distinctive signs reduced

disitnctive sogns 

• distinctive signs identify products or services of one company from those of others

  • help customers recongise which compnay a product or service comes from 

  • the word nike or its swwosh logo indeitfies sports products made by nike dsintguishing from adidas 

• different from trade names or compnay names

  • trademark idenitfies a product from its competitors while a companys name idenitfies the business itself  from competitors in the market

• competent authority= spanosh patent and trademark office (oepm)

  • officialspanish body that registers and manages trademarks and other ip rights

    • once registered only the oner exclsively can legally use that mark for the goods or services it covers

trade name v trademark

trade name= identifies the business enitty itself eg inditex sa 

trademark=identified the goods or services offered  eg zara and pull and bear 

eg- coca cola=trademark

the coca cola company= the trade/company name of the business that owns the drink 

main regulatory sources on distinctive signs

• law 17/2001 on trademarks= main spanish law regulatinghow trademarks are registered, protected and enforced in spain 

• royal decree 687/2002 detailed rules for applying and implementing law 17 (procedures and practical steps)

• directive 2008/95/ec (now codified in directive eu 2015/2436) harmonisation of member states trademark laws so rules are consistent across eu 

protected designation of origin (pdo) and geographical indications (pgi) frameworks

national:

• law 24/2003 on vines and wines

  • regulation applies to wine vinegar and grape products

• law 6/2015 on gis of supra regional scope

  • applies to non wine products coming from more than one community in spain 

eu framework:

• regulation 2019/33 gis on wines

  • wine designations, objection procedures, labeling rules

• regulation 2024/1143 gis across many sectors

  • governs gis  for wines spirits agricultural products, traditional specialities and quality terms 

• regulation 2023/2411: gis for non agricultural and industrial products

  • glass, lace, jewelry, cutlery, leather

the brand (trademarks)

• definition: any sign capaable of disitnguishing the products or services of a compnay from those of others

  • symbol,word,logo,sound that telss consumers where a product or service comes from 

• condition: it can be represented in the trademark register clearly and precisley so scope of protection is clear 

trademark functions

• distinctive function: identifies the business origin of goods or services

  • apple logo tells consumer prodcut comes from apple inc not samsung 

• quality function: assures consumers of conistent quality from the same producer

  • seeing lindt logo on choclate signals that it meets high quality standard expected from lindt 

• goodwill/reputation function: builds brand loyalty and trust over time 

  • customers repeatedly buying nike shoes trust the brand because of its reputation for performance 

• advertising function: the brand itself promotes sales and attracts consumers

  • the maccies golden arches draw customers in and ecnourage purchases throigh brand recognition

dual legal nature

positive aspect= owners have exclusive right of use and power to liscence to others

negative aspect= right to prohibit unathorised third party use of indtical OR confusingly similar signs

classification of trademarks 

• by configuration (style): words drawings letters numbers  colours product shape sounds packaging 

• by object (type):

  • product marks indeitfy goods eg nike swoosh

  • service marks, identify services eg fedex logo

  • ndustrial marks  indeintfy manufacturers eg a logo stamped on machinary parts to iidcate origin 

• by ownership:

  • indidual= owned by a single compnay eg apple logo owned by apple inc

  • or collective = used by members of an association eg fairtrade mark used by multiple producers

• by economic function:

  • guarantee marks= certify quality 

  • defensive marks= protect well known marks in unrelated sectors  eg rolex in non watch goods to prevent misuse

  • reserve marks = reserved for tuture use by owner

• by diffusion/reputation :

  • well known= recognised within a specific market or country eg zara in retail

  • renowed marks = recongised widely across multiple countries or markets eg coca cola

absolute prohibitions (art 5 law 17/2001)

• prevents registration of signs to protect the public interest (unrelated to conflict with prior marks)

• requirements:

  • non distinctive= generic or descrptive words eg coffe for cofee

  • deceptive= likely to mislead about the nature quality or origin eg ecoplast for non eco plastic

  • contrary to public order/morality= offensive, discriminatory or illegal symbols (nazi sign)

  • unauthorised offcial symbols= flags,emblems and coats of arms being used without authorisation

relative prohibitions (article 6 law 17/2001)

• registration is refused to protect prior rights of third parties

  • based on the prioirty principle= earlier registered marks take precedence over later applications

• requirements:

  • identical or similar to an earlier registered trade mark eg niike vs nike=causes confusion

