Understanding Distinctive Signs and Trademark Rights
Unit 12 – Industrial Property I
Distinctive Signs
Definition and Types
Among the elements that make up the assets of the employer, there is a group of assets that it uses as a marketing tool and differentiation of products or services. Distinctive signs are effective tools and corporate policy requirements and provide a mechanism for consumer protection.
The employer needs to create an image of the company, allowing it to act in the market with potential for success and build a loyal clientele. Accurately identifying the products or services offered by its competitors is essential. The instruments used must enable consumers to differentiate one company from others.
Of this group of assets, the hallmarks of the company (nature intangible assets) stand out, upon which rests an exclusive right. These are assets that belong to their owners, who can use them without restriction, transmit them, and object to their being used by third parties without their authorization.
However, two or more identical signs belonging to different employers can coexist in the market, provided they distinguish or differentiate products or services operating in different business sectors (not posing risks to consumers).
Distinctive signs need not be the result of a creation of the human spirit; all that is required is to have a differentiating force, which serves to distinguish their products.
A broad set of distinctive signs affects either the employer’s products, its very name, or the place or establishment where they are operating. Thus, there are signs that have different functions.
The main signs are:
• Brands.
• Trade names.
• Signs.
• Indications of origin.
• Appellations.
Marks
Definition and Types
Art. 4.1 of the Trademark Act states that a brand is any sign capable of graphic representation which serves to distinguish in the market the goods or services of one company from those of another.
This underlines the distinctive feature or distinctiveness as essential to any brand.
Elements eligible for the sign include:
• Verbal (word/s).
• Graphics or emblematic.
• Letters or numbers, three-dimensional.
• Sound and mixed.
The sign must have an individualizing function used to distinguish the goods from other identical or similar goods.
Kinds of Marks
a) Product and Service Marks: The product mark is used to identify a specific product manufactured by the employer, while the service mark refers to a particular activity.
b) Derivative Mark: The owner of a trademark can apply for a new brand for the same products or services, retaining the same principal distinctive sign while introducing some changes in its secondary elements.
c) Collective Mark: One that serves to distinguish in the market the goods or services of members of an association, which is the owner of the mark, against those of other companies (art. 62).
d) Guarantee Mark: Certifies the common features of the product (quality, origin, etc.) (art. 68).
e) Obvious Mark: Signs that are subject to general public understanding regarding their intended products or services (art. 81).
f) Agent or Representative Mark:
g) International Marks: (art. 81).
h) Community Trade Marks: (art. 84 et seq.).
Rights on the Mark
Acquisition:
The right on the mark is acquired through registration made validly in accordance with the provisions of the Trademark Act.
The registration has constitutive effects and is not merely declarative. Art. 4.1 states that the registration of a trademark confers on its owner the exclusive right to use it in trade. The registration procedure is set out in arts. 11 to 30 PL.
However, the law grants protection to well-known trademarks used even if they are not entered on the register. This means that even when the record becomes the triggering event of the recognition of trademark rights, the LM effectively recognizes some well-known unregistered marks whose protection is uniquely broad and not subject to the principle or rule of specialty.
Content:
The exclusive right conferred by the mark is decomposed into a plurality of powers in favor of the trademark owner (art. 34 LM).
It allows the holder:
• The exclusive right to use the trademark in trade.
• Prohibit unauthorized third parties from using a mark or other sign that may be confused with distinguishing goods or services that are identical or similar.
• Oppose anyone who enrolls in the trademark register a mark that may be confused with that previously registered as a trademark.
• Request invalidation in the courts of other marks registered in that register after theirs, if they consider that there is a likelihood of confusion in the marketplace.
Limits:
The right conferred by registration of the mark does not permit the holder to prohibit third parties from using the same for products marketed in Spain under that mark by the proprietor or with his consent.
The trademark owner may not prohibit the good faith use by a third party in their name and address, indications concerning the kind, quality, or other characteristics of the product or service, or even the use of the mark itself when this is necessary to indicate the destination of a product.
Protection of the Right
The trademark owner may exercise civil and criminal actions:
• In criminal matters, they may bring criminal actions relating to the infringement of rights and industrial property (art. 274 CP).
• In civil matters, they may request:
• Cessation of acts that infringe their rights.
• Compensation for damages (damages and lost profits).
• Adoption of measures necessary to prevent continuation of the violation, particularly the withdrawal from the market of those products.
• Destruction or transfer for humanitarian purposes of these products.
• Publication of the sentence at their cost.
The Mark as Object of Transaction: The Transfer and License
Assignment:
The brand and its application are active business assets with economic evaluations. The right on the mark, as intangible property, can be real and is transferable.
The brand and trademark registration may be surrendered by any means recognized by law. Both the mark and the trademark registration are indivisible.
License:
The trademark owner (licensor) permits another party (licensee) to use the mark for an agreed price. While the transmission of the brand stands for a full transfer of ownership of rights in the mark, the license is simply permission for the trademark owner to allow another party to use the trademark.
• Classes:
• For all or some of the products.
• For all or part of the territory.
• Exclusive or not.
The acts of trademark assignment or license shall only be enforceable against third parties in good faith from registration in the Patent and Trademark Office.
The rights conferred by law to the owner of the mark may be exercised against any licensee who violates the limits set in the agreement (art. 48.2).
The use of the trademark by the licensee must be controlled by the licensor.
Extinction: Invalidity, Revocation, or Surrender
The marks and other distinctive signs of the company have a legal life that may be indefinite.
Although the mark may be terminated for the following reasons:
Nullity:
The statement is made by the courts and considers the effect that the trademark registration was never valid, and therefore reliable:
• Absolute nullity when granted in absolute contravention of the prohibitions or upon request in bad faith.
• Relative nullity having been granted in violation of arts. 6 to 10 LM.
Range:
• Absolute: no deadline.
• Relative: 5 years since the publication of the grant of trademark, unless registration of the mark had been applied for in bad faith, in which case it also has limitations (art. 52.2).
Expiration:
The trademark registration will be canceled when its legal term expires without being renewed in accordance with the provisions of the law. It can also be canceled by surrender of the person concerned. The court may cancel the registration of the mark when it has not been used in the manner provided by law (art. 58), but it may be revoked in part, that is, in relation to those goods or services for which the mark has not been used.