Trademarks PDF

LESSON 6 DISTINCTIVE SIGNS (TRADEMARKS) 1. Concept and types of distinctive signs 2. Absolute grounds for refusal of registration of a trademark 3. Relative grounds for refusal of registration of a trademark 4. R...

LESSON 6 DISTINCTIVE SIGNS (TRADEMARKS) 1. Concept and types of distinctive signs 2. Absolute grounds for refusal of registration of a trademark 3. Relative grounds for refusal of registration of a trademark 4. Rights conferred by a trademark 5. Transfer and Licensing of a trademark 6. Revocation, surrender and invalidity of a trademark  1. Concept and types of distinctive signs A) Concept Concept: signs transmitting information to consumers, as regards products and services offered on the market and/or their business origin, and protected as IP rights B) Types of distinctive signs Trademarks: distinguishes goods or services produced by a certain undertaking (business origin of goods or services) Commercial (trade) names: identifies the undertaking (as opposite to TM which distinguishes goods or services) Geographical indications of origin and Designations of Origin: exclusive right given to all those who produce certain products in a specific area respecting the control rules established for these products (not given to a specific undertaking or entrepreneur) 2  1. Concept and types of distinctive signs B) Types of distinctive signs 1) Commercial names (also called Trade names): Distinctive sign which identifies the undertaking, as opposite to TM which distinguishes goods or services National regulation: in Spain, art. 87-91 Ley 17/2001 de Marcas (LM) Same grounds for refusal of registration as trademarks (art. 88 LM) Registration of CN gives the same rights as registration of a TM (art. 90 LM and art. 87.3 LM) Same invalidity and revocation grounds as TM (art. 91 LM) 3  1. Concept and types of distinctive signs 2) Geographical indications of origin and Designations of Origin In general Indications of Provenance (IP) are used to indicate that a product comes from a specific geographical area, usually known by the public for its relation to certain products having specific characteristics The use of false IP can be considered as an unfair competition act (art. 6, 5 and 7, or 11 of Ley de Competencia Desleal), or misleading advertising (art. 3.e) of Ley General de Publicidad) If the IP meet some requirements, they can acquire a stronger protection (an exclusive right = IPR): they are then called Designations of origin (DO) or Geographical Indications (GI): In both cases there is a relationship between the quality of the product and the geographical zone in which it is produced (stronger for DO): that gives the product an added value To get this protection, products and producers must be controlled: to guarantee that the product comes from this area and that it has the typical characteristics (quality) of the products produced in this area à DO and GI must be recognized by the competent authorities (in the EU, the EC, that examines applications and decides whether to grant (or not) the DO/GI, and therefore to register it in the European Registry). European rules: Regulation 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs 4  1. Concept and types of distinctive signs 3) Trademarks 3.1) Concept Legal concept: Art. 4 LM = Art. 4 REUT (Regulation 2017/1001 on the EU Trademark): A trademark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of: (a) distinguishing the goods or services of one undertaking from those of other undertakings; and (b) being represented on the Register (the Register of TM – for Spanish TM – or the Register of EU trademarks – for EU TM), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor In Spain, previously, requirement of “graphical representation” à not anymore (modified by RD 23/2018) à e.g. it is now possible to register sounds, videos, holograms… Therefore à signs susceptible of constituting a TM: words, designs, letters, numerals, colours, shapes, videos, holograms… 5  1. Concept and types of distinctive signs 3.2) Protection of Trademarks (see Lesson 1) Global protection General Agreements: Paris Convention for the Protection of Industrial Property (1883) and Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) Specific agreements: Madrid System (Madrid Agreement Concerning the International Registration of Marks and Protocol Relating to that Agreement); Nice Agreement (International Classification); Trademark Law Treaty (WIPO) Regional protection: EU Regulation 2017/1001 on the EU Trademark (REUT) à one single TM for the whole EU See also Commission implementing regulation (EU) 2018/626 of 5 March 2018 (detailed rules for implementing certain provisions of REUT) National Protection: in Spain, Ley 17/2001 de Marcas (LM) LM heavily modified by Real Decreto-ley 23/2018, de 21 de diciembre: transposition of the Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trademarks. 6  1. Concept and types of distinctive signs 3.3) Principle of speciality: TM must relate to one or more specific category of products: categories established in the “Nice Classification” (Nice Agreement, 1957): international classification of goods and services applied for the registration of marks: https://www.wipo.int/classifications/nice/nclpub/en/fr/ 3.4) TM vs Patents TM distinguishes products or services ≠ Patent protects an invention TM prevents the use of the sign in products or services not produced by the owner of the TM, but cannot avoid the production or commercialization of same type products or services provided that they are commercialized under a different TM ≠ Patent gives the right to prevent the production or commercialization of same type products or services using the patented invention Duration: TM can be renewed without time limitation ≠ Patent is granted for a limited period and cannot be renewed 7  2. Absolute grounds for refusal of registration of a trademark The trademark right is granted by registration à application for registration at a national or regional office: the office can deny registration if there are grounds for that refusal The refusal can be based on Absolute or Relative grounds for refusal, all of them legally established Absolute grounds for refusal They refer to requirements of the TM itself, not in comparison with other signs E.g. not meeting the conceptual requirements to be a TM, not being distinctive, being contrary to public order, etc. Directly examined by the Office (EUIPO or OEPM) https://guidelines.euipo.europa.eu/2214311/1787752/trade-mark-guidelines/section-4-absolute-grounds-for-refusal Relative grounds for refusal Based on the identity or risk of confusion with other previously registered TM They are examined upon opposition by the proprietor of a prior TM (because they protect a private interest) https://guidelines.euipo.europa.eu/2214311/1788522/trade-mark-guidelines/part-c-opposition 8  2. Absolute grounds for refusal of registration of a trademark ABSOLUTE GROUNDS FOR REFUSAL OF REGISTRATION Art. 5 LM (art. 7 REUT) 1) Not meeting conceptual requirements of a TM: Art. 5.a) LM = art. 7.1.a) REUT Signs which do not conform to the requirements of art. 4 (definition of a TM) Distinctiveness: signs not capable of distinguishing the goods or services of one undertaking from those of other undertakings à coincides with 5.b) LM (= 7.1.b) REUT) Representation (“being represented on the Register” ≠ previous “graphically represented”): relevant for “non-traditional TM” the TM can be represented in any appropriate form using generally available technology, as long as it can be reproduced on the Register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner: e.g. sound, motion, multimedia, hologram TM are acceptable BUT some non-traditional TM still not accepted: e.g. olfactory TM (Sieckmann case C-273/00 still applicable, even if re to prior wording “graphically represented : “In respect of an olfactory sign, the requirements (…) are not satisfied by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements”). Also, not taste or tactile TM. See also art. 3 of the Commission implementing regulation (EU) 2018/626 of 5 March 2018 (detailed rules for implementing certain provisions of REUT) 9  2. Absolute grounds for refusal of registration of a trademark Section 4 Motivos de denegación absolutos — Capítulo 3 Marcas sin carácter distintivo (artículo 7, apartado 1, letra b), del RMUE) El signo crea la ilusión de dos triángulos superpuestos, pero en 2) “Non-distinctive” signs (signs devoid of any distinctive character) realidad consta de una sola línea. No es una simple yuxtaposición de MUE Art. 5.b) LM = art. 7.1.b) REUT Clases 35, 41 unas formas básicas, n.º 10 948 222 sino más bien una disposición creativa de “Distinctiveness” means that the sign serves to identify the product and/or service in respect of which registration is applied líneas que generan una impresión general for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings à this is distintiva. the main economic function of a TM = “distinctiveness” is the essential element of a TM Véanse otros ejemplos de elementos figurativos simples (combinados con términos sin carácter distintivo o de carácter descriptivo) en las Directrices, Parte B, Examen, Art. 7.1.b) isSección a more general 4, Motivos de denegación provision than absolutos, Capítulo (artículo 7, apartado 1, letra c), del RMUE). art. 4, Marcas 7.1.c) (= descriptive signs à next slide): descriptivas, a TM that6 is descriptive of characteristics of goods or services ex art. 7.1.c) is necessarily