition by avoiding the risk of confusion among consumers, confers the right to grant licenses to third parties for the use of our trademark and allows us to increase the value of the company when it comes to attracting future investors or buyers.
Where can I register my trademark?
The first step before registering a trademark would be to determine the territorial scope for which we want to apply for protection.
- National: the Spanish Patent and Trademark Office (SPTO) is the entity in charge of trademark registration in Spain. Registering your trademark with the SPTO grants exclusive protection within the Spanish territory.
- European Union: The European Union trade mark confers on its owner an exclusive right throughout the territory of the European Union. This right is unitary in nature, so that the EU trade mark can only be applied for and, where appropriate, granted for the entire territory of the European Union.
- International: if your business is international or if you are aiming for future international expansion outside the European Union, you may also apply to register your trade mark for one or more countries outside the EU.
In addition, in the case of a broader international registration, the Madrid System or International Trademark Registration System allows, by filing a single application and paying a single set of fees, to obtain trademark protection in more than 120 countries representing 80% of world trade.
What are the steps to register my trademark?
- Background research
Prior to applying for the registration of the trademark, it is advisable to carry out a background search to avoid subsequent contingencies and the consequent refusal of registration.
For this, it is necessary to have the appropriate legal advice from professionals to carry out a study of the feasibility of registering the trademark and to verify that the trademark has not been previously registered by another entity.
- Submission of the application
Once the preliminary examination has been carried out, the application for registration must be filed with the Office where protection of the mark is sought. The application must include a clear representation of the mark, the list of goods or services to be covered according to the Nice International Classification, and the payment of the corresponding fees.
- Examination of the application
The Office will examine your application to verify that it complies with the legal requirements and does not conflict with trade marks already registered. During this phase, formal defects may be requested to be remedied.
- Publication and objection
If the application passes the initial examination, it will be published in the relevant Official Gazette. During this period, third parties may file oppositions if they consider that your trademark infringes their prior rights. Oppositions can be filed by any person or entity that has a legitimate interest in protecting its own trade mark rights. The initial assessment of the viability of the registration is essential to identify those pre-existing trademarks that may pose a risk to your application for registration and avoid additional costs.
- Registration
After a certain period of time, if there are no oppositions or if the oppositions are resolved in your favour, the Office will register your trade mark and issue you with a certificate of registration.
- Surveillance service
The post-trademark surveillance service is essential to protect your industrial property rights on an ongoing basis. By actively monitoring the application for registration of similar or identical trademarks by third parties, you can quickly detect any attempt by competitors to register trademarks similar to yours and act accordingly by filing an opposition to the registration of their trademark.
In an increasingly competitive and globalised business environment, protecting your intangible assets is critical to ensuring the success and reputation of your business in the marketplace.
Ultimately, registering a trademark is a crucial step in protecting the identity of your business and its products or services. As the process can be complex and requires detailed knowledge of intellectual property laws, it is highly advisable to seek professional advice.
Do you need advice? Access our area related to trade mark registration: