STARBUCKS, trademarks and green circle for cafeteria

11 April, 2019

Filed under: Sin categoría — Admin @ 10:00

The European Union General court TGUE has prohibited a cafeteria’s graphic trademark which is circular, has a musical note in the centre and the words “COFFEE ROCKS” written on it. Because it is similar, mistakable or associable with the STARBUCKS brand. 16th January 2018 judgement: STARBUCKS / EUIPO & Nersesyan, T-398/16.

marca starbucks

The European Union Trademark Regulation prohibits trademarks, for products or similar services to preceding trademarks if it is likely to cause confusion between them. A trademark can be rejected, if the previous brand is renamed and the new brand could benefit from the previous brand.

 

Starbucks opposes the trademark, using their trademarks as a basis for dispute:

 

The question was discussed in the European Union Intellectual Property Office EUIPO, which finally decided that the trademarks were different and could coexist in the market.

 

Starbucks appealed to the General Court. It was decided in the judgement of 16th January 2018 that the brands could not coexist in the market. It states that a joint existence of the two brands in the market could lead to confusion.

 

The overall vision requires evaluating the visual, phonetic and conceptual similarities of both brands, taking into account the general impression and the distinctive elements.

 

According to the General court, the average consumer perceives a brand as a whole; they do not make detailed analyses. Thus, two brands are similar, if they are only partially similar, even if they have distinctive elements, such as “STARBUCKS” and “COFFEE ROCKS”.

 

Both brands contain the word “COFFEE”. Although they may be a “descriptive” word, it is dominant in the overall vision of the brand, which stands out to the consumer.

 

The risk of confusion increases, by the large similarity of the services: cafeterias.

 

According to the General Court, by comparing brands, the words are more distinct than the figurative elements. But there is a high risk of confusion between both “cafeteria” brands for multiple reasons: the general aspect, the link between the trademark’s dominant words “STARBUCKS” and “COFFEE ROCKS” and the use of both brands of the word “coffee”.
Will STARBUCKS end up monopolizing (black) circles for coffee shops?

Santiago Nadal

 


The Fanciful Marks are easy to register.

1 April, 2019

Filed under: Sin categoría — Admin @ 11:28

In doctrine there are various classifications of trademarks that are based on different criteria, some classifications can be given according to the good that the marks distinguish in the market, according to their structure, according to their conceptual content, according to the degree of knowledge they have in the market, among other. We will go on to expose only the one that refers to the conceptual content for the purpose of this work.

 

Brand-types

 

According to the conceptual content or approach to the product, the trademarks are classified into suggestive, arbitrary and fanciful marks. This group of marks, in addition to their conceptual content, which varies according to the type of marks, also tend to be differentiated by the degree of distinctiveness that each one possesses, that is why some authors classify them according to their level of distinctiveness.

 

Suggestive or evocative trademarks

Thus, we have suggestive marks, also called evocative, are signs that indirectly suggest or evoke some idea about the characteristics or properties of the products or services that they intend to distinguish, without actually describing them. Here we can mention for example the mark “Nescafé” to distinguish coffee, the mark “Lavadocil” to distinguish dishwashers or the mark “Cerelac” to distinguish cereals.

 

Both in doctrine and jurisprudence, it is pointed out that the evocative mark is one that brings to the consumer’s memory an idea of ​​the characteristics of the product or service that it is intended to distinguish with it, which means that these types of marks are considered weak marks. Of course, these trademarks do not directly refer to the characteristics or qualities of the product or service, because if this were to occur it would be rather descriptive marks, which would undoubtedly generate its non-registrability for incurring grounds of absolute prohibition.

 

Arbitrary trademarks

On the other hand, arbitrary marks are signs that have a great distinctiveness, but in a lesser extent than fanciful marks. These are signs that have a meaning known to the consumer, but that have no relation to the product or service they distinguish. In this case, the mark “Cielo” could be mentioned as an example to distinguish table and mineral waters. Although the word sky has a meaning known to people, this word is not related to water, product distinguished with the aforementioned mark or as the case of the famous mark “Apple” -whose meaning in English is manzana- that distinguishes computers.

 

Fanciful trademarks 

Finally, fanciful marks are signs created or invented thanks to the ingenuity of their author in order to constitute exclusively a mark. These are extremely original signs, which have no meaning whatsoever and are not related to the product or service that is intended to distinguish with them, such is the case of the famous mark “Kodak” that distinguishes photographic equipment or “Barrington” that distinguishes textiles and textile products. For this reason, both doctrine and jurisprudence allude to the fact that these signs have a high level of distinctiveness.

 

Thus, with regard to this type of trademarks, the Court of Justice of the Andean Community has indicated the following:

 

Words of fantasy are words created by the entrepreneur that may have no meaning but refer to an idea or concept; so are the words with their own meaning that distinguish a product or service without evoking any of its properties. An important feature of this type of marks is that they are highly distinctive (…) original combinations can be created with infinite variants and the result is the birth of new words that contribute to enrich the universe of marks“.

 

Gamboa Vilela holds the following: “Finally, the fanciful signs are those signs ‘created’ or ‘invented’ to function as a mark. They are denominations, figures or any element that lacks meaning for the average consumer. To the extent that they are signs that before their adoption by the applicant did not exist, they do not have any type of link with the product or service for which it is requested, and this makes it a sign with high distinctive aptitude”.

 

It is said that in the case of fanciful marks there is a greater effort of its creator, a true imaginative and creative process that drives him to create a sign that constitutes a mark, so they enjoy a greater distinctive power. Despite the effort of the creator, it will also be difficult to impose the mark on the market so that the consumers can remember it and associate it with the product or service that distinguishes, but the effort will give rewards since once the mark is positioned in the market it will be difficult for the general public not to recognize or remember it because it is original or novel.

 

 

 

 

 

 

Thus, Otamendi points out that “The choice of a mark is not always an easy task and there are companies that, before doing so, analyze the reactions in the public of several alternatives. The choice of a fanciful mark requires efforts to impose it on the market and make the public get used to it, and remember it. The greater the fantasy of the mark, the more difficult it will be to impose it. A word that is used in everyday language will be more easily remembered by the public.

 

However, that which requires the greatest effort will give a better prize. The fanciful mark, for its uniqueness, will generally enjoy a greater distinctive power. It is more likely that the same word with meaning is chosen by different people to distinguish different products than a word of fantasy. Many marks are formed, or contain, the words “Sun”, “Star”, “Lightning”, but there will undoubtedly be many who use in the world marks such as “Lee”, “Lux”, “Pepsi”, “Ford “or” Nestlé “. When we hear these marks we know not only what the product is, but also who its manufacturer is. On the other hand, when we hear the ones mentioned before we are not sure about the product in question because there are several different products from different origins that carry those marks”.

 

For carrying that effort adhered that so much work has cost to its creator and the high distinctive aptitude, is that these marks deserve greater protection than other type of trademarks. Hence, when the comparative examination between signs is performed to determine if they are similar and lead the consumer to confusion, it is that the arbitrary or fantasy character of the sign is taken as a criterion.

 

Article 45 of Legislative Decree No. 1075, states that “for the purposes of establishing whether two signs are similar and capable of causing confusion and error to the consumer, the competent Directorate shall take into account mainly the following criteria:

 

a) The successive appreciation of signs considering their overall appearance and with greater emphasis on similarities than differences;

b) The degree of perception of the average consumer;

c) The nature of the products or services and their form of marketing or provision, respectively;

d) The arbitrary or fantasy character of the sign, its use, advertising and reputation in the market;

e) If the sign is part of a family of trademarks.” (The underlining is ours)

 

 

 

 

 

Now, when fanciful signs are compared or when one of the signs, whether the requested one or the registered one, is of fantasy, it is not possible to compare them at the conceptual level, because the fanciful sign does not have a meaning, so it will be difficult to determine whether it  exists conceptual similarities between signs, for this it will be necessary to use the other criteria such as the phonetic or graphic similarity to determine if they resemble and cause confusion.

