Photo: Thrive Global

 

Let There Be Trademarks

By AMILCAR RIERA

Corporate brands can be easily recognized by their logos, shapes, colors or even scents. When you see a well-known product, you can immediate differentiate it from its competitors by its logo, such as in the case of Apple, Coca-Cola or Chanel. 

Marketing professionals in charge of brand positioning will go to great lengths to persuade consumers that their products are the best, the most fashionable and the most desirable.

But to be effective, a brand should be protected, registered and easily identifiable. 

But how a brand or label is marketed and — more importantly — protected can vary dramatically from country to country.

Legally speaking, trademarks constitute a part of intellectual properties, along with patents and industrial design.

The concept of a trademark should not be confused with that of a patent.

A trademark will help to distinguish a product from its competitors, whereas the patent protects the technology. This could be a technology in a field such as chemistry, pharmaceutical, mechanics or electronics. 

And it is of paramount importance to have a trademark registered way in advance of sales and distribution.

The process of trademarking, patenting and registering a brand varies from country to country, as do what items or concepts can be trademarked.

“Here in Mexico, a catch phrase, slogan, letters, numbers, combination of colors, signs, proper names and even your personal name can be registered as a trademark, provided that it hasn’t been registered previously,” explained corporate lawyer Laura Serna, who has been working with trademarks for 12 years in Mexico.

In order to register a trademark in Mexico, Serna said, the first step is to conduct an investigation to assure that the label has not already been trademarked.

“Once this research has been conducted, a company can  file an application for trademark registration before the Mexican Institute of Industrial Property (IMPI),” she said.

“Then the IMPI will proceed with an extensive study of the product or service in question, and it will either grant the trademark registration or issue a report indicating any changes that must be made to obtain the registration.”

Regarding how long a trademark can take to be registered in Mexico and granted, Serna said that the time can vary from six to 12 months, counting from the day the application is filed.

“There is a common misconception about trademarks,” she said.

“There’s no such thing as a worldwide trademark. You need to register in every country where you want to sell your product or offer your services. For instance, if your product is to be sold exclusively in Mexico, you only need to register in Mexico. But if you want to break into the Argentine market, you will have to register your trademark there, as well.”

In most countries, trademarks are protected for 10 years, but can sometimes be renewed as many times as necessary as long as the permit has not expired. 

“It’s important to bear in mind that once you get your trademark registered, you will have three years counted from the registration date to file a declaration of use,” Serna said.

“Also, if the company wants to use the same trademark for a different product, it has to register the brand again.”

…Jan. 13, 2021

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