About Trademarks

Every country has its own definition of a trademark but in general terms we may say a trademark is a sign (word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, even odors!!) useful to identify a product or a service.

How many times, while driving on a freeway with your kids, your 3-year old pointing at distant golden arches says: Look daddy, McDonalds!! This is what a trademark really is: a sign that even a little boy can use to distinguish his favorite restaurant!!

The different goods and services are classified or organized according to different classes or categories. When you file a trademark application, you must specify in which class/es or categories you are trying to protect your brand. If you are not sure in which class you should file, just let us know the goods or services you provide and we will provide you with advice free-of-charge, depending on the country in which you need to protect your mark.

At present, 83 countries use the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification). This is an international classification of goods and services applied for the registration of trademarks and service marks comprising forty-five (45) classes.

If the country you are interested in does not use this agreement, we will provide you with a classification free-of-charge in accordance with the local regulations.

You can register your trademark in several classes if you use your mark for identifying products/services classified in different categories. In most countries you must use the mark in the class you register it. In any case, there are some countries that allow you to have “defensive” trademarks, that is a trademark registration in a class you are not using but just to prevent other parties from using or registering it.

Not all the countries have the same concept of what is registrable as a trademark. There are some signs commonly considered as registrable: words, logos, combination of words, etc. There are some others that are more conflictive. For example, sounds, smells and colors are perfect examples of signs that not all the countries consider registrable.

Trademarks are territorial rights. That means that a trademark registered in a country will give protection against infringements in this particular country. Someone may lawfully use your mark in a country in which you do not have trademark protection and there is nothing you can do to prevent it. That is the reason why it is so important to define in which countries you need your trademark protected. Remember that there are no trademarks valid in all the countries of the world. You need to extend your trademark rights on a country-by-country basis.

A priority date is the date on which the first trademark application for your mark was filed with some Trademark Office somewhere in the world. Every time you file a trademark application in any country of the world “claiming priority” to your original application, the filing date in the foreign country will be the filing date of your original application. . In accordance with the Paris Convention you have six months to extend your trademark rights abroad, claiming priority to your original application.

Let me give you an example: If you file the first application for your mark in the US on October 1, 2012, you have six months (April 1, 2013) to file your trademark in any country “claiming priority” to your US case, and the filing date in this country will be October 1, 2012.

There are several agreements that help you out with extending your trademark rights abroad. The most important one is called the Paris Convention for the Protection of Industrial Property. This agreement provides that an applicant from one contracting State shall be able to use its first filing date as the effective filing date in another contracting State, provided that the applicant files another application within six (6) months from the first filing. Let me give you an example: If you file a first trademark application on October 1, 2013, then you have six months until April 1, 2014 to extend your trademark rights abroad and the filing date in all those foreign countries will be October 1, 2013.

In most countries a trademark registration is valid for ten (10) years from the filing or granting date. Once registered, you can renew it indefinitely as long as you timely file all post registration maintenance documents.

In most countries, you can use the “TM” sign during the application process and before the trademark registration is granted. Instead, the ® symbol may only be used after the mark is registered, in connection with the goods and services listed in the registration, and while the registration is still alive.