 

In this regard, Férnandez Novoa points out the following “whimsical or fanciful word marks have no meaning of their own, hence, by not evoking a given concept in language, conceptual comparison is impossible.”

 

For example, we have the case of the mark ASTROM and logo  , filed by Calderon Velasque, Anderson, of Peru, to distinguish “clothing, pants” of class 25 of the International Classification. This application was opposed by MARATHON CASA DE DEPORTS S.A., of Ecuador for being the owner in Peru of the marks ASTRO and logo (certificate N ° 91379) and ASTRO (certificate N ° 90231), which distinguish products of class 25 of the International Classification.

 

By responding the opposition, the applicant alleges that, from the conceptual point of view, the name ASTRO refers to a celestial body with a defined form, while the term ASTROM, is the last name of a Finnish gospel singer, summarizing that ultimately the signs had different concepts.

 

For its part, the Commission of Distinctive Signs by Resolution No. 0007-2014/CSD-INDECOPI, declared grounded the opposition and consequently denied the registration of the requested sign despite identifying that the marks could not be compared from the conceptual aspect, it was indicated that the same from the phonetic and graphic point of views were similar so they could not coexist in the market without causing confusion.

 

“From the conceptual point of view, the name ASTRO, refers to the concept of a celestial body that populates the sky, while the term ASTROM, will be perceived by the consuming public as an element of fantasy, so it is not possible to determine the existence of conceptual similarity between the signs in conflict. However, this does not detract from the similarity of the aforementioned signs in graphic and phonetic aspect.”

 

 

 

However, there are cases of signs made up of words in a foreign language, these are considered as fanciful signs, if their meaning is not of common knowledge for the consuming public, so they can be registered. But if the meaning of the word or words in a foreign language are of generalized memory or use, they cannot be registered as trademarks, especially if it is related to the product or service that they intend to distinguish.

 

This is how the Court of Justice of the Andean Community established in the process 113-IP-2008 “signs formed by one or more words in a foreign language that are not part of common knowledge are considered as fanciful signs and, consequently, its registration as trademarks is appropriate.

 

These signs will not be registrable if the conceptual meaning of words in a foreign language has been made known to the majority of the consumer or user public, and if in addition, they are generic, descriptive or commonly used terms in relation to the products that it is intended to identify.”

 

According to settled case-law, there are three cases in which a term in a foreign language is considered descriptive: if it is a denomination in a foreign language that has become part of the Spanish language, if it is understood by the public, or its use is necessary in the import or export trade.

 

However, the signs in a foreign language that although they contain terms of common use but that include other elements that give them distinctiveness, may access the registry without problems.

 

 

 

 

Author: Marietta Flores  – IP Lawyer

Law firm: OMC Abogados & Consultores


Trademark cancellaion for lack of use. A strategy not always reliable.

22 January, 2019

Filed under: Sin categoría — Admin @ 19:11

The use of the trademark is the main obligation acquired by the owner, something that is not necessarily fulfilled, especially when the Peruvian Trademark Law, in contrast with the Anglo-Saxon Law, its constituve and obey to the principle of the registration, which means that it is not require that the trademark be in use in order to earn the registration, allowing the economic agents to get the registration of trademarks that have never been or will never be use or will only have a temporary use.

cancelacion de marca por falta de uso

For this reason, in many legislations of the world is regulated the trademark cancellation for lack of use, which will allow that economic agents with real intention of use the trademark to obtain the registration. The cancellation for lack of use is also a means of defense fot oppositions and one of the most used strategies to avoid possible denials for the existence of identical or similar trademarks already registered.

In our legislation, Article 165 of Decision 486, Common Regime on Industrial Property of the Commission of the Andean Community, states that: “at the request of an interested party, the Competent National Office shall cancel the registration of a trademark that, without justified reason , had not been used by its owner, by a licensee or by another person authorized to do so in at least one of the Member Countries, during the three consecutive years preceding the date on which the cancellation action was initiated “(total cancellation) . It also states that “when the lack of use of a trademark only affects one or some of the products or services for which the trademark is registered, a reduction or limitation of the list of products or services included in the registration shall be ordered, eliminating those for which the mark had not been used; for this, the identity or similarity of the products or services must be taken into account. ” (partial cancelation).