devoid of any distinctive character Elementos figurativos comunes regarding the same goods or services ex art. 7.1.b) En algunos casos, el elemento figurativo consiste en una representación de los Even though a given termomight not bedistintivo clearly si se tratadescriptive productos y servicios para los que se protege la marca. En principio, se considera que dicha representación es descriptiva está exenta de carácter de regarding the goods and services concerned, so that there is no objectionsimbólica under art.de7.1.c), o estilizada the los productos term y servicios que would no se desvía still una representación realista de los productos y servicios o de una representación de formabe objectionable under ex art. 7.1.b) on the ground that it will be perceived by the relevant public as only providing information on the nature of the goods and/or services concerned and not as significativa de la representación común de dichos productos y servicios. En otros casos, el elemento figurativo puede no representar los productos y servicios, indicatingy servicios, theirenorigin. pero, aun así, estar directamente relacionado con las características de los productos cuyo caso se considera que el signo no tiene carácter distintivo, salvo que esté suficientemente estilizado. E.g. ECO as denoting La siguiente representación‘ecological’; FLEX de una hoja de parra no resulta and distintiva FLEXI para el vino: as referring to ‘flexible’; GREEN as being ‘environmentally friendly’; MEDI as referring to ‘medical’, for wine… Asimismo, la siguiente representación de una vaca para productos lácteos no es distintiva: 10 Directrices relativas al examen ante la Oficina, Parte B Examen Página 398 FINAL VERSION 1.0 01/03/2021  2. Absolute grounds for refusal of registration of a trademark 3) Descriptive signs Art. 5.c) LM and art. 7.1. c) REUT When the term used exclusively as a TM has a meaning that is immediately perceived by the relevant public as providing information about the goods and services applied for: i.e. the sign provides information about, inter alia, the quantity, quality, characteristics, purpose, kind and/or size of the goods or services. The relationship between the term and the goods and services must be sufficiently direct and specific à specialty principle of TM: e.g. Eurohealth can be generic in the health insurance sector but not generic for financial services Examples: “Biomild” for yoghurt being mild and organic “Quick-gripp” for hand tools, clamps and parts for tools and clamp CLEARWIFI for telecommunications services, namely high-speed access to computer and communication networks… 11  2. Absolute grounds for refusal of registration of a trademark 4) Customary signs Art. 5. d) LM = art. 7.1.d) REUT Signs that consist exclusively of words or indications that have become customary in the current language or in the established practices of the trade à the customary nature of the sign usually refers to something other than the properties or characteristics of the goods or services. Overlap between art. 7.1.d) and art. 7.1.c), BUT signs covered by art. 7.1.d) are excluded from registration, not because they are descriptive, but based on their current usage in trade sectors covering the goods or services for which the mark is applied for. This ground for refusal also covers words that originally had no meaning or had another meaning, and abbreviations that have entered informal or jargon usage and have thereby become customary in trade. E.g. Weisse Seiten (white pages) Article 7(1)(d) also covers figurative elements that are either frequently used or have even become the standard designation for goods and services for which registration is sought: E.g.: sign identical to the international safety symbol known as “high voltage symbol” or “caution, risk of electric shock” or international symbol for parking 12  2. Absolute grounds for refusal of registration of a trademark Acquired distinctiveness through use: art. 5.2 LM and 7.3 REUT Exception to arts. 7.1.b), c) or d): a TM may be registered even though it does not comply with arts. 7.1.b), c) or d) if it “has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it”. Although the sign lacks inherent distinctiveness ab initio regarding the goods and services claimed, at least a significant proportion of the relevant public has, owing to the use made of it on the market, come to see it as identifying the goods and services as originating from a particular undertaking. Assessed in relation to the average consumer and in respect of the goods or services in question Factors considered in this assessment: market share held by the mark regarding the relevant goods or services; how intensive, geographically widespread and long-standing use of the mark has been; amount invested by the undertaking in promoting the mark for the relevant goods or services; proportion of the relevant public who identifies the goods or services as originating from a particular undertaking. 