TRADEMARKS FILING AND PROSECUTION ANDORRA
A trademark is a sign that is registered to distinguish a product or service in commerce. There are other types of signs used in trade that can also be registered with the Andorra IP Office, such as logos, designations of origin, geographical indications, collective marks and certification or guarantee marks.
In order to legally protect a trademark or other sign used in commerce, it is necessary to register it with the Andorra IP Office. In Andorra, trademark protection is granted according to the provisions of Trademarks Law, Andorra.
Trademark in Andorra may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark, and can license it to the third parties, sell it in return of sum, use it raise equity for business undertakings.
| Relevant office | Trademarks Office of the Principality of Andorra Secretary of State of Tourism and Trade Ministry of Tourism and Trade |
| Filing principle | First to file |
| Nice classification | YES |
| Paris convention | YES |
| Madrid system | NO |
| Multi class system | YES |
| Documents required for filing a trade mark application | Name and address of the applicant, clear representation of the trademark, list of goods and/or services and Simply signed Power of Attorney. |
| Prosecution process | Filing, examination, publication, registration, renewal |
| Registration term | 10 years from the date of application. |
| Renewal term | 10 years |
Trademark searches in Andorra
Under the “First to File” principle, if any other applicants file applications for the identical or similar trademark used for identical or similar goods and services after the first applicant has applied, those later applications will be refused.
Therefore, it is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Andorra can be conducted for word mark, numbers, images, etc. It is advisable to conduct comprehensive trademark clearance search in Andorra to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Andorra.
Filing trademark applications in Andorra
A person may file multi-class or single class trademark application in Andorra.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Andorra
Ordinary trademark applications filed in Andorra are applications without claiming any priority. Multi class trademark applications may also be filed in Andorra. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in Andorra /Convention trademark applications Andorra:
A priority trademark application may be filed in Andorra. A priority trademark application should be filed in Andorra within 6 months after the date on which the application was made in the convention country.
Paris convention
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Andorra within six months after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Andorra follows the nice classification of classes. Intellectual property office of Andorra uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defined list of terms and cover all the goods and services.
Trademark Examination in Andorra
Once the application for the registration is submitted it goes through the examination process which consists of examination on the basis of Absolute and relative grounds (conflicts with an earlier, pre-existing right) of refusal.
Art. 2. Grounds for Absolute Invalidity
1) A sign may not constitute a trademark:
a) if it is devoid of distinctive character, notably if it consists solely of information capable of serving, in trade, to designate a characteristic of the product or service, including the kind, quality, quantity, purpose, value or geographical source thereof, or the time of production;
b) if it consists solely of terms that have become customary in everyday language or form part of the bona fide and established practices of trade in the Principality of Andorra;
c) if it consists solely of the form dictated by the actual nature of the product or service or by the shape of the product that is necessary for a technical result to be achieved;
d) if it is contrary to public policy or morality;
e) if it is liable to mislead the public, notably as to the nature, quality or geographical source of the product or service;
f) without authorization from the competent authority, it reproduces or imitates, even partly but enough to create a risk of confusion or association in the mind of the public.
i) the name (including the abbreviated name), armorial bearings, flags and other emblems of the Principality of Andorra, its parishes, its “quarts” or its other administrative areas, or the official hallmarks of the Principality of Andorra indicating control and warranty;
ii) the name of a State (including its abbreviated name), the armorial bearings, flags and other emblems of a State or the official signs and hallmarks adopted by a State to indicate control and warranty;
iii) the name, acronyms, armorial bearings, flag or other emblems of an intergovernmental organization.
2) a) The distinctive character of a sign shall be assessed in conjunction with the goods and services that it is intended to distinguish.
b) The distinctive character of a sign may be acquired through use.
3) The provisions of paragraph 1) f) ii)above shall be applicable only to those States that afford equivalent protection on their territories to the name including the abbreviated name armorial bearings, flag or other emblems of the Principality of Andorra and to its official signs and hallmarks indicating control and warranty.
Art. 3. Conflict with Prior Rights
1) A sign may not be adopted as a trademark or element thereof if it violates prior rights.
2) The following shall be regarded as constituting prior rights:
a) an identical or similar trademark registered for identical or similar goods or services if the registration date of that trademark, or its priority date under Articles 6 or 7 or the first or second transitional provision, is earlier;
b) an identical or similar trademark regarded by the judicial authorities as being well known in the territory of the Principality of Andorra for identical or similar goods or services;
c) a registered trade name or corporate designation, if there is a risk of confusion or association in the mind of the public; copyright;
e) personal rights of a third party, including his surname, pseudonym or likeness.
3) For the purposes of paragraph 2)a) and b) above, the concept of similarity shall be interpreted in terms of the risk of confusion or association in the mind of the public.
Trademark Opposition in Andorra
There are no provisions for filing opposition against a trademark registration
Trademark registration in Andorra
The mark will be registered for a period of 10 years from date of application, and the registration certificate is issued.
Trademark Renewal in Andorra
You can renew your trademark right by filing a request for renewal six (6) months before the trademark right expires.