Trade and Service Marks
– Trademark Act of May 11, 1995.
– Fee Regulation Act for the Trademark Office of October 5, 1995.
– Regulation Establishing the Trademark Office of the Principality of Andorra of November 2, 1995, as amended on May 2, 1996 and October 15, 1996, allowing trademark applications to be filed since December 5, 1996.
– Implementing Regulations to the Trademark Act and the Fee Regulation Act of the Trademark Office of December 28, 1995.
Membership in International Conventions
– Convention Establishing the World Intellectual Property Organization (WIPO), since October 28, 1994.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since December 31, 1996.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since June 2, 2004.
Conditions of Protection
Applicant not living in the country: individuals or organizations not resident in the Principality of Andorra must be represented before the Office of Trademarks by an accredited representative.
Acquisition of rights: trademark rights are acquired through registration. Nevertheless, the owner of a trademark that is well-known in the Principality of Andorra may invalidate or prevent use of an identical or similar trademark on identical or similar goods or services, provided that he files an application to register his trademark concurrently.
Definition of a trademark: a trademark may comprise any sign that can be represented graphically and serves to distinguish one undertaking’s goods or services from those of other undertakings.
Applications for collective marks may also be filed.
Absolute grounds for invalidity: the following may not constitute a trademark: (a) non-distinctive signs; (b) terms that have become customary in the current language or are commonly used in the established practices of trade in Andorra; (c) shapes which are conditional upon the nature of the goods or services or necessary to achieve a given technical result; (d) signs that are contrary to public order or accepted principles of morality; (e) deceptive signs; (f) signs which reproduce in whole or in part the name, coat of arms, flag, etc. of Andorra, other States that provide equivalent protection for Andorra and its emblems, or intergovernmental organizations, without the consent of the competent authority, if there is a risk of confusion or association among the general public.
Conflicts with prior rights: a sign that infringes a senior right may not be adopted as a trademark. The following constitute senior rights: (a) an identical or similar trademark registration covering identical or similar goods or services; (b) an identical or similar trademark well-known in the territory of the Principality of Andorra for identical or similar goods or services; (c) a registered trade name or company name, if there is a risk of confusion or association among consumers; (d) a copyright; (e) a right relating to a third party’s self, especially that party’s name, pseudonym, or likeness.
Applicant: the following may hold trademark registrations: (a) nationals of the Principality of Andorra; (b) nationals of other States who have their legal domicile or a real and effective industrial or business establishment in the Principality of Andorra; (c) nationals of other States who do not meet the condition set out in point (b) above, provided their home States grant reciprocal rights to nationals of the Principality of Andorra.
Representative: unless they have a domicile, seat, or real and effective establishment in the Principality of Andorra, applicants must be represented by a duly accredited agent holding a general power of attorney for the case at hand. The power does not require legalization. From September 2022, the POA must accompany the application form.
Classification: international. Applications may be deposited for goods and services in more than one international class.
Filing: applications to register or renew trademarks may be filed only using an electronic format to be issued by the Trademark Office.
Filing requirements for an application (to be sent to resident agent):
1. Identification of the applicant;
2. Identification of the agent, if appropriate;
3. A reproduction of the trademark;
4. The goods and services claimed by the trademark application;
5. The applicant’s signature;
6. Payment of the corresponding fees;
7. Power of attorney form duly signed by the holder or its representative.
Priority claims: provision has been made for claiming priority similar to the priority right established in Article 4 of the Paris Convention. Reciprocity is an eligibility requirement, hence the first application must be filed in a country that affords the same rights to nationals of the Principality of Andorra. Furthermore, provision has also been made for two other special priority rights: A. Priority arising from prior use: a trademark for which effective and real use has been made in the territory of Andorra on the date of entry into force of the Trademark Act (May 24, 1995) shall enjoy a priority right effective from the date on which trademark use commenced, provided that application for registration of the trademark is filed within two years of the date on which the Trademark Office began admitting trademark applications to prosecution (December 5, 1996). B. Priority arising from a trademark registration in a member country of the Paris Convention: any trademark registered in a country that is a Contracting Party to the Paris Convention on the date of entry into force of the Trademark Act shall enjoy a priority right effective from the date of entry into force of the Trademark Act (May 24, 1995), provided that application for registration was filed within one year of the date on which the Trademark Office began admitting trademark applications to prosecution (December 5, 1996). The term for claiming this priority right therefore ended on December 5, 1997. In case of conflicts between two or more trademarks, preference shall be accorded to the party who has deposited his trademark with the Andorran Trademark Office first.
Formal examination: the examination carried out by the Andorran Trademark Office only concerns compliance with formal requirements, i.e. whether the application contains all requisite items and information required pursuant to the Trademark Act and the Regulations. The Office does not verify that these are correct. Applicants shall bear civil and criminal liability if the courts subsequently find that any items are incorrect. There is no substantive examination.
Opposition: not provided for.
Registration: provided that the application satisfies the formal requirements and that any defects, if found, are remedied, the trademark will be admitted to the Register.
Renewal: trademarks may be renewed for additional ten-year periods indefinitely for all or any portion of the goods and/or services covered.
Subsequent amendment: amendments to trademark registrations may not be recorded in the Register of Trademarks. Trademarks may only be amended by fresh registration. Amendments which would extend the specification of goods and/or services may not be recorded in the Register of Trademarks. Extension of the specification of goods and/or services may only be obtained through fresh registration.
