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