Comprehensive trademark consulting

No. Trademarks are territorial rights and as such, their registration is only valid in countries or territories where they are registered. Furthermore, a Spanish trademark should not be used in European Union member countries if it is not registered as a European Union trademark or registered individually in each one of those countries.

There are three ways to protect a trademark beyond Spanish borders:

• National Trademark, filed country by country. This implies that it must comply with the requirements laid down by each country. In some cases this requirements are complex, just to mention, the legalization of documents. In terms of administration, it also requires the processing of separate files and is usually more expensive and time consuming compared to other options (if available).


• International Trademark, filed before the World Intellectual Property Organization (WIPO) with headquarters in Geneva. This system requires the trademark in question to have been filed at least in its country / territory of origin. That trademark is known as the "basic trademark". For applicants residing in Spain, the basic trademark must be previously filed with the Spanish Patent and Trademark Office (SPTO) or the European Union Intellectual Property Office (EUIPO) and the said trademark must be granted and remain in force for at least five years from the filing date of the International Trademark, a period during which the International Trademark will be link to its validity. With this option, we can designate the countries where we wish to extend the trademark, choosing from among the nearly one hundred that are included in this system, in addition to two supranational organizations, namely OAPI and UE (obviously the latter one should the basic trademark not be a European Union Trademark). This will involve the payment of fixed fees as well as other fees that vary according to the number of classes and designated territories.


• Supranational Trademarks filed before a supranational organization that comprises various countries. Currently, this is only possible by filing a trademark with the European Union Intellectual Property Office (EUIPO), with headquarters in Alicante; in other words, filing a European Union Trademark (formerly known as a Community Trademark), which upon registration will provide us with a unitary protection throughout the entire EU territory, or filing the trademark with the African Intellectual Property Organization (OAPI), which will also provide us with a unitary protection in most French-speaking African countries (see OAPI).

They are not exclusive, but rather complementary. For example, any of the three options can be used with any member country of the European Union. Other countries, such as Japan or the USA, accept both the direct national trademark option as well as the International Trademark option. Nevertheless, to register a trademark in Latin American countries, Colombia and Mexico excepted which already form part of the International Trademark system, only the first option can be used In other words, there is no other option but to file a trademark country by country. However, given the implications regarding the fulfillment of formal and legal requirements, not to mention the costs involved, each of these three options requires a prior study in order to finally select the option that best fits the client's needs. To that end, UNGRIA has a specific department formed by a multilingual team of lawyers who carry out both the prior study as well as the subsequent processing of the trademark before the different administrations of the countries to which the trademark is finally extended.

Prima facie, they are practically the same as those of a Spanish trademark, although there are differences too. One of the main differences resides in the territorial scope of protection, since they are valid throughout the entire European Union, consisting currently of 28 countries (the consequences of BREXIT as still under discussion). Moreover, the holder of a European Union Trademark cannot restrict the scope of protection or surrender the registration of that trademark in any country, as it is a single registration carried out by means of one application and one registration procedure before the European Union Intellectual Property Office (EUIPO. The protection period lasts for ten years from the date of the application, renewable for subsequent ten-year periods.

The decisions of the EUIPO can be appealed before the EUIPO's Boards of Appeal and the decisions of the Boards of Appeal, in turn, can be appealed before the Court of Justice of the European Union (CJEU) with headquarters in Luxembourg.

Due to its unitary property character, it cannot be transferred partially. In other words, it is only valid for all countries in the European Union. This said and in general, part of the goods and services of a European Union Trademark can be transferred to a third party, however this partial assignment having effects in the entire European Union.

On the other hand, it is possible for the owner of a European Union Trademark to grant partial licenses of use for that trademark for one or several countries in the European Union and for all or some of the goods or services claimed by the trademark. At the request of a third party and through negotiation, it is also possible to limit the territorial scope of use of the trademark, as long as it does not imply restrictive practices contravening free competition rules.

Most registration procedures are simplified and there are fewer costs compared to those involved when applying for the same trademark country by country before the respective national registries. However, the European Union Trademark should observe national trademark rights and vice versa, with the older one always prevailing in the event of conflict. This can lead to exceptions of use (but not of registration) in one part of the territory, especially when new countries join the European Union, according to the principle of "acquis communautaire", whereby a new member state must adopt most of the Community legislation in force when it joins, including the rules governing European Union Trademarks.

In addition, it should be noted that generally speaking real and effective use of a European Union Trademark in one EU country is to prove and justify that the trademark is used throughout the entire EU. For example, a European Union Trademark cannot be challenged for non use in, say, Finland, as long as it is used in, say, Spain.

Only the side-effect that it can be opposed by a third party and be denied based on another previous European Union Trademark or based on any previous national or international trademark in force before the national registry of an EU country. For example, a national or international trademark that is only registered in France could prevent a European Union Trademark from being registered if the two are deemed to be confusingly similar and the holder of the prior trademark files an opposition.

In addition, there is a broader range of ex officio objections based on absolute grounds of refusal which can be alleged by an examiner of the EUIPO. Therefore, if a European Union Trademark were to be considered generic, for example in Greece, it would be refused for all of the European Union.

