7 ESSENTIAL STEPS TO REGISTER YOUR TRADEMARK
Trademarks are a category of distinctive signs that identify products or services; a trademark does not seek to create something new or protect an invention, but rather its purpose is to identify or generate consumer recall. Trademarks are not limited to a name or logo, as there are marks that are not visual and are limited to a sound or scent, which fulfill the objective of distinguishing or generating recall in the target audience of that mark.
Once the distinctive sign to be registered has been identified, it is necessary to verify that it does not fall under any of the grounds set forth in Decision 486, Article 136, such as: A. Lack of distinctiveness. B. Risk of confusion with other distinctive signs. C. Its name being generic. D. It may generate confusion as to the place of origin. E. It derives from names of Afro-descendant, indigenous, or local communities, or other denominations originating from them.
In accordance with the foregoing, the prospective trademark owner should consider the following steps for a successful registration process:
Steps prior to filing the registration.
1. Once your MARK is defined, you must verify whether it belongs to any of the following types: WORD MARK, FIGURATIVE MARK, COMPOSITE MARK, THREE-DIMENSIONAL MARK, or SOUND MARK.
2. You must choose the International Nice Classification. However, a single mark may belong to several categories.
3. Before proceeding with the registration, it is necessary to conduct a preliminary feasibility study of the trademark registration. This aims to allow the prospective applicant to determine the pre-existence of similar or identical distinctive signs, with a view to determining the feasibility of registration and ensuring that it does not incur any of the grounds set forth in Article 136 of Decision 486.
Steps to register a trademark.
4. Once the trademark search is completed, you must fill out the application form for the trademark registration request, which is available on the website of the Superintendence of Industry and Commerce. This form requires the following documentation: (The registration application may be amended at any time deemed necessary)
- Applicant's details (natural or legal person)
- Attorney's details
- Information on the mark to be registered (type of mark and image in JPEG format)
- Color claim
- Nice classification code for the products and/or services; in this case, the classes in which the mark applies must be specified.
- Attachments: proof of payment of the fee for filing the application, power of attorney, artwork with the specified dimensions of the mark, annex with classification of products and/or services, and a copy of the application and its attachments on magnetic media.
5. The filing date is very important because it confers on the person the right of priority over subsequent applications and also grants six (6) months to file in another country.
6. The application goes through several stages for the grant of the registration, determined as follows:
- Once the application is filed, a formal examination is conducted. If the application is incomplete, a requirement is issued for 60 days to make clarifications or complete the missing information; this will be notified in a list at the entity in a visible manner and on the SIC website. If no response is made to these documents, the application will be declared abandoned, which is done by resolution and may be subject to appeal and reconsideration within 5 business days.
- If the application meets all requirements or, if not, has been corrected as mentioned above, the next step is the publication in the Gazette of Industrial Property.
- Once the publication stage is completed, the period known as the substantive examination of the mark begins, during which two situations may arise: the acceptance of the mark or its refusal.
7. Upon notification of the decision granting or refusing the trademark registration, the applicant will have 5 business days to file a motion for reconsideration or appeal if they disagree with the decision or if the certificate contains errors.