LOCATIONS

Trademarks

• Filing the Application – Requirements
• Registration Procedure
• Duration
• Recording changes in the Register

Industrial Design

• Filing the Application – Requirements
• Registration Procedure
• Duration
• Recording changes in the Register

Conventions

• Paris Convention
• Madrid Agreement
• Madrid Protocol
• Council Regulation (EC) No. 207/2009 of 26 February 2009 on the Community trade mark
• Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community Design

Trademarks

Filing the Application – Requirements

• Name and address of the Applicant
• Representation of the Mark
• List of Goods and Services according to Nice Classification 11^thEdition (Classes 1-45)
• Priority date, country and number and the original Priority document which can be submitted subsequently within three months from the Application date
• Copy of the Priority document for EUTM (original in Spain)
• Power of Attorney – No power of attorney is required for an authorized representative

Registration Procedure

• Application is filed at EUIPO and examined for admissibility and classification
• EUIPO examines absolute grounds for refusal
• Application is published for the purposes of third party observations or opposition.
• Third party observations may be filed in relation to absolute grounds for up to three months after publication
• The registration procedure takes approximately six months from the application date provided no obstacles arise

Opposition

• Trademark applications are published in the Official Gazette (for Spain) – Community TM Bulletin (EUTM).
• Oppositions against trademark applications can be filed within three months from the publication date. No time extension is permitted

Duration

• Trademarks are valid for 10 years from the application date
• Upon payment of renewal fees, the Trademark will be extended for a further 10 years. The renewal fees can be paid during the last six months prior to the expiry of the ten-year protection period or up to six months after the expiry date with a fee for late renewal

Recording changes in the Register

• Assignment of Rights Requirements

  • • A written request for recordal of the Assignment or the official form
    • Assignment document simply signed by the Assignor and the Assignee – no legalization is required
    • Indication must be given of the future representative of the assignee

• Change of Name Requirements

  • • A written request indicating:

1. 1. 1. 1. Number of the application or EUTM registration
         2. Name and address of applicant
         3. An indication of the new name
         4. A copy of the Register of Companies showing the change of name

• Change of Address Written request indicating

1. 1. 1. 1. number of the application
         2. name of applicant
         3. indication of the new address

Industrial Design

Filing the Application – Requirements

• Name and address of the Applicant
• Name and address of Designer or Notice that the Designer chooses not to be mentioned in the application
• Indication of type of product (Locarno classification). In a multiple design application all products must belong to the same classification
• At least one visual representation of the design (up to 7 views for a single Design). (If priority is claimed views are unlimited because all view of a priority mark can be submitted.)
• Claim for priority must be made within one month from the application date and priority documents can be provided up to three months from the declaration of priority
• However it is preferable to submit this at the time of filing
• If confidentiality is required, publication of the Design can be deferred for up to 30 months
• Request for publication must be made up to 27 months from the application/priority date
• No power of attorney is required for an authorized representative

Registration Procedure

• Examination of the formalities of the design
• Examination of substance(that the design is indeed a design and not contrary to public policy or morality)
• Publication of design (unless deferment requested)
• If no objections, design granted from 2 – 10 days following the application

Duration

• A design has a life of five years from the filing date
• May be renewed in five year blocks up to 25 years

Recording changes in the Register

• Assignment of Rights Requirements

  • • Assignment document simply signed by Assignor and Assignee (no legalization or notarisation required)
    • Power of Attorney: No power of attorney for an authorized representative
    • Assignee address
    • Document listing the design(s) to which the Deed of Assignment refers if not listed in the Assignment document

• Change of Name Requirements

  • • Extract from the Register of Companies showing the change of name or
    • an Affidavit

• Change of Address Requirements

  • • A written request showing the old and new addresses

This text is for informational purposes only and should not be considered as legal advice. Should you require any additional information, feel free to contact us.