13  2. Absolute grounds for refusal of registration of a trademark 5) Shapes Art. 5. e) LM = art. 7.1.e) REUT Signs that consist exclusively of the shape or another characteristic that results from the nature of the goods themselves; or which is necessary to obtain a technical result; or which gives substantial value to the goods This is called “material autonomy” of the sign: the sign must exist as something different and independent from the goods it distinguishes (ground only for TM on goods) E.g. for bananas, or for construction toys The aim is to o prevent the exclusive and permanent rights that a trademark confers from serving to extend the life of other IPR indefinitely, such as patents or designs, which the EU legislature has sought to make subject to limited periods 14  2. Absolute grounds for refusal of registration of a trademark 6) Signs contrary to public policy or to accepted principles of morality Art. 5.f) LM = art. 7.1.f) REUT: broad wording that allows room for interpretation à need to balancing the right of traders to freely employ words and images in their TM against the right of the public not to encounter disturbing, abusive, insulting and even threatening TM Public policy: all legal rules that are necessary for the functioning of a democratic society and the state of law à referred to the legal order and the state of law as defined by the Treaties and secondary EU legislation, which reflect a common understanding of certain basic principles and values, such as human rights. Accepted principles of morality: fundamental moral values and standards to which a society adheres at a given time (likely to change over time and vary in space) E.g.: PAKI, FICKEN, SCREW YOU, MECHANICAL APARTHEID, 7) Deceptive signs Art. 5.g) LM = art. 7.1.g) REUT signs which can deceive the public (general principle of Unfair competition and Consumer protection fields, applied to the TM context) E.g. LACTOFREE (for products containing lactose) 15  2. Absolute grounds for refusal of registration of a trademark 8) Absolute grounds of refusal related to the general principle of protection of other previously registered IPR: Art. 5.h) LM = 7.1.j) REUT: protection of designations of origin or geographical indications Art. 5.i) LM = 7.1.k) REUT: protection of traditional terms for vine Art. 5.j) LM = 7.1.l) REUT: protection of traditional specialties guaranteed Art. 5.k) LM = 7.1.m) REUT: protection of registered plant variety denominations 9) Absolute grounds of refusal related to conflict to flags or other symbols: Art. 5.l): refers to badges, emblems or escutcheons in Spain Art. 5.m) = 7.1.h) REUT: signs contrary to art. 6ter of the Paris Convention for the Protection of Industrial Property armorial bearings, flags, and other State emblems of other contracting parties, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view Art. 5.n) = 7.1.i) REUT: other badges, emblems or escutcheons not covered by art. 6ter of the Paris Convention (public interest reasons) 16  3. Relative grounds for refusal of registration of a trademark Relative grounds for refusal are examined upon opposition by the proprietor of a prior trademark (because they protect a private interest) https://guidelines.euipo.europa.eu/2058843/1788522/trade-mark-guidelines/part-c-opposition Regulated in art. 6 to 10 LM, and Art. 8 REUT Based on the identity or risk of confusion with other previously registered TM (“prior TM”) Concept of “prior trademark”: art. 6.2 LM = art. 8.2 REUT 6.2.a) and b) = 8.2.a): a registered TM is “prior” when its application date is previous to the application date of the one examined (including possible priorities claimed) 6.2.c) = 8.2.b): a TM application can be considered as a “prior TM” if finally registered 6.2.d) = 8.2.c): a “well known” TM (according to art. 6 bis of the Paris Convention) Concept of “prior Commercial name”: art 7 LM Same as for TM, but only for commercial names registered or applied for in Spain. 17  3. Relative grounds for refusal of registration of a trademark Relative grounds for refusal: art 6.1. LM = art. 8.1 REUT “1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered: (a) if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected; (b) if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark” 18  3. Relative grounds for refusal of registration of a trademark Double identity: art. 6.1.(a) LM / 8.1.a) REUT: if the trademark is identical with the prior TM and the goods or services for which registration is applied for are identical with the goods or services for which the prior TM is protected; This is the most evident case: identical TM for identical goods or services concept of “identical” (ECJ, case C-291/00, Diffusion SA v. Sadas Vertbaudet SA): “a sign is identical with the trademark where it reproduces, without any modification or addition, all the elements constituting the TM or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer who is deemed to be reasonably well informed, reasonably observant and circumspect” 19  3. Relative grounds for refusal of registration of a trademark Likelihood of confusion: art. 6.1.(b) LM /8.1.b) REUT: if because of its identity with, or similarity to, the prior TM and the identity or similarity of the goods or services covered by the TM there exists a likelihood of confusion on the part of the public in the territory in which the prior TM is protected the likelihood of confusion includes the likelihood of association with the prior TM. This includes: Identical TM for similar goods or services FLUITUSS – FLUTOX (phonetic similarity) Similar TM for identical goods or services Similar TM for similar goods or services In this 3 cases the lack of distinctive character is not as evident as in the previous one (identical TM for identical goods or services), therefore the criterion used is the “likelihood of confusion” which includes the “likelihood of association”. 20  3. Relative grounds for refusal of registration of a trademark Non-registered TM They can be protected (against relative grounds for refusal) if the national law protects them Well-known TM / TM with a reputation (art. 8 LM; art. 8.2.c) and 8.5 REUT): Art. 8.5 REUT: (..) the trade mark applied for shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Wider scope of protection: non-registration of any similar or identical TM, even for different goods or services, when the use would take unfair advantage/be detrimental to the distinctive character or the repute of the well-known TM “Well-known”, “reputation”: the wider the knowledge of the TM (general public ≠ specific sector), the wider the protection re goods or services… 21  4. Rights conferred by a trademark A) Acquisition of the right the right is acquired by the valid registration of the TM national TM: single Register for Spain, carried out by OEPM E.U. TM: single Register for EU, carried out by EUIPO à “unitary character” = “equal effect throughout the Union” (art. 1.2 REUT) The right has a duration of 10 years and can be renewed by successive periods of 10 years (art. 31 LM = 52 REUT): fees are paid for 1st registration and for successive renewals B) Procedure for registration: arts. 30-51 REUT (in Spain, art. 11-30 LM) Filing of application (art. 30) à requirements of the application (art. 31) The application can be withdrawn, restricted, amended or divided (arts. 49-50) publication of application (art. 44) à starting date of the opposition period (art. 45) examination of formal requirements of application and of absolute grounds for refusal, ex officio (arts. 41 y 42) examination of relative grounds for refusal, only upon opposition (art. 43: search report à also at applicant’s request ) Opposition period, 3 months (arts. 45-47) Registration (certificate of registration) and publication (art. 51) à if denied, appeal before (EUIPO Board of appeal à CJEU) 22  4. Rights conferred by a trademark Procedure for registration Examination period Opposition period 23  4. Rights conferred by a trademark C) Rights arising from TM registration The registered owner has the exclusive right to use the trademark (9.1 REUT = art. 34.1 LM) This basically means that they can exclude others from using it, as detailed in art. 9 REUT and art. 34 LM art. 9. 2 REUT = art. 34.2 LM (reproducing the relative grounds for refusal of registration) Art. 9.3 and 9.4 REUT = art. 34.3 and 34.4 (specification of prohibited actions by third parties) 24  4. Rights conferred by a trademark Art. 9. 2 REUT (= 34.2 LM): content of the right Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where: (a) the sign is identical with the EU trade mark and is used in relation to goods or services which are identical with those for which the EU trade mark is registered; (b) the sign is identical with, or similar to, the EU trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the EU trade mark is registered, if there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark; (c) the sign is identical with, or similar to, the EU trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar to or not similar to those for which the EU trade mark is registered, where the latter has a reputation in the Union and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EU trade mark. 25  4. Rights conferred by a trademark Art. 9. 3 REUT (= 34.3 LM): most common infringements The following, in particular, may be prohibited under paragraph 2: (a) affixing the sign to the goods or to the packaging of those goods; (b) offering the goods, putting them on the market, or stocking them for those purposes under the sign, or offering or supplying services thereunder; (c) importing or exporting the goods under the sign; (d) using the sign as a trade or company name or part of a trade or company name; (e) using the sign on business papers and in advertising; (f) using the sign in comparative advertising in a manner that is contrary to Directive 2006/114/EC. 26  4. Rights conferred by a trademark Art. 9. 4 REUT (= 34.4 LM): fight against counterfeiting Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall also be entitled to prevent all third parties from bringing goods, in the course of trade, into the Union without being released for free circulation there, where such goods, including packaging, come from third countries and bear without authorisation a trade mark which is identical with the EU trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark. Recital 16 REUT: “it should be permissible for EU trademark proprietors to prevent the entry of infringing goods and their placement in all customs situations, including transit, transhipment, warehousing, free zones, temporary storage, inward processing or temporary admission, also when such goods are not intended to be placed on the market of the Union” Need to fight against counterfeiting by intercepting products at Customs, before they enter the EU (once inside it is much more difficult to locate them) Regulation (EU) No 608/2013 of the European Parliament and of the Council of 12 June 2013 concerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) No 1383/2003 (OJ L 181, 29.6.2013, p. 15). 27  4. Rights conferred by a trademark D) Limits of the TM right 1) Exhaustion: the owner of the TM has the right to introduce the goods to the market under the TM, BUT once he has done it, they cannot object to further sales of the product in the course of trade: Art. 15.1 REUT (art. 36.1 LM): “1. An EU trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the European Economic Area under that trade mark by the proprietor or with his consent” The aim of this limit is to prevent the owner of the TM to control the subsequent process of commercialization of the goods: if not, the TM could be a way to restrict competition (the owner could try and fix not only the first price of the goods –the one they can decide– but also the resale price, which in principle must be freely fixed by distributors) Exception: legitimate reasons à the owner can oppose further commercialization of the goods if their condition is changed or impaired after they have been put on the market Art. 15.2 REUT (art. 36.2 LM): “2. Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market” 28  4. Rights conferred by a trademark 2) Activities of third parties that must be accepted by the owner of the TM: art. 14 REUT (art. 37 LM) 1. The right on a TM shall not entitle the proprietor to prohibit a third party from using in the course of trade: (a) the name or address of the third party, where that third party is a natural person; (b) signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of the goods or services; (c) the EU trade mark for the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark, in particular, where the use of that trade mark is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts. 2. Paragraph 1 shall only apply where the use made by the third party is in accordance with honest practices in industrial or commercial matters 3) Limits in the infringement proceedings: art. 16 REUT the owner of the TM cannot prohibit the use of a later registered TM where that later TM would not be declared invalid 29  4. Rights conferred by a trademark E) Obligations 1) To pay fees: for registration, modification, renewal, etc. https://euipo.europa.eu/ohimportal/es/web/guest/fees-payable-direct-to-euipo 2) To use the TM (art 18 REUT; art. 39 LM): No-use in a period of 5 years à sanctions: “If, within a period of five years following registration, the proprietor has not put the EU trade mark to genuine use in the Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the EU trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use” “genuine use” (“uso real y efectivo”): undetermined concept stated by Courts à typical uses: affix the TM on goods, containers, packaging, labels, etc.; to use it in advertising… According to REUT, the following activities are considered “genuine use” use of the TM in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the TM in the form as used is also registered in the name of the proprietor affixing of the EU trade mark to goods or to the packaging