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:
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”.
Nullity: Industrial designs are null and void in the following cases:
Generally, protection for industrial designs is limited to the country which grants the protection. There are three protection scopes:
Designs protect the product’s appearance. They cannot protect the product’s functionality. We should remember that patents protect inventions relating to machines, appliances, devices, procedures, products, and must have an industrial application and be described in such a way that a person skilled in the art can reproduce the process.
Drawings and models (designs) protect the novelty and individual character of the products, while the registration of a three-dimensional trade mark protects the distinctive character of the distinguishing symbols against other existing symbols which are being used for the same products or services. An original form cannot be registered as a trade mark if it does not meet the condition of being distinctive with respect to the products or services for which it has been requested. A product to which a design is applied or a model is incorporated which began to be marketed years before the registration application is filed will be registered, but any interested third-party may have the registration declared void because of lack of novelty. Trade marks may be renewed indefinitely for periods of 10 years, while registered community drawings and models (designs) have a maximum duration of 25 years from the registration application date.
The sooner we file the registration application, the better. However, there is a grace period which allows us to market a product for a period of 12 months prior to the filing date of the drawing or design application. Unlike patent registration, disclosing a new drawing before filing the application does not invalidate the registration through breaking the novelty requirement.
The items which can be protected as industrial design include vehicles, furniture, packaging, casing of appliances, lines of objects, novelties introduced in drawings of fabrics and paper etc.
An industrial design protects the innovative external form of the product encompassing both two-dimensional forms (drawings) and three-dimensional forms (models) or a combination of both. Innovations in the product’s form, referring to the characteristics of the product’s appearance in itself or its adornments, are thus protected. Technical aspects have no relevance for the purposes of this registration. They should be protected by a patent. Only the external form is relevant for industrial design. In addition, in the design there is no opposition phase prior to the grant. It is always granted, and once granted, it is the third party who must invoke better law.
An Industrial Design is understood as the appearance or adornment, in whole or in part, of a product which is derives from the characteristics of the lines, contours, colours, shapes, texture or materials of the product itself or its adornment, and which are visually different from another product, without taking into account its technical or functional characteristics.
The form and design of the product is associated with a brand and the companys image. It can become a major asset with economic value. If protection is not applied for, we may find that a third party registers the design of the product which our company has developed (for example), thus taking advantage of our effort.