Most people would think that the trademark registration in our country or any country for that matter is a very well defined process with basic requirements, but the fact is that to date there is uncertainty about the protection that institutions provide in this particular area and what really prevails is a disablement of the tools that the state provides citizens to ensure their rights over their own creations.
First of all, to start the process we need to define our trademark which is defined any sign capable of distinguishing goods or services, but not just any sign, as it needs to be a sign that we can ensure is not included in any of the reflected cases by Article 7 and 8 of the Law on Trademarks and other Distinctive Signs, which includes a list of intrinsic reasons, such as lack of sufficient distinctive character for the product or service to which it applies; to be contrary to law, public order or morality, or consist of the usual or common form of the product to which it applies or its packaging, or a necessary or imposed form by the nature of the product or service in each case; and those signs, whose use would affect a prior right of a third party, meaning affected a prior right of a third party, including, for example, that the sign is identical to a trademark or pending registration in the country by a third person from an earlier date which distinguishes the same products or services or their use could cause a risk of confusion or association with that trademark.
Considering that in our country like many others, the process of trademark registration can take months or even years if an opposition or objection is filed, a search for the mark to be registered is recommended before starting the registration process in our country. The search, costing only fifteen dollars, provides a broad range of benefits because it allows us to know all the same or similar trademarks that are registered and thus to know if our brand is available and recognize in advance the odds of acceptance, hence the risk that oppositions arises decreases significantly.
Once the previous aspects are taken into consideration, we can file the application for trademark registration before the Secretary of the Intellectual Property Registry which will start a series of examinations that the authority makes to our request. The first is the formal examination to confirm that the application complies with Articles 10 and 11 of the Law relating to priority rights and basic elements that should be noted in the application, ie that the power of attorney is duly authenticated by apostille, that the products and services listed in the application are correct and are part of the corresponding classes, that sufficient information is provided to identify the applicant, and that the respective proof of payment is attached.
Secondly the Intellectual Property Registry issues the notice of publication that must be submitted to the Official Gazette and includes: a) The name and address of the applicant; b) The name of the legal representative; c) The date of submission of the application; d) The number of the application; e) The mark for which registration is sought; and, f) The list of products or services for which you want to register the mark, and the corresponding class or classes.
Once the notice is published in the Gazette we enter into 60 sensitive days of the process, as they are two months during which any interested person may oppose the trademark by filing their opposition legally supported and accompanied with the relevant evidence.
Once the term for filing objections is fulfilled, the Registry will examine whether the mark falls within any of the prohibitions of Article 7 and some of the cases referred to in subparagraphs a), b) and d) of Article 8, which were previously addressed and what constitutes substantive examination.
If everything was correct and within the parameters specified by law the Registry proceeds to register the mark and issue a certificate attesting the ownership and validity of the mark applied for, to be published in the Official Gazette or in the means of official publication of the Registry.
For additional information, please contact Francisco Jose Alvarado at falvarado@alvaradoyasociados.com.ni