thereof in the Union solely for export purposes 30  4. Rights conferred by a trademark Sanctions for non-use: no legal standing for opposition to registration: art. 47.2 REUT (art. 21.3 and 21.5 LM) the TM can be revoked: art. 58.1.a) REUT (art. 54.1.a) and 57 LM) actions to protect the TM cannot be used: art. 41.2 LM (national law applicable) actions for nullity of a posterior TM are dismissed if use of prior TM is not proved: art. 59.4 and 59.5 LM (national law applicable) 31  4. Rights conferred by a trademark F) Civil actions (national) Art. 17.1 REUT: “infringement of an EU trademark shall be governed by the national law relating to infringement of a national trademark” Art. 123 REUT – EU trademark courts: “1. The Member States shall designate in their territories as limited a number as possible of national courts and tribunals of first and second instance, which shall perform the functions assigned to them by this Regulation” e.g. in Spain, Juzgados mercantiles de Alicante (1st instance) and Audiencia Provincial de Alicante (appeal): arts. 86 bis y 82.4 LOP. Actions: e.g. Spain à art. 40 LM states that the owner of the TM has both civil and criminal actions to defend their right: criminal actions in art. 274 CP (criminal code) civil actions in art. 41.1 LM: 6 possible claims à cessation; compensation for damages; measures to avoid the continuation of an infringement; destruction or transfer of goods for humanitarian purposes; attribution of the property of the goods; publication of the judgment Requirements: To prove that the TM has been genuinely used or that there is reason for the lack of use (art. 41.2 LM) 5 years period to initiate civil actions (art. 45 LM) 32  5. Transfer and Licensing of a trademark A) Transfer Principle of free transfer of the TM: the TM can be transferred separately from any transfer of the undertaking, in respect of some or all the goods or services for which it is registered: 20.1 REUT (art. 46.2 LM) BUT: the transfer of the whole undertaking implies in principle the transfer of the TM, if the contrary is not specified: art. 20.2 REUT (art. 47.1 LM). If the transfer the TM is likely to mislead the public concerning the nature, quality or geographical origin of the goods or services in respect of which it is registered, the Office shall not register the transfer unless the successor agrees to limit registration of the TM to goods or services in respect of which it is not likely to mislead: art. 20.5 and 20.6 REUT (art. 47.2 LM) contain obligations aimed at eliminating this risk of misleading. The transfer shall be made in writing and shall require the signature of the parties to the contract (except when it is a result of a judgment) otherwise it shall be void: art. 20.3 REUT Registration and publication of transfer only upon request of one of the parties: art. 20.4 REUT BUT as long as the transfer has not been entered in the Register, the successor in title may not invoke the rights arising from the registration of the TM (art. 20.11 REUT) 33  5. Transfer and Licensing of a trademark B) Licensing: art. 25 REUT (Art. 48 LM) Types of licenses: Global (for all of the goods or services for which it is registered) or partial (only for some of those goods or services) Exclusive (licenser will not give more licenses) or non-exclusive (licenser may give more licenses) for the whole registered period or for a shorter period for the whole or part of the territory The TM owner may invoke the rights conferred by that TM against a licensee who contravenes any provision in their licensing contract: art. 25.2 REUT The licensee may bring proceedings for infringement of the TM only if the owner consents thereto. However, the holder of an exclusive licence may bring such proceedings if the TM owner, after formal notice, does not himself bring infringement proceedings within an appropriate period: art. 25.3 REUT (art. 48.7 LM) To recover damages, the licensee is entitled to intervene in infringement proceedings brought by the owner: art. 25.4 REUT (art. 48.8 LM) The grant or transfer of a TM licence shall be entered in the Register and published on request of one of the parties: art. 25.5 REUT (procedure: art. 26 REUT) à TM shall have effects vis-à-vis third parties only after registration (art. 27.1 REUT) 34  6. Surrender, revocation and invalidity of a trademark A) Absolute invalidity: art. 59 REUT (art. 51 LM) Grounds: art. 59.1 REUT (art. 51.1 LM) a) TM infringes absolute grounds for refusal: art. 7 REUT (art. 5 LM) b) the applicant was acting in bad faith when he filed the application for the TM Legal standing: besides the OEPM in Spain, any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, Art. 63.1.a) REUT: which, under the terms of the law governing it has the capacity in