“No, it’s not necessary; we already have the company name at the commercial registry”. This is one of the most common statements that businessmen and entrepreneurs give us more often. They recently started a business and really believe that they can operate freely using that name exclusively in several ways, thinking that those uses are covered by the company name.
But why should you protect the trade name and trade mark if you already have registered the company name?
A company name identifies a legal person in trade as a subject of rights and obligations in all their legal relations, i.e. they are used in situations such as signing contracts, issuing invoices, paying taxes, etc. The body responsible for managing them is the commercial registry, which assesses if a proposed denomination is suitable for registration in accordance with a set of rules and also registers the facts and acts relating to individual entrepreneurs and companies.
Meanwhile, trade names are signs that identify the companies themselves in trade, and trade marks distinguish products and/or services of one undertaking from those of others in the marketplace. Both titles are granted nationally by the Spanish Patent and Trademark Office.
To better understand these figures, let‚Äôs look at the following example.
A company dedicated to clothes and accessories is the holder of:
¬† ¬† ¬†‚ÄĘ a company name: Maximo Diurny Apparel, SL created for the development of the activity of manufacturing and marketing of textile products, footwear, accessories and clothing;
¬† ¬† ¬† ‚ÄĘ a trade name: Maximo Diurny (with a logo) to promote its business establishments; and,
¬† ¬† ‚ÄĘ a bunch of brands through which it offers its products to the public, for example, MaxDHome (line of household products), MaxDGlamour (product line for adults), MaxDKids (product line for children) and MaxDExpress (home delivery of goods).
As shown in the previous case, company names, trade names and trademarks play different roles and therefore they are subject to a different legal regime, thus requiring an adequate protection according to its nature.
In addition, a denomination may be suitable to become a company name but it does not imply that the it will necessarily prove acceptable subsequently as a trade mark and vice versa, for example, a company name may not qualify as a trade mark because of its lack of distinctiveness, or because it consists of a descriptive word, or indicates geographic origin or simply because it has already been registered as a trademark by a third party. On the other hand, a mark consisting of words may prove unaccepted as a company name at the Commercial Registry for failing to comply with the regulations in force, e.g. the requested company name uses the same words as another previously registered company name, even if the words are filed into different order, gender or number.
Given this wide casuistry, what is clear is that in practice company names, trade names and trade marks can collide in trade creating confusion among consumers. To avoid trade conflicts or other problems it is advisable to establish a good strategy on Intellectual Property from the beginning, including, for example, conducting searches of prior rights that may pose a registration obstacle or filing simultaneously a company name before the commercial registry and a trade mark at the trademark office.
To address the above, we invite you to contact us. We offer you a fully integrated intellectual property practice providing comprehensive legal advice from protection of the corporate names portfolio (company names, trademarks, trade names) and other assets relating to intellectual property through enforcement of the same in a wide range of industries.