BRAND PROTECTION, A FUNDAMENTAL STEP FOR YOUR BUSINESS

Everywhere we look, we can see that every product and every service has a brand that distinguishes it from other goods and services on the market. From a car to a small pencil, all are associated with a brand whose purpose is to differentiate themselves from their competitors and communicate key values such as quality, origin, status, distinctiveness, and authenticity of the good or service, becoming the main reason why a consumer decides to purchase a product or service.

When we talk about a trademark, we are referring to a distinctive sign that identifies, by itself, a product or service and allows it to differentiate itself from its competitors in the market. It is this distinctive feature that simplifies the process of acquiring goods and services for each consumer within a market, given the influence it exerts at the moment of choice. A clear definition of a trademark is found in Article 224 of SENAPI´s Internal Industrial Property Procedure Regulations, which states that "A trademark is an intangible asset consisting of a sign made up of words or a combination of words, images, figures, symbols, and graphics that, susceptible to graphic representation, serve to distinguish products or services in the market, so that the average consumer or user can identify, value, differentiate, and select them without risk of confusion or error regarding the origin or quality of the product or service";

As can be seen in the previous paragraph, this intangible asset obeys a general rule that establishes that any sign capable of distinguishing and differentiating a product or service in the market constitutes a trademark. Regarding what constitutes a trademark, Article 134 of CAN Decision No. 486 provides a clear answer:

1. The words or combination of words;

2. Images, figures, symbols, graphics, logos, monograms, portraits, labels, emblems and shields;

3. The sounds and the smells;

4. Letters and numbers;

5. A color enclosed by a shape, or a combination of colors;

6. The shape of the products, their packaging or wrapping;

7. Any combination of the signs or means indicated in the previous sections.

Based on this list, a classification of trademarks arises, among which are the following: i) Denominative trademarks: These are those composed of words, combinations of words, numbers or a combination of said elements; ii ) Figurative trademarks: These are those composed solely of symbols, graphics, portraits, images, figures, shields, logos, emblems and monograms, characterized by the absence of letters, numbers, words or legends; iii ) Mixed trademarks: These are trademarks that are composed of a combination of figurative and denominative trademarks, that is to say, the distinctiveness of the mixed trademark arises from the integration of the denominative and graphic elements.

Additionally, we can find color, three-dimensional, animated, sound, olfactory, position, tactile, certification, and collective marks, each with its own characteristics and particularities that must be observed at the time of registration.

Alongside the trademark is the trade name. This symbol does not refer to the product or service itself, but rather identifies the company, the commercial establishment, or the economic activity as a whole. While the trademark acts as an essential element in communicating the quality, origin, distinctiveness, and authenticity of the good or service, the trade name highlights the identity and prestige of the manufacturer, seller, or entrepreneur, contributing to the consolidation of their reputation in the business market.

It should be noted that the importance of a trademark lies in the distinctiveness it provides to a product or service, differentiating it from other goods produced by its competitors. For this reason, it is essential that everyone, before starting a business, providing a service, or launching a product, have at least the essential elements that make up a trademark in order to preliminarily evaluate its viability for registration with the National Intellectual Property Service (SENAPI).

Once the trademark has been created, or at least its essential components are in place, it will be vitally important to analyze the competition, studying each of their products and services, as well as their corresponding trademark, to avoid any risk of confusion or association with the distinctive sign you intend to register.

Once the competition has been assessed, a thorough study of the Niza Classification must be conducted to determine the class or classes under which the trademark will be registered. You can access the classification at the following link: https://www.senapi.gob.bo/propiedad-intelectual/propiedad- industrial/signos-distintivos/buscador-clase-niza

Once you´ve identified the Niza Class under which you´ll register your trademark, you must conduct a search for distinctive signs to verify, within the SENAPI database, products or services similar to the one you intend to register. This process has a minimal cost and will not affect your business´s finances. Once the steps described above have been exhausted and it has been verified that there is no product or service similar to the one you wish to register, you must proceed to register the trademark with SENAPI.

This registration process takes between six (6) months to one (1) year, and may take even longer. It is necessary to carry out the respective follow-up, especially during the opposition period, to verify whether there is any type of opposition filed by competitors to prevent the registration of the trademark.

At “DIAZ ABOGADOS ESTUDIO JURIDICO”, we know that your brand is one of your company´s most valuable assets. That´s why we specialize in trademark registration and renewal, providing you with an efficient service that saves you time, resources, and worries.

Trust us to protect your business reputation and forget about the legal process—we´ll take care of everything.

Victor Manuel Vásquez Alfaro

Litigation and Corporate Lawyer