A few days ago a press release was published stating that Apple has sued the Ukrainian director Vasyl Moskalenko for using the word “apple” in the title of the movie “Apple-Man”. This shows us how companies protect their brands and that there are many reasons why it is advisable to register both the brand and the name of the company. In this article we will discuss their differences, why it is important to register them and what steps should be taken to do so.
The difference between a brand and a trade name.
To help you understand the difference between a brand and a trade name we will give you an example, continuing with what we’ve said about Apple. In this case, the brand is Apple and the trade names are iPod, iPhone, iPad etc. Therefore:
- The trade name is used to differentiate one company from another in the market which can sell similar products.
- The brand name is used to distinguish a company’s products or services from other products and services.
From a legal point of view, the trademark and the trade name can be defined in the following way:
What is a trade name?
It includes any sign susceptible of graphic representation that identifies a company in the market and is used to distinguish it from other companies that perform identical or similar activities.
What is a trademark?
Any word, alphanumeric or figurative element or that is clearly perceived by the senses, which function is to differentiate some products or services from the rest of those of its competition, provided that it is susceptible of representation to be clearly distinguishable and recognizable.
Advantages of the trademark and trade name registration
When a trademark or a trade name is registered, the owner obtains the right to use it exclusively for a period of ten years, after which the registration must be renewed.
This means that the registration of the trademark and trade name provides the following advantages:
The owner of the trademark or the trade name will have the exclusive right to use it for those products or services for which it has been registered, throughout the national or international territory, depending on the countries in which it has been registered. For example, you may decide to register a European trademark.
- The trademark owner may also prevent others from using that element or a similar one for the same type of goods or services.
Process for registering a trademark or trade name in Spain
The steps to be followed in order to register a trademark or a trade name in Spain are:
- The first thing to do is to check whether that trademark or the trade name has already been registered in the directory of the Spanish Patent and Trademark Office (OEPM). This must be verified because the element that is to be registered must not be prohibited and must not have been registered before.
- In the event that the trademark or trade name is available and complies with the rest of the legally established requirements, the application may be submitted. It is important to bear in mind that the application must indicate for which class of the International Nice Classification the protection is requested.
The Nice International Classification is a classification of goods and services. That is used for the registration of trademarks and service marks, that divides goods and services into 45 Classes. Each product or service that wants to be registered must be classified in one of these classes. Being 125,36 € the cost of the protection of the first Class, and 81,21 € the cost of each additional class that wants to be protected.
- Finally, once the application has been prepared, it may be submitted in person together with the proof of payment of the OEPM fee, or electronically at the OEPM’s digital landing. In general, the registration process usually takes about twelve months, unless an opposition is filed or a document is missing.
Consequences of not registering a trademark or a trade name
Failure to register a trademark or a trade name entails some consequences and risks. The most common risks of using a trademark, but not registering it, are the following:
- That someone starts using your trademark or trade name and you cannot stop them from it.
- That someone registers your trademark, which will force you to stop using it.
Therefore, if you do not register your trademark or trade name, you will not be able to prevent other people or companies from using it for their benefit. This has two serious consequences:
- Third parties may take advantage of the reputation you have built with your trademark or trade name and, therefore, there may be a loss of customers or sales in favor of whoever has registered your trademark.
- You would have to stop using your trademark and change the name of your business, which may entail high expenses that you could have avoided had you registered the trademark or trade name.
The registration of the trademark and trade name in Spain is therefore an important process in which the intervention of a business consultancy specialized in this type of procedure is essential, to help you in the whole process and to carry it out quickly.