reduced more distinctive signs

distinctive signs

• purpose: identify a companys products or services and disitnguish them from competitors

  • eg nike and its swwosh logo identifies nike products and seperates them from adidas

• they help consumers recognise the commercial origin of a product or service

• spanish patent and trademark office (OEPM) registers and manages trademarks and other ip rights

• once registered only the owner can use the sign for the goods and services it covers

trademarks law 17/2001 on trademarks

• any sign capabale of distinguishes the goods and services of one company from others 

  • can be words logos shapes colours sounds packaging 

• must be clearly and precisley represented in the register so its scope of protection is defined

• dual legal nature:

  • positive= owner has exclusive right to use or liscence

  • negative= can prohibit third parties from using identical or confusingly similar

trademark functions

• distinctive function- shows product origin

  • apple logo=apple in not samsung inc

• quality function= ensures conistent quality

  • lindt logo= high quality chocolate

• goodwill/reputation= builds trust and loyalty

  • consumers repeatedly by nike because of its reputation

• advertising function= promotes sales

  • mcdonolads golden arches attract customers through brand recongition

classifications of trademarks

• by configuration: colour, letters, sounds, packaging, product shape , words

• by object:

  • product marks - on goods eg nike swoosh

  • services marks - for services eg fedex logo

  • industrial marks- in manufacturing/production eg logo stamped on machinary

• by diffusion/reputation

  • well known- in the same sector nationally eg zara in fashion

  • renowned- internationally in other sectors eg coca cola world wide

• by function:

  • guarantee mark- certifies quality

  • reserved- kept for future use

  • defensive- protect well known marks in unrelated sectors

    • rolex watches may trademark in other classes to avoid misuse

• by ownership

  • inddual= exclusively to one compnay or person eg apple logo

  • collective= used by members of an association eg fair trade

absolute prohibitions (law 17/2001 art 5)

• protect the public interest; unrelated to prior rights

• requirements:

  • not distinctive= too generic or descriptive

    • coffee for coffee

  • deceptive= misleads about quality nature or origin

    • eco plastic for plastic that is not environmentally friendly

  • against public order/morality= offensive,discriminatiory or illegal symbols

    • nazi symol

  • unauthorised official symbol= using flags, embellems , coats of honour without consent

relative prohibitions art 6

• protects when prior rights exist

  • stems from the principle of priority= first registered marks take priority over later registration

• requirements:

  • unathroised used of a personal name= lionel messi

  • idenotical/ confusingly similar to an earlier registered mark= nike vs nikee

  • taking unfair advantage of the reputation of a well known mark= coca Kola

  • conflicts with a protected designation of origin= eg rioja wine not from rioja

application process 

• methods:

  • online= 15% discount 

  • at oepm office itself

  • post office 

  • IP office 

• based on nice classification system: 34 products and 11 services

  • one registration per class - 150 euros 

  • can register in mutiple different classes for added cost

  • registration only protects for the specific class of goods/services 

reigstration process of trademarks (oepm) (art 11-19 law 17/2001)

1. file application with regional authority

2. formal examination art 16 - checks documents and fees

3. publication art 18 - in offcial registry to inform public

4. opposition period art 19 - allows 2 months for third parties to bring claims for existing rights and object

5. substantive examination and resolution - reviews application in detail and decides whether application is denied or accepted

• process takes between 8-15 months 

protection

• 10 years renewable indefinitely for fee

• extinction=

  • expiration= non renewal or 5 years of non use

  • vulgarisation= generalisation of the words eg aspirin a generic term not just a brand

  • nullity= against absolute or relative prohibitions

  • viodability= procedural or consent defect

  • waiver= owner voluntarily renunces rights

    • so long as no third partys have rights eg liscences

areas of protection - go back over this

• national= via oepm 

  • protection valid only in spain

  • 10 years reneweable

• international= via wipo (madrid system)

  • must have national recongition first

  • single registration for single fee for chosen countries (one language)

  • if declines in one declined in all

  • 10 years renewable

• eu=via euipo

  • 2 stages: national level, eu level

  • single registration to have unitary protection across all member states as per regulation 2017/1001

  • 10 years renewable

rights of the trademark owner - go back over this

• aquisition: rights only through registration except for well known marks

• exclusive rights:

  • to use or liscence in marketting and advertising

  • to prohibit the unauthorised use of idneitical/conufisnly similar signs for

    •  same/ similar goods = risk of consumer confusion

    • unrelated goods  if reputation is exploited (unfair advatnage)

