Trademarks and Logos

What are Trademarks and Logos?

Trademarks are one of the most valuable assets of any company. Therefore, protecting through registration is essential, regardless of its commercial activity.

INPI – National Industrial Property Institute – and WIPO – World Intellectual Property Organization – define trademark as a ‘’sign used to distinguish a company’s products or services from other companies’ ‘’.

In turn, the definition adopted by the American Marketing Association, still used in classical marketing editions, adds details which achieve the legal definition: ‘’ A Trademark is a name, term, sign, design or a combination of these elements, used to identify products and services belonging to a seller, or a group of sellers, and to differentiate them from their competitors’’’.

As you register a trademark you’re guaranteeing its property rights and the exclusive right to use it in the products and services for which it is destined for.

The Logo, on the other hand, is a constitutional signature, a sign used to identify and distinguish its company, as an entity that provides services or commercializes products, from others.

As in the registration of the trademark, it is important to protect the sign and/or the image of its company, through the registry of the symbol used to identify it. Whereas the trademark registry is destined to protect its products or services, the logo figure is intended to protect its entity from its competitors, making it unique by being a sort of ‘’brand’’ of its company.

Types of Trademarks

There are various types of trademarks, namely:

  • Word Trademarks: composed of verbal elements only, namely words, including names of people, letters or numbers.
  • Figurative Trademarks: composed of figurative elements only, as designs, images or figures.
  • Mixed Trademarks: composed of verbal and figurative elements.
  • Sound Trademarks: composed of sounds.
  • Three-Dimensional Trademarks: composed of the shape of the product or its package.
  • Smell Trademarks: composed of smell
  • Collective Trademarks, of Certification or Association: Sign belonging to a collective person who controls the products or services, or establishes norms by which these should operate.

A logo, as the trademark, can be Nominative (word), figurative or mixed.

  • Trademarks Requirements
  • Rights

The registry of a trademark grants its holder a number of rights, most importantly the right to oppose the use or registry of any similar or identical sign by third parties, when utilized to designate the same products or services with clear affinity or relation to those indentified by the registered trademark.

Pursuant to article 258th of the Industrial Property Code, ‘’The registry of a trademark grants to its holder the right to prevent third parties from using, without its consent, in the exercise of economic activities, any equal or similar sign in products or services identical or related with the ones for which the trademark was registered, and that, as result of the similarity between the signs the affinity of the products or services, may present a risk of confusion, or association, in the consumer’s spirit’’.

Registry Request (National Way)

Is the trademark registry the most suitable option for my invention?

To request the registration of a trademark is it necessary to submit a trademark application form (M1), made available by INPI; a graphical representation of the trademark for publication, if the sign to protect is not only verbal, and the payment of the request fees.

When the request is made in INPI, and when the registry was not granted to it, it is only valid in the national territory.

Upon checking in INPI, the request is formally analyzed and prepared for publication in the Industrial Property Bulletin.

For a community registry request, a request for the whole European Community, it is necessary to fill an appropriate form made available by IPIUE, in which the request process is singular and centralized.

An international request should be made to WIPO, through the National Institutes, i. e., in Portugal to INPI or IPIEU.

With the publication of the request in the Industrial Property Bulletin begins the two month deadline for the filing of complaints by anyone who deems itself harmed by the eventual concession of the registry. In turn, the applicant can contest the complaint within 2 months, counting from the date of notification of the filing of such complaint.

If no complaint is filed, or by the end of the discussion, the request process is submitted to an exam to assess the absolute and relative motives led by INPI which will lead to either the concession or the refusal of the trademark’s registry.

Apart from taking into account the complaint, if there is any, the request is examined to verify if there are necessary elements for the initial procedures of the process missing, if the required procedures for the concession of the registry were met, if the trademark has enough distinctive character and if it violates the rules of moral, public order and good customs.

In a regular, unopposed process, the decision shall be given within 4 to 6 months counting from the date of the Industrial Property Bulletin in which the request was published.

Registry Request (community and international ways)

Community Protection – European Union Trademark

This registry covers all the member countries of the European Union in a single registry with efficiency in the European Market.

This type of registry is more favorable in economic terms, however it involves a higher risk since it is not possible to carry out a reliable direct search in each of the member countries and, in any case of an opposition, if admissible, even if there is a Portuguese registry very similar or identical, the community request is not possible, with no choice other than converting the request into direct requests for the various countries in which there are no impediments.

If, by any chance, there are oppositions, they can be resolved through the signing of agreements of coexistence of rights between the parts.

International Protection – European Union Trademark

Through the International Way, the process will have to be based on a national or European Union trademark.

In any of the basic options it is possible in the period of 6 months to claim the date of the first request, whether it was filed in Portugal or in the European Union.

It is also possible, in the International Trademark Registry, to designate the European Union block, which is a jurisdiction that ratified the Madrid Protocol.

Upon the registry request, the international trademark is analyzed internally in each of the Countries/Blocs designated, not later than 18 months after it. During this period there can be official actions or complaints to which an answer shall presented, under penalty of the international trademark not being approved.

The international registry is beneficial as far as it allows for the centralization of multiple countries in a single process, which is more effective, and, in a future phase, it allows for the extension to other countries which belong to the Madrid Agreement/Protocol.

The only inconvenient is the initial dependency, and for the period of 5 years, of the base registry. If the request/registry of the national or community trademark is refused or expires, it will be reflected on the international trademark.

Trademark Registry Maintenance

The registry of a national trademark is valid for 10 years, counting from the date of the respective concession, renewable for equal periods indefinitely.

The European Union trademark (valid in all the member-states) or the international trademark (member-states of the Madrid Protocol for the Registry of International Trademarks), are valid for 10 years and it is necessary to proceed to its renovation after 10 years, counting from the date of the registry request.