A trademark is any sign capable of distinguishing goods or services, that is not contrary, to the provisions of Article 7 and 8 of the Law of Trademarks and other Distinctive Signs.
The Article includes a list of intrinsic reasons, such as lack of sufficient distinctive character for the product or service to which it applies such as; to be contrary to the law, public order, morality, or consist of the usual or common form of the product to which it applies or its packaging. 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.
Additionally, the articles establish that a trademark cannot be registered if it affects a prior right of a third party. Such as, the sign is identical to a trademark or a trademark application that is about to be registered by a third person from an earlier date that mentions the same products or services. Another reason for a trademark rejection could be that the trademark application causes a risk of confusion or association with a trademark that its already registered.
It is recommended before starting the registration process to carry out a search for the mark to be registered. The results are not binding. But it will allow us to know all the same or similar trademarks that are registered, and at the end it will let us know if our brand is available. The process can take three days for denominative trademarks and fifteen days for the ones that include a design.
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.
At the end of the registration process 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.
The process is relatively simple; however, we recommend being very attentive to each of its stages, applicable notifications or visit the IP office for follow up.
Please contact Francisco Alvarado falvaradoyasociadoslegal.com if you require additional information.