After many years of dedication to the exciting world of intellectual property, I still feel a childlike joy when communicating to a client the granting of his trademark.
Registration is the culmination of a process that is not always easy. Often several searches and feasibility studies are necessary, and along the way the first proposals and ideas have been discarded until we find the distinctive sign that convinces us to identify our products and activities in the market.
The registered trademark grants us an exclusive right of use, so that we can prevent other companies from using the same sign to distinguish the same products, or a similar sign for similar products, when there is a risk of confusion. In most countries, registration is valid for 10 years and can be renewed for successive periods indefinitely. However, to be able to fully exercise our rights whenever we need to, it is necessary to take care of and monitor certain aspects, one of which is the use we make of the trademark.
From the fifth year onwards – the third year in some countries – the trademark must have been used and we must be able to prove it, otherwise we run the risk that a third party may request its revocation. This use must comply with certain conditions: basically, the trademark must be used for the goods and/or services for which it was granted and in the form in which it was registered or with non-substantial variations, i.e., as the law states, with modifications that do not alter the distinctive character. Using the trademark under these conditions will allow us to prove its use when necessary.
Currently, this proof of use may be required when we initiate a challenge or opposition procedure against similar trademarks, whether they are Spanish trademarks, European Union trademarks or trademarks in any of the countries where we have protection.
Given the dynamism of the market, it is common to expand the field of activity with new products or services and to discontinue others. However, whether for marketing or other reasons, changes are often made to the initial design of the logo, either in terms of colours, layout, typography or by adding or modifying certain elements.
Therefore, it is important to periodically review whether the current use of the logo is in line with our records. In other words, it is important to check that the products and activities we are currently interested in are protected, as well as to determine whether the changes we have made to our trademark go beyond the limit of what is considered an alteration of the distinctive character, an expression which, like any indeterminate concept, has generated a great deal of doctrinal and jurisprudential discussion and therefore deserves individualised study.
Depending on the assessment of these parameters, we will be able to consider the advisability of a new registration which, together with those we already have, will allow us to continue enjoying optimum protection at all times.
Article by Cristina Margalef.