It is precisely because of the complexity in the interpretation of the partial cancellation, that the Trademark Office of the National Institute for the Defense of Competition and the Protection of Intellectual Property (INDECOPI) had to issue precedents of mandatory observance, since in this modality not only It will take into account the suitability of proofs of use presented by the owner, but also the identity or similarity of the goods and / or services distinguished.

The first precedent regarding Partial Cancellation, was Resolution No. 1183 -2005 / TPI-INDECOPI, which partially canceled the registration of the Trademark “PETALO”, which distinguished “toilet paper, paper towels, napkins and paper handkerchiefs , cleansing paper, toilet paper and similars and other articles” of class 16 of the International Nice Clasification, limiting it to distinguish only” toilet paper “.

The criteria established by the Office at that time, for the analysis of the identity or similarity of the goods and services were the following:

  • If the use of the trademark is proven for a good or service that was specifically detailed in the list, the registration for that specific good or service will be kept.
  • If the use of the trademark is proven for a good or service that was not specifically detailed in the list, but belongs or is similar to the other goods or services included in a genre that was specifically described in the list, the registration for that genre will be kept.

This precedent was modified by the second and current precedent, which is Resolution No. 2076-2016 / TPI-INDECOPI, which partially canceled the trademark “CORONA”, which distinguished “Exclusively hand tools” of class 08, limiting it to distinguish only “bows for butcher”.

In the first instance, as the owner had demonstrated the use of the trademark for “bows for butcher”, a product that was included in the “hand tools” genre, the cancellation was declared UNGROUNDED . However, the petitioner appealed claiming that as the use of the trademark was only demonstrated for “bows for butcher”, but nor fot hand tools in general, the trademark should be partially cancelled, limiting it to distinguish only that specific good.

This argument, clearly simple but very strong, led the office to add a new criteria since in the practice it had been noted too, that in not all genres  the products or services included are similar. For example, whitin  the products include in the genre of “hand tools” of the class 08, it can be found “nail files”  and “side arms”.

In this regard, the Court established the following:

  • If the use of the trademark is proven for a good or service that was not specifically detailed in the list but is included in a genre that was specifically described in the list, however it is not similar to the other goods of services of that genre, the registration will be kept only for that specific good or service.

This decision was very favorable for the petitioner, who could register in his favor  the  trademark “CORONA” to distinguish “exclusively nail clippers”, of the class 08, which had been denied in the first instance due to the existence of risk of confusion with the registered trademark “CORONA”  that distinguished “only hand tools”, of the class 08.

In the examination of registrability, at first it was determined that besides that the trademarks shared as only relevant denomination the word “CORONA”, which generates phonetic similarity, there was also a link between the products since nail clippers are included in hand tools. However once the trademark was partially canceled and limited distinguish only “arches for butcher”, this link ceased to exist and the applicant was able to obtain in the second instance the registration of the trademark “CORONA” to distinguish “exclusively nail clippers”.

This case make us questioning, is the cancellation the most reliable strategy to obtain the registration of identical or similar trademarks that are already registered on behalf of other owners? Would not this be misleading to consumers? To answer these questions, it is important to point out that our trademark office tends to prevail the rights of the consumers over any other, and that is why the examination of registrability regarding the linking of products or services is very strict, even more if they are in the same class and / or genre. In addition, because of the specialty principle, for which the trademarks only protect those goods or services for which they were registered, the coexistence of identical or similar is posible  as long as there is no link between their goods or services.

For example, in Resolution No. 0007548-2018 / DSD-INDECOPI, issued on May 20, 2018, the application for registration of the trademark “RAE”  to distinguish exclusively “underwear for men, boys, girls and women” of the class 25, was denied due to the existence of trademark “RAE” and device, registered on be half of another owner to distinguish “Only bras” of the class 25.

