Trademark law

TRADEMARKS AND TRADE NAMES

A trademark is a sign generally represented by a word or a combination of words, letters, and numerals, although it may also consist of drawings, symbols, three-dimensional features such as the shape and packaging of goods, non-visible signs such as sounds or fragrances, or color shades used as distinguishing features.

Trademarks are used to distinguish the goods or services of one enterprise from those of other enterprises. They are protected by intellectual property rights, and such protection can be obtained through registration, by filing an application for registration with the national (for instance, the OEPM in Spain) or regional (for instance, the EUIPO in the European Union) trademark office and paying the required fees. At the international level, you have two options: either you can file a trademark application with the trademark office of each country in which you are seeking protection, or you can use WIPO’s Madrid System.

A trademark registration will confer an exclusive right to the use of the registered trademark. This means that if you are the owner of a trademark, you can use it exclusively, or license it to another party for use in return for payment. Registration gives you legal certainty and reinforces your position, for example, in case of litigation.

The term of trademark registration can vary. In Spain and in most countries it lasts ten years, and it can be renewed indefinitely on payment of additional fees.

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PATENTS AND UTILITY MODELS

A patent is an exclusive right granted for an invention. You can patent both a product and a process that provides a new way of doing something or offers a new technical solution to a problem. The patent owner has the exclusive right to prevent or stop others from commercially exploiting the patented invention. Thus, the patented invention cannot be commercially made, used, distributed, imported or sold by others without the prior consent of the patent owner.

As a territorial right, a patent is generally only applicable in the country or region in which it has been filed and granted, in accordance with the law of that country or region. In Spain, as in many other countries, the protection is granted for a period of 20 years from the filing date of the application. Once that period has expired, the patent belongs to the public domain.

Patent owners are entitled to enforce their rights in a court. They can monitor, identify, and take action against infringers of a patent.

They are also entitled to license a patent by granting permission to another individual or organization to make, use or sell the patented invention, according to the agreed terms and conditions set forth in the license agreement (payment to be made by the licensee to the licensor, purpose of the license, territory, duration of the license, etc.). Unlike selling or transferring a patent to another party, the licensor continues to have property rights over the patented invention.

On the other side, a utility model is an exclusive right granted for an invention, which allows the right holder to prevent others from commercially using the protected invention, without his permission, for a limited period of time. It is quite similar to a patent, although it has some differences. For instance, the requirements for acquiring a utility model are less stringent than for patents, and the term of protection for utility models (10 years) is shorter than for patents (20 years). In general, utility models are considered particularly suited for “minor” improvements to, and adaptations of, existing products. Utility models are basically used for mechanical innovations.

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INDUSTRIAL DESIGNS

Industrial designs constitute the ornamental or aesthetic aspect of an article, and may consist of three dimensional features, such as the shape of an article, or two dimensional features, such as patterns, lines or color.

Although they are similar to patents, industrial design rights protect only the appearance or aesthetic features of a product, whereas a patent protects an invention that offers a new technical solution to a problem. Thus, an industrial design right does not protect the technical or functional features of a product. Such features could, however, potentially be protected by a patent. Industrial designs may be applied to a wide variety of products and handicraft items: packages and containers, furnishing and household goods, lighting equipment, jewellery, electronic devices, textiles, etc.

The owner of a registered industrial design has the right to prevent third parties from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.

In Spain, an industrial design needs to be registered in order to be protected a “registered design”. The total duration of industrial design rights protection amounts 25 years and is divided into successive renewable periods of 5 years.

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GEOGRAPHICAL INDICATIONS

A geographical indication is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are essentially due to that place of origin. They are typically used for agricultural products, foodstuffs, wine and spirit drinks, handicrafts, and industrial products. Since the qualities of those products depend on the geographical place of production, there is a clear link between the product and its original place of production.

The right to use a protected geographical indication belongs to producers in the geographical area defined, who comply with the specific conditions of production for the product. They have the right to use the indication to prevent its use by a third party whose product does not conform to the applicable standards. However, they may not prevent someone from making a product using the same techniques as those set out in the standards for that indication. Protection for a geographical indication is usually obtained by acquiring a right over the sign that constitutes the indication.

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OUR LEGAL ADVICE

Domènech Corbella – Legal Services regularly advises in all kind of IP-related matters. We will provide you fast, effective and professional legal advice on all matters relating to the legal protection and commercial exploitation of all types of intangible assets and, in particular, those subject to IP legislation: