trademarks

These are names, graphics, numbers, colours, sounds and other signs serving to identify a company's products and services in the marketplace.

We advise clients in evaluating and defining their commercial needs to ascertain the trademark registration strategy best suited to their project, not only in legal but also commercial terms. We prepare, file and process trademark applications worldwide. To this end, we have accreditation before the Spanish Patents and Trademarks Office (SPTO), the European Union Intellectual Property Office (EUIPO), and the World Intellectual Property Organization (WIPO).

For trademark applications abroad, we have an extensive worldwide network of trusted associates, with whom we work together in preparing and filing trademarks, allowing us to centralise trademark protection management and control in all countries, maintaining a comprehensive strategic focus.

Prior to a trademark application, we offer advice as to the viability of registration, as well as possible prior trademarks that could exist and could hamper the grant of the new trademark, while also revealing risks of infringing third-party rights. We conduct the right analysis to determine the possible protection strategies in accordance with the client's interests, to obtain appropriate protection for their rights.

We advise and assist to obtain protection for industrial property rights against counterfeiting both domestically and abroad.

We formulate applications for customs intervention worldwide, coordinating counterfeit product destruction procedures with the authorities. Where the case so requires, we assist our clients in preparing and filing criminal complaints with court and/or police bodies.

On occasion, our clients' rights are threatened by third-party attempts to protect identical and/or similar trademarks, or by third parties using their trademarks without due authorisation, or similar trademarks that could affect the positioning and recognition of our clients' trademarks in the marketplace.

Specifically, in connection with new registration attempts, and in order to prevent such action from succeeding, the different forms of territorial trademark Laws and Regulations establish defence mechanisms to file opposition against new trademark applications, action for trademark invalidation, and appeals. Our clients draw on our experience and advice in recommending the actions that may prove most appropriate in each case, and to prepare, file and process these actions with the competent bodies.

Our legal department also offers consultancy and defends our clients against trademark infringements in the marketplace.

We prepare personalised reports and opinions to address any needs that our clients may have, to be submitted before public and/or private bodies, and due diligence procedures for merger, acquisition or sale operations, among others.

It is essential to check the validity and scope of protection of one's own or third-party industrial property rights before formalising any agreements that could serve to assign rights, obtain investment, licences, or other aspects.

Once the trademark is protected, it is important to establish a trademark watching system to identify any new applications that are identical or similar to the client’s earlier trademarks, and could create a likelihood of confusion or association in the mind of consumers in the marketplace. This may affect the positioning, recognition and success of the trademark in the market, and undermine the rights of the holder of a previously registered trademark. We offer a monitoring service tailored to the commercial interests and needs of the client, providing better control over developments by competitors, and better protection of trademark rights.

We reach agreement with the client in establishing the watching strategy to advise them of potential risks posed by new trademarks and inform them of the actions that may be taken in each case, in order to prevent newer trademarks from being consolidated and affecting their previously registered rights.

Trademarks can be renewed every TEN years to continue enjoying the inherent rights with which they are granted. We follow up the legal lifespan of each case and handle the whole procedure to maintain its validity.

It is essential to keep trademark registration details up to date. We advise and assist clients in properly registering any modification that could affect the holders of such rights.

We inform our clients sufficiently in advance of the expiry dates of their rights, so that they can decide whether they wish to renew them, or otherwise to revise the portfolio, and consider the need to file new registrations for their current distinctive signs.

It is essential to keep trademark registration details up to date. We advise and assist clients in properly registering any modification that could affect the holders of such rights.

We inform our clients sufficiently in advance of the expiry dates of their rights, so that they can decide whether they wish to renew them, or otherwise to revise the portfolio, and consider the need to file new registrations for their current distinctive signs.

In cases of acquisitions of companies or branches of activity, we advise on the legal situation of the potential assets to be acquired, their characteristics, encumbrances and risks, offering recommendations in this regard.

We conduct audits of rights portfolios or individual rights in order to provide the client with full information as to their status, whether for acquisition or to determine the price for the sale of rights to third parties.

Industrial property rights may be subject to various acts, such as assignments in favour of third parties, licences, mortgages and others. It is important that any act affecting such rights is duly entered in the respective Register, to ensure that it is effective and can be raised in opposition vis-à-vis third parties.

We offer consultancy about the whole process for such registrations, from the drafting of the required contracts and documents, to the procedures for subsequent entry in the public Registers.

Industrial property rights holders may bring legal action against competitors. We analyse the conflict in order to offer advice as to the different actions to be taken, which may range from amicable agreements to administrative and court action to cancel or invalidate the competitor's later right, depending on the circumstances of the case.

As industrial property specialists we deliver training courses tailored to the needs and business sector of each client.

Elia Sugrañes

Lawyer. Spanish Patent and Trademark Attorney. European Union Trademark and Designs Attorney. Managing Director. Principal partner.

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