Trade Marks

Trade marks may be the object of several types of contract: •Trade mark assignment.- the transfer may be total or partial. There is no restriction regarding the products or services over which the trade mark can be used. It involves a change of holder. •Trade mark licence.- this is a contract in which the holder grants the right to exploit the trade mark in exchange for an economic consideration.

The trade mark is an intangible asset which can be transferred by any means admitted in law, and may be given in guarantee or be subject to other in-rem rights.

If we do not register our trade mark, any third party may register it and thus obtain the rights over it, as the rights over the trade mark arise from its registration, irrespective of who created or designed it.

It is not possible to modify a registered trade mark. That is why it is necessary to introduce a methodology for periodic reviews of the company’s trade mark portfolio so as to measure and possibly correct the level of legal security in the use of trade marks. It may be that the modification performed on a distinctive sign is so substantial that it constitutes a new trade mark. In this case the new trade mark may be subject to a new registration.

The trade mark is granted for ten years. These are counted from the application date, and may be renewed every 10 years indefinitely.

The following signs or means may especially constitute a trade mark:

• Words or combinations of words, including those which serve to identify people.
• Images, figures, symbols or graphics. •Letters, figures and their combinations.
• Three-dimensional forms which include the wrappers, packaging, the form of the product or its presentation.
• Sounds.
• Any combination of the signs or sounds which for information purposes are mentioned in the above sections.

• Based on the level of awareness: renowned mark, well-known mark.
• Based on its holder: individual mark, collective mark.
• Based on the object which they designate: product marks, service marks, certification marks
• By the nature of the chosen sign: word mark, figurative mark, mixed mark, three-dimensional mark.
• For the territorial scope: National, International, Community.

The trade mark, as a property right, may belong to several individuals or entities. The resulting community will be governed as agreed among the parties.

Any individual or legal entity which plans to use a trade mark, or authorise its use by third parties, may apply for registration of said trade mark.

A trade mark is “any sign susceptible to graphic representation which serves to distinguish in the market one company’s products and services from those of other entities”.