Can I register a trademark internationally?

Can I register a trademark internationally?

Today’s market is characterised by intense competition, which makes brand identity a very precious resource. Let us not forget that the main purpose of registering a trademark is to make it clearly distinguishable from the products and services offered by competitors. This differentiation is essential for the relationship between the company and its customers and is based on three key aspects: the identification of the origin, the transmission of the prestige accumulated by the brand and the consolidation of a unique identity.

In previous posts of this blog, we have talked about how to register your trademark at a national level through the Patent and Trademark Office. We will now focus on how to register a trademark for international protection.

Protect your trademark in other countries

It is important to remember that the protection of your trademark is territorial, i.e. protection is only obtained in the countries in which the trademark has been registered. Registering it with the SPTO only protects you in Spain, while registering it with the EUIPO grants protection at European level.

Therefore, if you are contemplating the internationalisation of the company and expansion to markets outside European territory or simply want your trademark to be protected worldwide to avoid any bad faith use by third parties, the recommendation is to register the trademark at the international level.

The International Trademark Registration System, also known as the Madrid System, is a procedure that centralises, manages and maintains trademark protection in more than 120 countries, including intergovernmental organisations.

When can a trademark not be registered?

When registering an international trademark, it should be borne in mind that there are certain limitations and that not just any element is acceptable. According to Law 17/2001 of 7 December 2001 on Trademarks, any signs, especially words, including personal names, designs, letters, numerals, colours, the shape of goods or of their packaging or sounds, may constitute trademarks, provided that such signs are capable of:

• Distinguish the goods or services of one undertaking from those of other undertakings.
• Be represented in the Register of Trademarks in such a way as to enable the competent authorities and the public to determine the clear and precise subject matter of the protection granted to its proprietor.

In turn, the Trademark Act includes a list of prohibitions, divided into absolute and relative prohibitions, which determine what can be registered as a trademark and what cannot.

Absolute prohibitions include, for example:

1. That the sign is devoid of distinctive character.
2. That the sign we wish to register has become customary or usual in common parlance.
3. That it is contrary to the law, public order or good customs.
4. They may mislead the consumer as to the nature, quality or geographical origin of the product or service.
5. That they are signs identifying wines or spirits and contain indications of geographical origin, but that this is not their actual origin.

Relative prohibitions include, for their part, the following:

• Earlier trademarks and trade names which are identical to an earlier trademark designating identical goods or services and as a result there exists a likelihood of confusion on the part of the public.
• Trademarks and trade names with a reputation.

How to register an international trademark

To begin the registration process at the international level, there must be a national trademark application or registration in force that serves as a basis. In other words, the trademark must be previously registered with the SPTO, in the case of Spain.

On the other hand, it will also be essential to carry out an exhaustive search for pre-existing trademarks, both identical and similar, registered in other countries or international organisations. This will minimise the risk of facing oppositions or conflicts during the application.

Once the check has been carried out, the first step will be to file the application with the SPTO as the office of origin. The SPTO, for its part, will examine and certify this application, and if everything is correct, it will proceed to send it to the World Intellectual Property Office (WIPO).

Once the application for international registration has been received, the WIPO will carry out a formal examination of the application, and if everything is found to be correct, the offices of the designated countries will be notified so that they can carry out the corresponding examination in accordance with national legislation, and the WIPO will inform the applicant of the decision that each of the offices has adopted regarding protection in its territory.

The process of registering an international trademark can be somewhat tedious and complex, as it involves complying with a series of formal requirements and conducting searches for prior art to avoid conflicts with existing trademarks. For this reason, having the advice and experience of a lawyer specialised in industrial property becomes essential.