Official Gazette: the Andorran Trademark Office will issue a Trademark Gazette on CD-ROM or other similar digital medium at least every three months. A paper edition of all or part of the Trademark Gazette may be made available to interested parties.
Assignments, License Agreements and Security Interests
Assignments: trademark registrations may be assigned in full or for any portion of the goods and/or services covered, irrespective of the undertaking that uses them or causes them to be used.
Licenses: exclusive or non-exclusive licenses may be granted for the use of trademark registrations in full or for any portion of the goods and/or services covered. License agreements will not be valid unless the licensor is made responsible for ensuring quality control of the goods and/or services on which the trademark registration is used.
Security interests: a trademark registration may be offered as security.
Recordal with the Trademark Office: all assignments, license agreements, or security interests must be established in writing and must be signed by the contracting parties. They must be recorded with the Trademark Office to be effective vis-à-vis third parties.
Content of the Trademark Right
Rights conferred by trademarks: the following are prohibited without the consent of the trademark owner: (a) reproduction or use of a registered trademark for identical goods and/or services, even in association with such words as “formula, type, system, imitation, fashion, method”; (b) deletion or alteration of a trademark affixed by the registrant or with his consent; (c) reproduction or use of a registered trademark on similar goods and/or services when such use may entail a risk of confusion among consumers; (d) imitation of a registered trademark and use of such an imitation on identical or similar goods and/or services, if it entails a risk of confusion among consumers; (e) reproduction or imitation of trademark registrations that are well-known in the Principality of Andorra for dissimilar goods and/or services, without due cause, where unlawful benefit is derived from the distinctiveness or well-known nature of the registered trademark or it is adversely affected.
Exhaustion of the trademark right: for goods affected by the Customs Union established by the agreement between the Principality of Andorra and the European Union, the right conferred by a trademark registration shall not entitle the proprietor to prohibit use of the trademark in the Principality of Andorra on goods sold under that mark in the territory of the European Union by the proprietor or with his consent.
Jurisdiction and Rules of Procedure
Legal actions: the proprietor of a trademark registration may bring appropriate civil or criminal actions in the courts against all parties who infringe his rights. Unless otherwise stipulated in the license agreement, such actions may also be brought by exclusive licensees, if the proprietor fails to take action after having been given notice.
Legal proceedings: all civil actions under the law shall be prosecuted following the expedited procedure.
Precautionary measures: the courts may, on a precautionary basis, order cessation of infringement of the registrant’s rights, and they may also order bond to be posted against a possible damages award.
Confiscation: a petition may be filed for seizure of infringing goods sold, transferred, or supplied in violation of the trademark right. For trademarks used on services, a petition may be filed for seizure of the means used in rendering the services.
Detention at Customs: at the order of the courts in response to a petition by the trademark owner or exclusive licensee, the Customs Service shall be obligated to hold merchandise, including merchandise in transit, bearing a trademark that infringes the rights of a trademark registration in Andorra.
Indemnification for damages: he who infringes the rights of a trademark owner shall be obligated to redress the damage inflicted. In calculating the damages, both losses suffered by the trademark owner and ceasing gain shall be taken into account.
Criminal penalties: he who infringes a trademark right in bad faith shall be liable to the penalties established in the Penal Code. The court may order the judgment to be published in full or in part, at the defendant’s expense, in newspapers designated by the court. The courts may order seizure of the goods and means used in committing the criminal offense. The courts may also order the goods to be destroyed at the offender’s expense.
Extinguishment of the Trademark Right
Voluntary surrender: the registrant may at any time surrender his trademark registration in full or for any portion of the goods and/or services covered. If a security interest has been recorded against the trademark on the Register, the party that holds the said interest must consent to such voluntary surrender by the registrant.
Invalidity: any party who can show a legitimate interest may petition the civil courts to invalidate a trademark on grounds that the mark does not conform to the legal definition of a trademark or comprises a sign that contravenes any absolute ground for invalidity, or on grounds that the registrant is not eligible to own a trademark registration. A trademark consisting of a sign that infringes a senior right may also be invalidated at the petition of the owner of that senior right. There is no time bar for invalidation actions. However, the owner of a senior right who has tolerated use of a subsequently registered trademark in the Principality of Andorra for five consecutive years after becoming aware of such use may no longer petition for invalidation or oppose use of that trademark, unless the application for the subsequently registered trademark was filed in bad faith.
Revocation for non-use: a trademark may be revoked by the civil courts, in respect of all or some of the goods or services covered thereby, when it has not been used by the owner, in the absence of valid justification, on all or some of those goods or services during the five years preceding the date on which the revocation action is brought. The burden of proving that the trademark has been used falls on the registrant. Use of a trademark pursuant to a license agreement recorded with the Trademark Office and use of a trademark in a form that does not alter its distinctive character are both considered effective use.
Other grounds for revocation: trademarks may also be revoked by the civil courts (a) when in consequence of acts or inactivity of the proprietor, the trademark has become the common name in the trade for a product or service; (b) when the owner, for any reason, no longer satisfies the eligibility requirements for owning a trademark registration.
Lapse: trademark registrations shall lapse if they are not renewed.