BRANDS

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Brands are distinctive signs used to identify the products and services of a company or professional and differentiate them from others, allowing for recognition and association with a particular quality, image, experience, emotions, or values, thereby creating intangible value.

The inherent function of a brand is to distinguish a product or service from other identical or similar ones available in the market. This requirement is known as “distinctive strength”.

Brand rights are acquired through registration and last for ten years, with indefinite renewability.

As a monopoly granting the holder exclusive and exclusive rights to the sign against third parties, failure to use the brand effectively for five consecutive years may lead to its cancellation.

A brand may also be canceled if its use differs from the content of the registration.

Absolute nullity of registration is foreseen if the brand was applied for in bad faith.

Brands can include, but are not limited to: words, personal names, designs, symbols, logos, letters, slogans, numbers, colors and their combinations, designs, the shape of the product or its packaging, sounds, or holograms.

Copyrights—Intellectual Property—are compatible and cumulative with brand rights.

Both individuals and legal entities [companies, cooperatives…] can register brands, including public law entities [State, Regional, Local Administration…]. If ownership is joint among several individuals, it is governed by the rules of co-ownership.

The transfer of the entire business implies the transfer of brands unless otherwise expressly agreed.

Brand rights are exhausted upon the first commercialization of the identified product, carried out by the holder or an authorized third party.

Traders and distributors cannot be prevented from using their own brands alongside the product’s brand.

The brand holder cannot prevent third parties from using their full name and address in the market or from using indications related to the characteristics and origin of products or services that may be confused with the brand; or when the use of that brand is necessary to indicate the destination of a product or service, as long as such use is in accordance with fair industrial or commercial practices.

Rule of Speciality

The limit of trademark rights is defined by the Rule of Speciality.

The products and services covered by the trademark protection are conventionally classified by international agreements into 45 classes: 1st to 34th for Products, and 35th to 45th for Services.

In the trademark registration application, the classes to be protected must be specified, along with the particular products or services.

There is nothing to prevent two identical or similar signs from coexisting in the market if they distinguish perfectly differentiated products or services.

Renown.

Brands that have acquired renown enjoy reinforced protection compared to merely used brands.

Renown must be assessed in each specific case: it is not deduced from the registration and does not have to be a permanent reality.

Recognition of renown depends on the degree of dissemination and knowledge of the brand and allows for the extension of its protection to additional classes or to all types of products or services, beyond the principle of speciality and without the need for registration.

Reinforced protection is typically granted to products or services that have aesthetic or functional complementarity with those protected by the renowned registered brand, but it can also extend to all classes in the Nomenclature when it is known by the general public, for example, Google, Tesla, L’Oréal, or Mastercard.


Types of Brands

  • The individual brand belongs to a natural or legal person, and its holder establishes the regime of use, either personally or through third parties under license.
  • The collective brand is a sign used to distinguish the products or services of members of an association of manufacturers, producers, service providers, or traders, as well as public law entities. Users of collective brands must adhere to a Usage Regulation, which must be filed along with the registration application. This regulation specifies, in addition to the association, which members are authorized to use the brand and under what conditions. Unlike individual brands, geographic signs for products or services can be chosen and granted as collective brands.
  • The guarantee brands certify or guarantee the provision of services, materials, methods of manufacturing products, geographic origin, quality, accuracy, and other characteristics of the products and services that distinguish them from other products or services lacking such certification. The application for registration must also include a Usage Regulation, which outlines the quality requirements that products and services must meet and the conditions for using the mark. Certification marks can be requested by individuals or legal entities, including public law institutions, authorities, and agencies, but they cannot use the mark themselves; only businesses authorized by the holder may use it.

Registration.

Brand protection is always territorial: Spain, the European Union, or other countries around the world.

Trademark registration is subject to general registration principles: (i) publicity, (ii) opposition from third parties, (iii) priority of earlier marks, and (iv) successive handling in transfers.

  • The registration of a Spanish trademark is processed at the Spanish Patent and Trademark Office [OEPM], located in Madrid.
  • The registration of an European Union trademark is processed at the European Union Intellectual Property Office [EUIPO], located in Alicante.
  • Trademark registration in any other country around the world can be requested directly through local professionals or via the Madrid System, administered by the World Intellectual Property Organization [WIPO], based in Geneva, for the member countries of the Madrid Arrangement [1891] or the Madrid Protocol [1989] for international trademark registration.

Effects of Registration.

Registration enables the holder, in a broad sense, to use the brand exclusively in commercial activities, on their products or services, in correspondence and commercial documentation, in advertising, to license its use, and to assign the brand.

The holder can also prohibit unauthorized use of the sign by third parties in relation to the protected products or services and, in particular:

  • Use the brand, identical or similar, to distinguish products or services, whether identical or similar, on the products or their packaging.
  • Offer [fairs, events, catalogs, social media…] the products or services, market them, or store them.
  • Import or export products bearing the sign.
  • Use the sign as a trade name or company name.
  • Use the sign in advertising and commercial documentation.
  • Use the sign as a domain name or in communication networks.
  • Use the sign in comparative advertising when it does not violate Directive 2006/114/EC.

Links.

  • SPTO – Spanish Patent and Trademark Office: www.oepm.es
  • EUIPO – European Union Intellectual Property Office: www.euipo.eu
  • WIPO – World Intellectual Property Organization: www.wipo.int

Legal Framework.

  • Spanish Brand: Law 17/2001, of December 7, on Brands.
  • European Union Brand: Regulation (EU) 2017/1001 of the European Parliament and of the Council, of June 14, 2017, on the European Union Brand.
  • Organic Law 10/1995, of November 23, on the Penal Code.

Dispute Resolution.

Disputes arising in Brand Law can be resolved: (i) through arbitration, (ii) administratively, or (iii) judicially.

a) Against the registration.

The Spanish Patent and Trademark Office is responsible for handling oppositions against Spanish brand applications, as well as procedures for annulment and expiration of Spanish brands. Once the administrative route is exhausted, the Provincial Court and the Supreme Court have jurisdiction.

The European Union Intellectual Property Office (EUIPO) is responsible for handling oppositions against European Union brand applications, as well as procedures for annulment and expiration of European Union brands. For review, cases are referred to the EUIPO Boards of Appeal, and appeals are handled by the Court of Justice of the European Union.

b.) Against unauthorized use.

For matters concerning Spanish brands, the competent authorities are: the Commercial Courts, the Provincial Court, and the Supreme Court [Second Chamber].

For matters concerning European Union brands, the competent authorities are: the European Union Intellectual Property Office (EUIPO) Board of Appeal, the Provincial Court of Alicante [Eighth Section], and the Supreme Court [Second Chamber].

The brand holder can pursue civil actions: (i) for cessation, (ii) for compensation for damages, (iii) for measures to prevent further infringement, (iv) for the destruction or humanitarian transfer of unlawfully marked products, (v) for the transfer of ownership of seized products, materials, and means, and (vi) for the publication of the judgment.

c) Arbitration.

Administrative acts related to prohibitions that have concluded the registration procedure can be submitted to arbitration.

The final arbitration award has the effect of res judicata, similar to that of a final judicial ruling.

d) Criminal Defense.

The holder of a registered brand can pursue the relevant criminal actions against anyone who:

  • Manufactures, produces, or imports products bearing a distinctive sign that is identical or confusingly similar to the registered brand.
  • Offers, distributes, or wholesales products bearing a distinctive sign that is identical or confusingly similar to the registered brand, or stores them for that purpose, when dealing with the same or similar products or services.
  • Sells, through street vending or occasional sales, products identified with the registered brand.

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