Topic 6: Trademark Law Overview Quiz

Lesson 6: Distinctive Signs (Trademarks)

• Trademarks are signs that identify the business origin of goods or services
• Trademarks distinguish goods or services from other undertakings
• Commercial names identify the undertaking
• Geographical indications/Designations of Origin give exclusive right to producers in a specific region

1. Concept and Types of Distinctive Signs

• Signs transmit information to consumers about the origin and nature of the products/services and are protected as intellectual property rights
• Trademarks distinguish products from different undertakings
• Commercial names identify a specific business
• Geographical indications/designations of origin protect specific products from a particular geographic region

1. Concept and Types of Distinctive Signs (Commercial Names)

• A distinctive sign that identifies the undertaking (not the product itself)
• Same grounds to refuse registration as for trademarks
• Registration of commercial names gives the same rights as a trademark registration
• Same invalidity and revocation grounds as trademarks applies

1. Concept and Types of Distinctive Signs (Geographical Indications of Origin and Designations of Origin)

• Used to indicate that a product comes from a specific geographical area known by the public for its characteristics
• If IP meets requirements, it becomes stronger protection (exclusive right)
• Quality and geographical zone of production are linked
• Products in the area with specified quality standards and recognized by competent authorities are protected

1. Concept and Types of Distinctive Signs (Trademarks)

• A trademark can consist of any sign(words, personal names, designs, letters, numbers, colours, shape, sounds, etc.) that distinguishes the goods or services of one undertaking from others.
• In Spain, the requirements for trademark registration have been modified to allow for non-graphical representations
• Represents the specific goods/services and the proprietor

2. Absolute grounds for refusal of registration of a trademark

• Absolute grounds relate to the trademark itself, not comparisons with other signs
• Examples include not meeting the conceptual requirements, lack of distinctiveness, or being contrary to public order

2. Absolute grounds for refusal of registration of a trademark (Descriptive Signs)

• Descriptive signs inform about product characteristics (e.g., quantity, quality, purpose, kind, or size) without indicating origin
• Examples include "Biomild" for yogurt (signifying mild and organic) or "Quick-gripp" for hand tools
• The direct, specific relationship between the term and the product matters regarding distinctiveness

2. Absolute grounds for refusal of registration of a trademark (Customary Signs)

• Signs commonly used in a language or the trade practices of a sector
• These signs, despite being descriptive, are excluded from registration because the usage is well-established, implying no origin or distinguishing features

2. Absolute grounds for refusal of registration of a trademark (Shapes)

• Trademarks can be shapes or characteristics that result from the nature of the goods (e.g., shape of a banana), necessary for a technical result, or add value
• The shape/characteristic must be distinct from the goods themselves
• The example given is for bananas, construction toys

2. Absolute grounds for refusal of registration of a trademark (Public Policy or Morality)

• Trademarks cannot be against public policy or accepted morals
• Examples include inappropriate terms (e.g. offensive, hateful) and signs potentially misleading

3. Relative grounds for refusal of registration of a trademark

• Relative grounds concern prior rights held by other trademark owners
• Refusal occurs if a trademark application is confusingly similar to an existing trademark used for similar goods/services

3. Relative grounds for refusal of registration of a trademark (Identical/Similar Marks)

• Similar/Identical trademark for identical/similar goods/services will cause confusion in the public
• Example: "FLUITUSS" and "FLUTOX" (phonetic similarity)

3. Relative grounds for refusal of registration of a trademark (Mark with a reputation)

• Registered marks with a strong reputation in the market, even for different goods/services, can be protected
• Use of a similar mark can take unfair advantages/harm the reputation of the well-known mark

4. Rights conferred by a trademark (Acquisition)

• Trademark rights are acquired through registration
• There is a national register for Spain (OEPM) and EU register (EUIPO)

4. Rights conferred by a trademark (Procedure for Registration)

• A step-by-step process for registration is explained to initiate trademark protection
• The process involves submitting application, examining formalities, and dealing with possible oppositions during the different stages

4. Rights conferred by a trademark (Rights Arising from Registration)

• The registered trademark owner has exclusive use rights for the registered goods/services
• These rights prevent others from using marks, and specifies prohibited actions by third parties
• Also covers creating false imitations

4. Rights conferred by a trademark (Limits of the TM Right)

• Trademark right does not stop the sale of goods produced independently and already on the market
• Trademark right cannot stop other companies selling those products/services

5. Transfer and Licensing of a trademark

• Trademarks can be transferred or licensed separately from the underlying undertaking
• Rules defining how the transfer or license is recorded/regulated are outlined by the regulations
• Rights associated with the transfer/licensing are clarified and described in the regulations

6. Surrender, Revocation, and Invalidity of a trademark (Absolute Invalidity)

• A trademark can be invalid for various reasons which include its use contradicting absolute grounds for refusal
• Legal grounds include trademark infringement, bad faith application, or confusion with other marks

6. Surrender, Revocation, and Invalidity of a trademark (Relative Invalidity)

• Refusal can come from prior marks that already exist and are registered
• Trademarks already registered for similar goods/services can cause conflicts/arguments in the courts

6. Surrender, Revocation, and Invalidity of a trademark (Partial Invalidity)

• Invalidity affects only specific registered goods or services, not all goods registered
• Partial invalidity applies to both Spanish and EU trademarks

6. Surrender, Revocation, and Invalidity of a trademark (Proceedings for Invalidity)

• Invalidity procedures, both for EU and Spanish applications, are explained, including court challenges and appeals

6. Surrender, Revocation, and Invalidity of a trademark (Consequences of Invalidity)

• Consequences of declared invalidity are outlined, considering potential impacts on business arrangements, previous decisions, or any relevant contracts