Protect your intangible assets while you expand internationally

A trademark is a sign that distinguishes products or services of one company from the products and services offered by other companies. Trademarks are protected by intellectual property rights. See the types of trademarks you may be able to register, depending on each Office criteria.

Trademarks rights are protected on national levels. This means that in order to seek protection of a trademark in different countries, its owner should comply with that country’s legislation. There are national and regional IP offices. Some countries have attributive systems and others have Declarative Systems of protection.

A trademark is a distinctive sign that makes it possible to identify in the market those products and / or services offered by a competitor. A patent is an exclusive right granted by the state to the owner of an invention. The patent allows you to exercise a monopoly of exploitation over the invention usually for a period of 20 years.

At Legal Core Group we offer trademark registration in 37 territories, including Argentina, Australia, Brazil, Bolivia, Chile, China, Colombia, Ecuador, European Union, Mexico, Paraguay, Perú, United States, and Uruguay.

An attributive system of protection of trademarks means that they are protected through their registration with the State Organism in charge of granting protection. Therefore, only by its registration, the owner of a trademark is granted with the exclusive right over it.

On the other hand, declarative Systems of protection (adopted by United States, United Kingdom and Canada) grant protection based on the prior use given to the trademark.

Trademark protection grants its owner with the exclusive right to exploit it. This implies that the trademark can only be used by its owner, who can also license it to third parties.

For Trademarks registration purposes, the products and services offered in the market are classified into “Classes”. The most commonly used system of classification is the Nice Classification, a treaty with 91 contracting members (countries). Argentina, Australia, Brazil, Canada, Chile, China, Colombia, Croacia, Cuba, Mexico, Spain and Uruguay are some of the countries that use this system.

Consequently with the nice classification, the trademark that is intended to be protected must be registered in the class(es) that includes the products or services offered. There are 45 classes, 34 of them identify products and 11 identify services. See the Nice Classification List Here.

As trademarks are territoriality rights, the protection granted will vary, depending on each country’s legislation. However, in most countries trademarks are granted for periods of ten (10) years and can be renewed upon request of its owner. Some countries require proof of use in order to renew a trademark registration. If you have doubts or concerns regarding the renewal of your trademark, do not hesitate to contact us.

The Paris Convention for the Protection of Industrial Property, which is a Treat signed by 179 countries, establishes the right of priority. The right of priority means that on the basis of a first application in one country member, the applicant may file for protection in any other member within six months and the date of filing will be considered as of the first filing.

Even tough trademarks are territorial, there is a way of filing a single application in one language for several countries at the same time. The Madrid Protocol Systems allows for nationals of member parties and companies having a commercial address in one of the members parties to access this system.

The Madrid Systems allows to file a single application that is then directed to each chosen office for its process. Therefore, the final decision is made by each regional or national office. The advantage of this system is the possibility of filing one single application in one language, saving time and effort in applying in each office separately.

4 Key things to keep in mind when protecting a trademark

• 1. Trademarks should be distinctive, meaning they should be easy to differentiate from other trademarks in the market, in relation to the product being identified.
• 2. It is important to have a correct classification of the products or services being offered
• 3. It is fundamental to know which are the impediments established by law on what cannot be registered as a trademark
• 4. It is highly important to proceed with a check in order to know whether the trademark has already been registered or there are similar trademarks filed/registered