  • takes advantage of the reputation of a well known mark eg coca kola= beenfit from the fame of cocoa cola even if products arent same

  • conflicts with protected designations of origin= rioja wine not from rioja

  • uses personal names without consent eg lionel messi

the trade name (law17/2001)

• = any sign with graphic representability that idenitfying a company in commercial traffic and disitnguishing it from others 

  • any name or sign a business uses to idenfity itself in the market and differentiate itself from other companies eg el cortes ingles

• different from the company name (the legal corporate name)

  • trade name idwntifies the business in commerce eg apple; the company name idenitfies the legal enity eg apple inc

• registration grants exclusive use of name in commercial activity

• trasnferable by its owner

  • eg business sold the trade name can be trasnferred to new owner as part of sale

registered vs unregistered trade names

• registered= full protection and legal certainy to enforce rights in court

• unregistered= weaker protection to enforce rights

  • must prove actual use or notoriety (well knowness) 

  • cafe sunrise owner must show cusomers already associate the name with their business

• foreign unregistered names= protected if

  • reciprocity applies= nation country provides similar protection to trade name 

  • under art 8 paris convention= int framework recognising trade name protections across member ciountries

    • french company laduree protected in spain even if not registered locally because both france and spain are paris convention members

application for registration of trademarks and names

• based on the nice classification system= 34 classes for products and 11 for services

• grants exclusive right to use the registered sign in that class for the listed goods/services

  • needs new registration to be protected in another class

• includes the right to prevent confusingly similar uses 

requirements for application

• must be lawful= no absolute or relative prohibitions

• must not conflict with prior rights (registered names or ip rights)

• applicant may file a denominative application which registers the words of the name regardless of font style and colour

  • doesnt protect the associated logo design or graphic

filling methods and costs

• fees depend on the number of classes being registered too

  • 150 euros for the first class

• filling options:

  • online= 15% discount

  • in person at the oepm

  • post offcies

  • regional industrial property centres

protection and duration for tradenames

• valid only in the national terrioty

• 10 years from application but renewable indefinitely (repay fee)

  • if not renewed the registration and protection lapses

• same holder may own multiple trade names across sectors

extinction of rights

• nullity= due to registration violating prohibitations eg registering cococola

• viodability= defect in consent or procedure eg

• waiver= owners renunication

  • not valid if others have registered rights (license lien eg)

• expiration=

  • after 10 years without renewel

  • or 5 years of non use

  • vulgarisation= becomes a generic term= no disitnctiveness eg aspirin was. abrand name but is non common name for drug

areas of protection for trademarks

• national level= registration via oepm- protection only within spain

• european level (eu trademark)= single registration before euipo

  • regulation 2017/1001= eu wide unitary right = exlusive protection across all member states

  • refusal or invalidity applies to the entire eu

  • duration= 10 years renewable 

  • acceptable signs: words, letters, colours, product shapes, packaging

• international level= single registration filed through madrid system 

  • must have national registration first 

  • one lamguage, one set of fees 

  • covers selected countries/organisations

oepm application contents

• application via regional agency

• contents of application:

  • request for registration

  • applicant idenitficaton- info about person or company applying

  • representation of the mark 

  • list of goods/services the mark will cover

  • payement of fees

oepm registartion procedure art 11+

• application via regional agency 

• formal examination art 16- checks docs and fees are correct

• publication of application art 18- published to offcial register to inform public

• opposition period art 19 (2months)- third parties can object if they believe conflicts rights

• substantive examination and resolution art 12 - reviews app in detail and decides whether to grant or not

• process usually takes 8-15 months for dinstive signs 

geographical indications (GIs)

• geogrpahical indications=

  • protected designation of origin (pdo)= narrower specific protection= all 3 stages of production processing and preparation

  • protected geographical indication (pgi)= broader scope of protection= one stage or production processing or preparation

• protection against false indications is governed by unfair compeittion law

  • article 5-7: prohbits deceptive acts about origin

  • art 6: acts causing confusion

  • art 12: false designations even if accompanied by true origin (eg type, model)

    • eg labelling a sparkling wine as cmpaagne when not from champagne region 

• trademark law 17/2001 prohibits registration of trademarks that could misleading consumers about the origin of goods (artcle 5.1 and 9.3)

  • eg champagne de espana

pdo

• quality and characteristics of the product are closely linked to a specific enviornment 