In these cases, a European Union Trademark can be transformed into national trademarks by payment of additional fees in countries where the opposition or refusal due to an ex officio objection have no effects, all of this being possible retaining the initial priority or application date. In this case, the trademark will be processed as independent national trademarks according to the domestic law of each the designated countries. Once again, multidisciplinary professional consulting is essential to better guarantee the rights of the trademark owner in adverse situations.

In 1891, an agreement called the "Madrid Agreement" was adopted in Madrid and was initially signed by a handful of countries, Spain being one of the founding countries. It signed the agreement on April 14, 1891 and ratified it on June 15, 1892. Throughout the 20th century new countries joined, a tendency that continues along the current century. In 1989, the new "Protocol Relating to the Madrid Agreement" was signed, commonly known as "The Protocol". One of the achievements of this second agreement, which relaxes the previous rules, was to allow other countries such as the United States and Japan, which were wary of its inflexibility, to join. Currently, the International Trademark System or the "Madrid System" is made up of nearly one hundred contracting parties, which include both sovereign countries and supranational organizations (the European Union and the OAPI).

It allows the applicant with a single filing to extend a basic trademark that was previously filed in its country or territory of origin, in our case be it Spain, via a national Trademark, or the European Union, via a European Union Trademark, to all or some of the remainder member countries / territories, technically known as the "contracting parties". The contracting parties to which an International Trademark is extended should be chosen on beforehand by the applicant. Once the International Trademark has been registered, there also exists the possibility of designating new contracting parties at a later date through a procedure called "subsequent designation".

However the basic trademark must at least having been filed in the country / territory of origin and the validity of the International Trademark is linked to the final grant of the basic trademark and the subsistence thereof during five years following the application date of the International Trademark.

The application of an International Trademark takes place with the World Intellectual Property Organization (WIPO) with headquarters in Geneva. However, this filing cannot be carried out by the applicant itself directly before WIPO. The applicant must first of all file the basic trademark at the national Office of the country / territory of origin, in our case, the SPTO or the EUIPO, who in turn will pass the application to WIPO after having checked the conformity thereof with certain requirements. Under normal standards, WIPO will retain as filing date the same filing date of the basic trademark, a date also observed by the designated contracting parties.

Once WIPO has also checked that the new application complies with certain requirements, it will launch the trademark to all designated contracting parties. After that date, there is a period that ranges from 12 to 18 months, as the case may be, so that the examiners of the designated contracting parties can raise objections to the final registration of that trademark in their respective territories. In this case, a contradictory proceeding will begin in order to determine whether the International Trademark should be granted or refused in the corresponding country / territory. An adverse decision can be appealed, but must be done so in accordance with the national legislation of the country / territory in question. If no objections have been raised, the trademark will finally be registered.

Anyhow, if the application has been correctly submitted, it will be published in the "WIPO Gazette of International Trademarks", weekly published by WIPO in Spanish, English and French.

The answer is mixed: yes and no. Let's explain:

Yes, in the sense that WIPO assigns an International Trademark a sole registration number and date and issues a valid Certificate of Registration as if the trademark had been filed as a national trademark. However, this does not prevent the national registries from issuing their own Registration Certificates. In addition, the duration of the International Trademark is the same (ten years from its filing date) for all designated contracting parties, although some countries require the fulfillment of certain requirements in order maintain the International Trademark in force in their respective territories. This is the case of the "Declarations of Use" required by the Philippines and USA (Mexico will implement this obligation starting August 10, 2018), or the payment of certain complementary fees when the trademark is granted, as in the case of Japan and Cuba.

However, the answer is also no because, as previously mentioned, the examiners of each country or territory have the power to grant or refuse the International Trademark, which in practice means that that an International Trademark can be granted in some countries and refused in others.

In fact, the International Trademark is to be considered as a national trademark registered in different countries, but processed partially and with various registry aspects managed by WIPO.

The launching of this type of trademark more than a century ago was initially intended to simplify the application and processing of a trademark in several countries and, consequently, to reduce the costs involved in case that trademark was to be filed country by country.

With a single filing, we can designate nearly one hundred contracting parties, including sovereign states and supranational organizations, all of them under the same application date.

It will only be necessary, if desired, to deal with possible objections arising from certain designated contracting parties, should this occur, but these objections will not affect the processing and granting of the trademark in the remainder countries.

In fact, the International Trademark is a good option to jointly and inexpensively apply for a trademark in a significant number of countries.

At UNGRIA, we work on a case-by-case basis to provide you with sounded professional advice as to the most appropriate option selected among the available ones, especially when taking into account the legal and financial implications involved in choosing the best one.

It has a small disadvantage, which is the fact that it should be based on a basic trademark, at least filed in its country / territory of origin. In addition, the subsequent International Trademark is linked to the basic trademark during five years from the date of registration of the International Trademark. If, within that period, the basic trademark is refused or cancelled, the International Trademark will be cancelled too.

Should this occur, it is possible to convert the International Trademark by paying additional fees into national trademarks, country by country and in those countries where the holder is still interested in. In any case, the original application date of the International Trademark or the priority date, should this be the case, will be observed. Once that period has expired, they will no longer be linked.

On the other hand, since it is not a unitary trademark, it must be used in all the designated contracting parties and during specific time periods where required. Otherwise, it may completely or partially cancelled for non-use in some countries, regardless of the fact that it is used in others. This is the opposite of what occurs with European Union Trademarks.