The registered trademark “RAE” and device, which in the begining distinguished: “clothing, footwear, headgear”, was subject of a cancellation action started  by the applicant almost at the same time of his trademark application, as a strategy to obtain the registration. However, the owner managed to prove the use of his trademark for “bras”, a product that belongs in the genre of “clothing”, therefore the authority in the second instance applied the mentioned precedent and decided to partially cancel the registration, limiting it to distinguish “only bras”.

As we see, unlike the case of the trademark “CORONA” this partial cancellation was not favorable for the applicant, since the products that remained in force were linked to the products of his requested trademark, which is why his application was denied.

In conclusion, although this precedent is debatable, it should not be taken as an incentive for the coexistence of identical and similar trademarks with different owners, which would create a risk of confusion for consumers, but rather as a way of reflecting  a more accurate reality of the use of the  trademark, favoring the fair competition in the market.

Finally, as not all of us have the luck of the applicant of “CORONA”, before starting a cancellation it is always advisable to do market studies of the trademark, because even  though it means extra expenses, in the future it helps us avoid that, like the applicant of  ”RAE”, our strategy turns out a failure.

Author: Kelly Sánchez  – IP Lawyer

Law firm: OMC Abogados & Consultores


Brand types: White brands; luxury brands and premium brands.

5 October, 2018

Filed under: Sin categoría — Admin @ 12:20

The consumer is undoubtedly the most important character when talking about brands and this is because brands exist in the minds of consumers and depends a lot on the idea or concept that they have to be able to choose a brand.

Brand types

It’s necessary to take into account that the consumer’s vision has been changing over time, the demands have been influenced by different factors such as technological evolution, which allows us to have access to the products we love so much by just clicking on a webpage, the current consumer is more carried away by the visual and the attractive, the presentations and colors are important and often the pleasure that can bring the product acquisition or positioning of a brand in the market is greater than the need that can feel the consumer to acquire the product itself or choose a particular brand.

Another factor in the choice of consumers is the price to pay, which in some cases may be higher, however at present the consumer isn’t reluctant to pay a high price in order to have a product or brand that have some popularity and quality.

All the factors detailed above are materialized in three types of brands:

White labels:

White Labels: The white brands made their appearance in the 70’s and had as main objective that can be marketed products that have high quality standards but that its cost is lower than the large brands, thus seeking to generate lower costs in terms of advertising and packaging, it’s for this reason that the designs were quite simple and the color white was the one that prevailed.

Focusing on an exact definition we can say that a white brand is a product brand, usually produced by a distribution chain, supermarket or hypermarket, which use it to be able to market products at more competitive prices than other manufacturers.

The white marks had their beginnings in food products such as milk, rice or legumes and then became part of other products such as hygiene or cleaning.

In modern times the low price is not the main characteristic of the white marks, before the consumer had the idea that the white marks were of worse quality but some now are even more expensive.

The mentioned has been evidenced in the Peruvian market, as Karina Gomez points out, a marketing specialist:

“White-label buyers are thought to be linked to low socioeconomic levels; However, it is the consumers of medium and high socioeconomic levels who concentrate around 40% of the expenditure of this type of products, since they are the ones who go to the supermarkets to make their purchases in Peru.

While the importance of white brands within the basket is still low, we assume that the opening of new stores, the search for lower prices and the development of the modern channel could improve the participation of white brands within the mix of purchase of Peruvian homes. ”

Supermarkets have obtained a leading role in our country in relation to white brands competing with others that seek to gain our preference. Among the most obvious examples are the Plaza Vea supermarkets, which have the BELLS brand for basic food products such as sugar, rice, oils, among others, the FLORENCIA brand for cold meats and ice cream and BOREAL for items related to cleaning products.

On the other hand, in the case of Metro and Tottus supermarkets, their brands usually refer to the name of the stores

Luxury Brands

Luxury Brands: Luxury brands are synonymous of exclusivity, which is why they have a loyal consumer audience, which stands out in luxury brands more than the price is the status and have as main objective to obtain select sales, more than looking for the quantity of sales, these brands point to the excellence in the finishing of the products and in using the best tools to obtain the best results. Originality is a constant within luxury brands, which seek to be transcendent and iconic.

