By Cristian Maldonado, Lawyer
cristian@estudiomalis.com.ar
1- The brand and the commercial denomination must be protected as any other physical asset of the company.
2- Once the creative development is elaborated (the election of the name and the design or logo), it is important to attend the legal aspects of the brand. The first thing to do is a research in the official trademark registration database.
3- With the results of the research, a feasibility study is done. This means that a study is made based on the already existing brands in the market (whether the are registered or pending) to know if it is possible to start the registration or if it is better to look for another denomination or logo, due to the fact that it is possible to have a high risk of opposition or that the brand is rejected directly by the Register.
4- Once the decision of moving forward is taken, all the administrative steps have to be completed, such as the granting of power of attorney, sworn statements towards accreditation of the authorities of the firm, preparation and presentation of forms, payment of fees, adaptation of computer files to the requirements of the authority, etc.
5- When the application is filed it goes throw an admission analysis and then, if everything is correct, a publication will be ordered for 30 days in the Trademarks Official Gazette, for oppositions to be presented by any third party who has an interest or might consider the mark as deceptive in comparison with its own mark.
6- If no further oppositions are presented, the process goes throw a deeper study in which, once again, a thorough examination is taken in reference to the other brands that are in the database of the Register. If no objections are found in the Register, the brand will be granted. From that moment on, is entitled to use de ® symbol and the right to exercise all prerogatives that the law confers, specially the ones that prevents the brand from being used without permission, falsified or denatured.
7- If oppositions are presented, the procedure of the brand will be suspended for a cool off one year term. During that time the applicant might obtain withdrawal of opposition throughout a negotiation or -if not possible- a proof of have presented a judicial plaintiff before a Federal Court seeking for a ruling of withdrawal of such opposition. If after the year in question the opposition is not upraised or the claim is not initiated, the brand will be considered as “abandoned”, the payment of the fee and the priority in the time of the presentation will expire and the file will be shelved.
8- If the legal claim is initiated, all the steps of the ordinary process must go on and once the judgment of the uprising opposition is firm, this one should be inscribed in the Register in order to reactive the process of the file so that the deeper study mentioned in point 6) takes place.
9- Once the brand is granted, the Register will issue the trademark certificate, used to prove the property of the brand, whenever is necessary. The brands are granted for periods of 10 years since the date of the allowance and can be renewed indefinitely, as long as they are used during the last 5 years since the request and the correct renewal request is presented in no greater time than 2 months before the expiration.
10- Even though the administrative formalities of the brand may seem simple, in fact they are not, due to the fact that not answering certain office actions from the Register may involve the lost and archive of the process, added to that the system of notifications is complex and diffuse. In fact, little mistakes in the preparation of the forms may generate important delays in the process. In this way, is always convenient to have a legal backup of an Industrial Property Agent, as he perfectly knows all the steps that a brand request gives and the vicissitudes that may go through, in order to save not only time but also money as he proposes the best possible path of action.
