WE HAVE BEEN USING OUR SIGN FOR SOME YEARS, WITHOUT REGISTERING IT. SOMEONE KNEW THIS AND HAS REGISTERED IT ON HIS/HER NAME. NOW HE/SHE CLAIMS WE CAN NO LONGER USE IT
This is unfortunately a common situation. A company uses a sign in the market without registering it, until one day, they discover someone else (often a business partner, a former employee, a distributor or supplier) has registered it. What can be done in such situation?
In Spain and within the European Union, there is a first-to-file system, this means that the right to the grant of a trademark belongs to the first preson to file the trademark, regardless of who’s being using it previously.
The mere use of a sign does not in principle provide rights over it, except in some particular situations. One of these cases is the one described in the title: if the person who filed the trademark knew the other company was already using it, and this knowledge can be proved, it will be considered a bad faith registration. This may result in the trademark cancellation or have it assigned in his favour.
I WANT TO USE MY TRADEMARK IN SPAIN. SHOULD I REGISTER A SPANISH TRADEMARK OR A COMMUNITY TRADEMARK?
Spanish national and Community trademarks both have effect in Spain and confer the same rights. In addition, Community trademarks also have unitary effect in the 27 countries belonging to the European Union with one single registration (Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovak Republic, Slovenia, Spain, Sweden, and the United Kingdom). However, obtaining a Community trademark can prove more difficult, since registrability requisites have to be met in all 27 countries – and if they fail to be met in one single country, the application will be rejected.
For example, if a trademark is not distinctive in one country, due to similarity to a common word used to designate the same products its meant for, it will be rejected even if it does not have a particular meaning in the rest of countries.
The convenience of one type of trademark or the other will largely depend on the particular sign – we advice to contact an expert before taking this decision.
Disclaimer: The comments above are orientative and inspired on frequent questions from our clients. They do not substitute professional legal advice. Please contact us for detailed and taylored advice on your matter.