Initially luxury brands were immediately related to the logo, however today there has been a variation because the abundance of logos is not the determining factor of a luxury brand, although it is true the logos are part important in the case of luxury brands, there is a greater focus on other determining factors such as differentiation and exclusivity.

According to the researches of professors Klaus Heiner, Michel Han and Glyn Atwal, luxury brands should have as their main characteristics authenticity and prestige, the aforementioned authors point out that there are different types of authenticity, one of them is called authenticity Pure and is related to brands that have a remarkable transcendence in the market, a clear example of this are the brands of recognized designers such as GUCCI, LOUS VUITTON or CHANEL, which include historical facts in their brands due to not only include related information with the date and place where they were created but also refer to the name and history of its founders. Likewise, the aforementioned authors acknowledge that the use of the image of different personalities related to brands has been used as a strategy to increase the authenticity, which they have denominated as the principle of contiguity; this principle is related to the stimuli:

The stimuli that have contiguity with others are experienced as a perceptive unit. This principle is also known as the principle of common grouping.

A characteristic feature of authenticity is to provide consumers with detailed information that includes data on the place, time and the person who made the products, which is why the sellers of these brands have extensive knowledge about the products they offer, thus convincing the public consumer of the values ​​and characteristics that grant exclusivity to the brand and the product.

Another important element besides the authenticity is the prestige, this element goes hand in hand with the status and the social power, according to the professors Heiner, Han and Atwal there are diverse aspects that determine the perception of the prestige such as the occupation, education, income, possessions, and lifestyle.

Both Heiner and the other authors agree that luxury brands represent the desire to belong to a higher class, many of the luxury brands also seek to collaborate with each other as this generates greater credibility.

Luxury brands are not only focused on seeking a social positioning but their value transcends the monetary and focuses on an increase in the quality of life.

The British researchers Ian Yeoman and Una McMahon-Beattie develop in their article “Luxury markets and premium pricing” the different factors that motivate luxury among which stand out: (i) increase in money for free disposal, which doubled since the decade from the eighties; (ii) accumulated capital growth; (iii) increase in the level of education of the population; (iv) low interest rates; (v) consumers who make more trips, open to the world and with more experiences; (vi) more inspired and demanding consumers of a lifestyle for leisure time; and (vii) cultural change towards individualism and the willingness to do new things.

It is important to emphasize that for consumers to continue to familiarize themselves with luxury brands, they must be more accessible, so many luxury brands present different options in terms of prices, so we have the case of Mercedes Benz that developed a more basic line called A-Class and in parallel a line that represents one of the most expensive cars in the world such as the Mercedes Brabus.

Luxury brands are aimed at the public not only to those who will be consumers but also to non-consumers, this is essential because luxury brands seek to be recognized for their prestige and quality so that all they can know it but not necessarily everyone can buy products related to these brands.

Premium brands

Premium Brands: Premium brands are those whose price is higher in the market, however they are available to consumers, one of their objectives is that these products can be sold in bulk, it’s for this reason that brands Premium are in the expectation of what other brands do against those that compete and cares enough for the tastes and needs of the consumer public, which did not happen in the case of luxury brands because as we pointed out they seek excellence above all and serve as models and inspiration by being original, without worrying about what is happening around them.

Unlike the luxury brands developed above, premium brands use expensive quality tools but do not tend to use very exclusive materials or whose costs are excessive, being that the consumer of these products can be anyone.

It is necessary to bear in mind that consumers of premium brand products won’t have problems paying a higher price because they will obtain a better performance and functionality of the product they’re acquiring, this doesn’t happen in the case of luxury brands, since their products are acquired without thinking about the performance and there’s no link between the high price and its functionality.

An example of a premium brand is the Australian brand MJ BALE, which has created a collection called Tech-Tailoring, which is characterized by offering products of technological tailoring, these suits repel water and absorb moisture thanks to its raw material, merino’s wool, these suits are characterized by delaying the appearance of odors by their natural antimicrobial property, protecting against UV rays by their keratin and repelling dirt and dust. This brand is a clear example of a premium brand, its cost may be high, however it differs from a suit related to a luxury brand like GUCCI because it has a special performance or utility that differentiates it from other brands.

