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EUROPEAN PATENT AND TRADEMARK ATTORNEYS

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Apart from and geographical indications, indications of geographical origin are excluded from registration as trademarks, that is, those that identify a product as originating in a territory, when a certain quality, reputation or other characteristic of the product is attributable mainly to its geographical origin (SWITZERLAND for financial services, GENEVA for watches)

The registration of geographical names as trademarks is prohibited not only when the name designates the origin of the category of products but also when said geographical name is either famous or known for the category of products in question and, therefore, is favorably associated with said products or services in the mind of the target group of people.

Design is understood to be the appearance of the whole or part of a product, derived from the special characteristics of lines, configuration, color, shape, texture or material of the product itself or its ornamentation. Appearance is the protected legal asset, what makes consumers, faced with two products of identical functionality, choose one or the other based on the aesthetics that are most attractive to them:

One out of every two consumers makes a mistake when buying and takes an imitation thinking that it is the original”, they denounce in Promarca, the Association of Manufacturers of Consumer Products leaders in food, beverages, drugstores, and perfumery.

The phenomenon, present in all sectors, is known as “copycat” and consists of the launch of products that selectively reproduce characteristics of the container, colors, shapes, etc., of the main brand to confuse consumers in their purchasing decisions. Its architects plan their strategy to avoid lawsuits by registering trademarks that are not always easy to oppose with the strict criteria of Trademark Law and its rigid visual, phonetic, and conceptual comparison.

The Brexit transition period will end on  December 31, 2020. As of January 1, 2021, EU legislation will no longer have an effect in the UK, with the consequence that the protection of European trademarks and designs will NO longer be extended to British territory. What steps should we take?

European trademarks and Community designs registered by December 31, 2020, will be automatically "cloned" into national UK trademarks and designs before UKIPO without the need to pay fees and benefiting from the same priority and registration dates. UKIPO will not issue a certificate of registration for these new titles, but owners will be able to access their registrations through official databases at www.gov.uk In the future, these cloned titles shall be independently renewed in accordance with the procedures provided by the British law, in parallel with the renewals of European trademarks and Community designs at EUIPO.

Trademarks must be put to effective use in the market after five years since their registration (art. 39 LM). The burden imposed on its holders becomes of vital importance in the current Spanish Trademark Law, which conditions the success of oppositions to the presentation of proof of use of the opposing trademark.

The Spanish PTO does not investigate ex officio whether the earlier mark has been used. Such examination only takes place upon request of the applicant facing an opposition.

Without proof there is no use. The evidence must be dated, packaging of the goods must show the expiration date of the product, catalogues must mention a date as well as websites and published news and articles. The mere presence of the brand on a website only shows that the website is accessible to the public. This fact alone is not sufficient to prove actual use.