• protection against third parties actions: 

  • using the sign on goods or packaging 

  • in marketing or advertising 

  • importing or exporting

olbigation of trademark owner

• renew registration after 10 years 

• pay the fee to retain protection

• use mark within 5 years

• eu exhuastion principle: once goods are placed on the market within the eea by the trademark owner, resale inside the eea cannot be prohibited

  • protects parallel trade and free movement of goods inside eu

civil actions- enforcement  law 17/2001 art 41-45 go back over

= to restore owners right and reputation

• cessation= stop infringement (manufacturing marketing importing)

• seizure of infringing materials

• desturction or donation of infringing materials

• publication of judgement at the expense of infringer to restore reputation

• damages=

  • moral damages= restore brand reputation

  • loss of profits= lost sales/revenue

  • real damages= legal expenses

• limitation period of 5 years to bring action

criminal action (spanish penal code) go back over

=criminalises counterfitting and unauthirsed use for profit

• aggrevating factors: widespread, network, public safety (eg fake medicines)

• acts: importing/exporting, selling, making, disitrubuting counterfit goods

• methods:

  • 6 motnhs- 4 years imprisonment + fines

    • worsen the price of fines and elongate prison sentences to 6 years for public health

  • disqualification from business activities

• criminal liability= companies may face:

  • fines 5X profits

  • closure of business

  • banned from business activities

tradenames law 17/2001

• any sign/name that dinsguishes the business itself from other companies in commercia actiivty

  • different from a compnay name (identifies legal entity) eg apple vs apple incorporate

  • different from trademark eg nestle vs nescaffe, intidex vs zara and pull and bear

• registration grants exclusive use however it may be trasnferred or sold with a business

registered vs unregistered trade names

• registered= full protection of rights before a court

• unregistered= weaker protection; must prove actual use and notoriety (customers associate and rely on name)

• foreign unregistered= may be protected under:

  • article 8 of the paris convention= mutual protection of trade names amongst member states of convention without registration

    • laduree registered in france so is protected under this rule in spain and germany as they are members

  • reciprocity= mutual protection between countries

    • if foreing nation protects unregistered spanish trade names, spain may recognise unregistered foreign countrys names

• protection for national territory only

geographical indications

= signs linking a product to a specific region where its qualities or reputation come from that origin

• types:

  • protected designation of origin= narrower strict protection requiring all production processing and preparation to occur in the area

  • protected geographical indication = broaded protection requiring only one production element to occur to area

• gis may be recognised regionally without registration eg catalan olive oil

• state ratification is required for national/international regonition 

pdo

• products nature quality or reputation is closely and specifically linked to a specific area

• includes human and natural resources of the area like climate soil local know how tradition

• all 3 stages (production, processing and prep) must be in the geographical area

• rioja wine monchego cheese

pdi

• products quality or reputation is connection to a geographical area

• only requires one element of production to be from area

• scottish or irish whisky

legal framework go over

• national

  • law 24/2003 on vines and wines - regulising grape, vinegar and wine prodcuts

  • law 6/2015 on gis of supra regional scope- regulation of non wine products (agriculture, spirits) from multiple communties

  • royal decree 1335/2001- governs spanish procedure for eu registration

• eu=

  • reg 2019/33 for wine gis (labelling and use)

  • reg2024/1143 for wine, spirits, agricultural products

  • reg 2023/2411 for artisanal and industrial gi’s= leather, glass ,lace

  • community register reg 2024/1143: harmonize regulation of gis across member states

    • requires state recongition first then eu wide registration

    • eu uses specific pdo/pgi symbols on authenticated protected products 

    • regulation 2017/625 ensures offcial eu wide control and compliance verifying use

protection - go over

• idefinite protection while the requirements are met:

  • must include at least 1 method of production in area

  • product must oringate from specific area

  • products quality or rep must be linked to its origin

• misuse controlled under unfair compeition law banning false or misleading origin destnations

  • champagne de espana- should be from france

• trademark law 17/2001 also prohbits misleading geogrpahical trademarks

  • rioja wine not from rioja

legal business use

• can be used in contracts to define rights/obligations in use

  • co ownership agreements: regulating use by mutiple owners

  • transfer- can be assigned or sold when business is sold

  • licence- can grant use to third parties under conditions eg mcdonalds liscences franchisees to use is logo or coke bottle producer

  • pledge/morgage/liens - can be used as security on a loan