• natural and human factors contribute to uniqueness

  • climate soil local know how traditional methods

• all production phases must occur entirely in the area 

• rioja wine manchego cheese

pgi

• product has quality reputation or features linked to a specific georgraphical area

• only requires one production stage to occur there

• irish/scottish whisky

requirement for recognition

• product must

  • oringate from a spcific place/region

  • have a quality/reputation linked primarily to its origin

  • undergo at least one production phase in that area (pdo requiring 3)

• regional governments can recognise gis with local effect

• state ratification required for protection across spain /international protection

• royal decree 1335/2001: governs spanish procedure for eu registration of gis and objections

eu gis

• community register (reg 2024/1143)= estbalishes a unified procedure for registering gis of wines spirits and agriculture

  • national recongtion phase- by member state frist

  • eu recognition phase

  • once approved gi is isncribed in the union register of gis giving eu wide protection

• the eu has special logos for pdos and pdgi products that must appear on agricultural and food products that have recieved offcial eu protection

  • regulation 2017/625 provides offcial control programs across eu member states to ensure products carying these are authwntic and comply with the rules 

    • protects both consumers and producers from fraud or misuse 

legal business uses

• can be used in contracts to define rights and obligations regarding their use

  • co ownership agreements- if owned by multiple parties agreements regulate how each may use

  • trasnfers (assignments)- can be sold or trasnferred to another person or company (when selling business)

  • licenses (third party use)- owner can permit others to use under agreed conditions

    • nike lets manufacurer to produce shoes under liscence using swoosh logo or maccies lets franchise use sign

  • liens pledges or mortgages over the trademark- can be used as a security for loans or financia agreements

    • pledges trademark as collateral to secure bank loan

rights

• trademark rights are aquired only by reigstration 

  • mere pre use does not confer ownership except for well known/established marks

• exclusove roght of use= for idneotfying marketing and advertising

• right to prohibit unauthorised use of =

  • identifical sign for the same goods/service

  • similar sign for similar goods/service= risk of confusion

  • similar sign for unrelated goods= if mark enjoys reputation in spain and the use takes unfair advantage

• acts prohibited for third parties:

  • using sign on products or packagine

  • offering marketting storing for sale

  • import/exporting goods with infringing signs

  • using sign in trade names or advertising

rights in the eu: principle of exhaustion  art 36

• once goods are marketted within the European economic area with the owners consent, resale cannot be prohibited 

• protects parrallel trade and free movement of goods within the eea 

  • germany company sells branded shoes in france; once sold cannot prevent them from reselling those shoes in spain even if they wrent intended for that market 

obligations

• use within 5 years or expired- art 39

• renew application every 10 years to keep protection- art 32

• pay maintenace fees to keep protection

civil action for violations of rights (art 41-45 traemark law 17/2001)

• to compensate and restore the owners rights and reputation

• cessation= stop infringing acts (manugactuing marketting importing with sign)

• compensation for damages=

  • consequential damages= direct costs like legal expenses

  • lost profits= for revenue owner lost due to lost sales

  • moral damages= reputational harm/damage to brand image

• judicial seizure= confiscation of infringing goods/materials

• destruction or humanitarian trasnfer= destruction of goods or donation if harmless

• publication of judgement at the infringers expense= infringer must publish court decision to help restoe trademark owners rep

  • newspaper prints ruling that a compnay illegally used a trademark

• limitation period of 5 years to bring actions

criminal actions art 274 spanish penal code

• criminal law punishes counterfeiting and unathorised use of protected distinctive signs 

  • aggravating factors: higher penalities for organised networks, large scale, health risks

• punishable acts:

  • reproducing imitating or using protected signs without authorisation for profit eg selling fake rolex watched

  • importing possessing or distributing counterfit goods knowingly eg shipping fake watches into country 

• penalities:

  • 6 motnhs- 4 years imprisonment

  • fines 12-24 months

  • commercial disqualification (cant run a bussines)

  • if public health was at risk for goods such as medicines:

    • up to 6 years imprisonment + higher fines

• corporate liability= companised may be

  • fined up to 5x profits,

  • closed down

  • or banned from commercial activity

summary 

• trademark= law17/2001=10 years renewable= national/eu/international=oepm/ eupio/wipo

• tradename= law 17/2001= 10 years renewable=national =oepm

• pdo/pgi=law 24/2003+ law 6/2015+ reg 2024/1143= indefitive while criteria met= national/eu= national authorities/ eu commision