its own name to sue and be sued Art. 58.1.a) LM: which may be affected, have a subjective right or a legitimate interest 35  6. Surrender, revocation and invalidity of a trademark B) Relative invalidity: art. 60 REUT (art. 52 LM) Grounds: art. 60.1 and 60.2 REUT (art. 52.1 LM) Related to the relative grounds for refusal of a TM: art. 8 REUT (art. 6 to 10 LM) Legal standing: related to owners of prior TM Art. 63.1. b) and c) REUT: persons who could oppose registration of TM due to relative grounds for refusal; owners of the prior rights or persons who are entitled under the law of the Member State concerned to exercise the rights in question. art. 58.b) LM: owners of the prior rights affected by the registration of the TM 36  6. Surrender, revocation and invalidity of a trademark C) Partial invalidity: arts. 59.3 and 60.5 REUT Where the ground for invalidity exists in respect of only some of the goods or services for which the EU TM is registered, the TM shall be declared invalid as regards those goods or services only. Both for absolute and relative invalidity and for Spanish and EU trademarks Art. 59.3 and 60.5 REUT; arts. 51.4 and 52.5 LM. 37  6. Surrender, revocation and invalidity of a trademark D) Proceedings for invalidity: 1) EU (for E.U. TM): proceedings before the EUIPO (art. 63-64 REUT) appeal before the EUIPO and appeal before the ECJ (art. 66 and following REUT) 2) Spain: application before OEPM or civil action in civil (commercial) courts once invalidity is declared, it acquires the authority of a final decision, and the register of the TM is cancelled (art. 61. ter. 5 LM) 38  6. Surrender, revocation and invalidity of a trademark E) Consequences of invalidity: art. 62 REUT (art. 54 LM). Art. 60.2 LM and 62.2 REUT: TM shall be deemed not to have had, as from the outset, the effects specified in LM or REUT In order to preserve legal certainty, this retroactive effect does not affect some legal situations, which have arisen under the presumption of the existence of a valid TM: any decision on infringement which has acquired the authority of a final decision and been enforced prior to the invalidity decision: art. 60.3.a) LM and 62.3.a) REUT any contract concluded prior to the revocation or invalidity decision, in so far as it has been performed before that decision; however, repayment, to an extent justified by the circumstances, of sums paid under the relevant contract, may be claimed on grounds of equity: art. 60.3.b) LM and 62.3.b) REUT 39  6. Revocation, surrender and invalidity of a trademark F) Revocation (caducidad) and surrender (renuncia) In Spain they are regulated together in art 54 to 57 (art. 56 regulates surrender = “renuncia”). Even though they seem 2 separate concepts, they are quite similar since surrender is a case of revocation according to art 54.3.b) LM. REUT regulates surrender in art 57 and revocation in art. 58 Revocation and surrender have no retroactive effects (as opposite to invalidity): the legal effects of the TM disappear from the moment of the revocation’s declaration Partial surrender and revocation are possible both under REUT (art. 58.2) and LM (art. 54.2) Surrender declared to the Office in writing by the TM owner (art.57.2 REUT) ≠ Revocation declared on application to the Office or on the basis of a counterclaim in infringement proceedings based on certain legal causes ex art. 58.1 REUT (next slide) 40  6. Surrender, revocation and invalidity of a trademark Grounds for revocation: lack of genuine use during a continuous 5 years period: art. 58.1.a) REUT (art. 54.1.a) LM) TM has become the common name in the trade for a product or service in respect of which it is registered: art. 58.1.b) REUT (art. 54.1.b) LM) TM is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services: art. 58.1.c) REUT (art. 54.1.c) LM) In Spain, surrender by the owner is a ground for revocation: art. 54.3.b) LM Cancellation (ex officio) of the TM also possible, connected with problems in renewal: art. 53.8 REUT (art. 54.3.a) LM) Where a request for renewal is not submitted or is submitted after the expiry of the period provided (6 months prior to the expiry of registration), or where the fees are not paid or are paid only after the period in question has expired, or where the deficiencies in renewal procedure are not remedied within that period, the Office shall determine that the registration has expired and shall notify the proprietor of the EU trademark accordingly. Where the determination has become final, the Office shall cancel the mark from the register. The cancellation shall take effect from the day following the date on which the existing registration expired. Where the renewal fees have been paid but the registration is not renewed, those fees shall be refunded. 41