Trademark & Patents registration
Trademark and patent granting procedure. We advise and manage all the steps to ensure a successful registration.
In our aim to protect what is most precious to you, at Henry Towers we offer a world class service to ensure we fulfill your Trademark or patent registration successfully. We will be in your shoes and represent you towards the registration office in almost any country in the world or internationally. Either if it is a trademark or a patent we will first investigate and provide you with the assessment and recommendation for next steps, including all the required steps until the successful protection of your brand and/or patent.
Precision, this is what this service requires. We at Henry Towers we only deliver outstanding service. Our procedures are very simple towards our clients, we ensure the proper understanding of your requirement and business context, we process the task and report back to you the status and completion. As easy as one, two and three.
Requirements and Business context debrief about Trademark
It is important in this process we get all the required information in a precise manner, understanding your business and its context for the patent or trademark verification and later on registration will avoid mistakes or conflicts with other brands and patents. We will dedicate the appropriate time, to validate all your information and ensure we collect all information at once.
Execution process of Patent Registration and Trademark
Our experts will investigate any potential conflict or the similarities of your trademark and/or patent with existing ones, we will report to you the evaluation and potentially any recommendation based on the obtained result from the research. Once you and us are clear and convinced about the registration we will proceed with the registration process, our team will do all paper work on your behalf keeping you informed of the progress made. We can also take care of the reminders for validation and maintenance, as well as the fulfillment of such services with the statutory body.
Report during the process of Trademark and Patent Registration
You will be informed of the progress in the process as well as the evaluation we might do after our initial research. Be assure that we will push the request as much as it is required until the registration is fulfill and notified back to your business.
COUNCIL REGULATION (EC) No 207/2009 of February 26th on the European Union trade mark.
Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:
- If it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected;
- if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trademarks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.
Upon opposition by the proprietor of the trade mark, a trade mark shall not be registered where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor's consent, unless the agent or representative justifies his action.
Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the legislation or the law of the Member State governing that sign:
- Rights to that sign were acquired prior to the date of application for registration of the, or the date of the priority claimed for the application for registration of the;
- That sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
Upon opposition by any person authorized under the relevant law to exercise the rights arising from a designation of origin or a geographical indication, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or national law providing for the protection of designations of origin or geographical indications:
- an application for a designation of origin or a geographical indication had already been submitted, in accordance with Union legislation or national law, prior to the date of application for registration of the EU trade mark or the date of the priority claimed for the application, subject to its subsequent registration;
- that designation of origin or geographical indication confers the right to prohibit the use of a subsequent trade mark.
Upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2 of the article 8 of the above mentioned EC, the trade mark applied for shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
The registration of an EU trade mark shall confer on the proprietor exclusive rights therein.
Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where:
- The sign is identical with the EU trade mark and is used in relation to goods or services which are identical with those for which the EU trade mark is registered;
- The sign is identical with, or similar to, the EU trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the EU trade mark is registered, if there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
- The sign is identical with, or similar to, the EU trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar to or not similar to those for which the EU trade mark is registered, where the latter has a reputation in the Union and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EU trade mark.
The following, in particular, may be prohibited under previous paragraph:
- Affixing the sign to the goods or to the packaging thereof;
- Offering the goods, putting them on the market, or stocking them for those purposes under the sign, or offering or supplying services thereunder;
- Importing or exporting the goods under the sign;
- Using the sign as a trade or company name or part of a trade or company name;
- Using the sign on business papers and in advertising;
- Using the sign in comparative advertising in a manner that is contrary to Directive 2006/114/EC of the European Parliament and of the Council.
Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall also be entitled to prevent all third parties from bringing goods, in the course of trade, into the Union without being released for free circulation there, where such goods, including packaging, come from third countries and bear without authorization a trade mark which is identical with the EU trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark.
The entitlement of the proprietor of an EU trade mark pursuant to the first subparagraph shall lapse if, during the proceedings to determine whether the EU trade mark has been infringed, initiated in accordance with Regulation (EU) No 608/2013 of the European Parliament and of the Council concerning customs enforcement of intellectual property rights, evidence is provided by the declarant or the holder of the goods that the proprietor of the EU trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination.
Is registration of a trademark, patent or industrial design mandatory?
Industrial property rights are not mandatory but highly recommended, the exclusivity rights will require the proper registration within the agency.
What are the differences between industrial and intellectual property in Spain?
In Spain, industrial property protects all creations related to industry: patents and utility models, distinctive signs and designs.
In contrast, intellectual property is reserved for protecting creations of the mind in which the author's personality is captured, and that are unique creations, not industrially manufactured or mass-produced.
These creations can be literary and artistic works such as novels, poems and theatre plays, films, musical works, artworks, drawings, paintings, photographs and sculptures or architectural designs, as well as rules for games and computer programs.
For each one there are different laws and the authorities responsible for their management are also different: the Spanish Patent and Trademark Office deals with the recognition of industrial property rights and the Intellectual Property Registry deals with intellectual property rights.
Do I need a representative to interact with the SPTO?
The option of whether or not to act through an industrial property agent is a personal choice and never an obligation or mandatory requirement, except in the case of applicants who do not reside in the European Union.
The SPTO notifies interested parties of any incident or resolution and communicates the timeframe for any processing needed (generally interested parties have one month to resolve and respond). Representation through an industrial property agent facilitates processing for the applicant, and is recommended, but resolution of the application is always as stipulated by law, i.e., the conditions for granting industrial property titles are the same with or without a representative.
How long does Industrial Property rights protection last and how can I extend this?
Industrial Property rights remain in force as long as the maintenance and renewal fees are paid within the following timeframes:
- Patents. Maximum of 20 years from the application date. Only in the case of patents for pharmaceutical and phytosanitary products is it possible to apply for what is known as a Supplementary Protection Certificate (SPC), which extends the protection of a patent for a maximum period of five years after expiry.
- Designs. Maximum of 25 years.
- Distinctive signs. Can be maintained indefinitely by timely renewal.
Once the above periods have expired, the inventions are in the public domain and can be freely used by anyone. It is important to point out that Patents and Industrial Designs cannot be “renewed” indefinitely as in the case of trademarks.
This is a very unique service, where we will ensure you are fully compliant and up to date with your obligations towards Spanish legislation and tax authorities
Gerente de Contabilidad y Nóminas at Henry Towers