Another example of premium brand is in the automotive sector, such is the case of the brands VOLVO, TOYOTA, CHEVROLET, these brand are sold in greater quantity, unlike luxury brands such as Porsche or Ferrari, whose production to less than 6,000 cars every year.

The PREMIUM marks are not only implicitly recognized taking into account the aforementioned characteristics, but also there are different brands that explicitly include this term within their denominations and that are considered descriptive, thus forming part of the common language.

In Peru, there are different resolutions that refer to the aforementioned:

- A special case: descriptive denominations in a foreign language

In the case of descriptive denominations in a foreign language, they will be treated as denominations in Spanish, depending on the degree of knowledge of their meaning or the need for their use by competitors so that they can compete freely in the market. In this regard, the Chamber warns the following cases:

Words that have entered the common language of the country to describe a specific product, service or activity, such as: light, premium, small, medium, large, extra-large, delivery, fashion. (…)

In this sense, a foreign language term can be considered descriptive in the following cases: if it is a denomination in a foreign language that has become part of the Spanish language, if it is understood by the public, or its use is necessary in the Import or export trade.

On the other hand, the trademark authority in Peru recognizes the term PREMIUM as a generic denomination and highlights the quality to which it refers with respect to the distinguished products:

Before carrying out the comparative examination, it is noted that the DENIM denomination that forms part of the requested sign constitutes a term in English that translated into the Spanish language means mezclilla, which is a strong fabric that is used in the making of pants, hats, uniforms, bedspreads, tapestries and sportswear. Likewise, the PREMIUM denomination constitutes a denomination used to highlight or indicate that a product or service has a quality above the average. In view of the above, it is noted that the name PREMIUM DENIM refers to the products made with the aforementioned material are of a superior quality, resulting in a generic name laudatoria, which is why it will not be taken into account in the comparative examination.

We can conclude that Premium brands and luxury brands are the new protagonists considering the factors that take into account the consumer’s opinion when choosing a product, which development – as seen in this article – has evolved, generating greater requirements.

 

Author: Evelyn Dueñas – IP Lawyer

Law firm: OMC Abogados & Consultores


Renew a trademark in Spain

7 August, 2018

Filed under: Sin categoría — Admin @ 9:56

In this article we will answer the main questions regarding the renewal of a trademark in Spain. The registration of a trademark in Spain offers a right to exclusive use of the registered trademark for a period of 10 years. To extend this right, the owner must renew the trademark in Spain within the period established for it.

renew a trademark in Spain

The registration of a trademark in Spain has a series of peculiarities that must be known in order not to commit formal or substantive errors that cause a loss of money and time. It is common that individuals, without the help of a professional in the trademark registration in Spain, receive suspensions from the Spanish Trademark Office. These suspensions delay the granting of a trademark or even prevent it. In this post we will give a series of recommendations to avoid receiving suspensions during the processing of a trademark in Spain.

 

When to renew a trademark in Spain 

Trademarks in Spain must be renewed after 10 years from the date of application (expiration date). They can be renewed from 6 months before the expiration date to 6 months later. In case of paying later, a surcharge must be paid.   renewal of a trademark

Trademark renewal in Spain

 

Who can renew a trademark in Spain

The trademark law in Spainonly allows the renewal of a trademark whose holder is not a national of Spainthrough the services of an official trademark agent.

 

How much does it cost to renew a trademark in Spain?

The price of the renewal of a trademark in Spaindepends on the registered trademark. It should be remembered here that a trademark can be renewed partially so that, for example, a trademark registered for three classes can be renewed exclusively for one. The price of a renovation of a trademark in Spainfor a class is approximately 500-700 €.

 

How to register a trademark in Spain

You can get protection of a trademark in Spain through the following channels.

 

  • Registration of a trademark in Spain directly in the Trademark Office of Spain.
  • Registration of a trademark in Spain through the European Union trademark.
  • Registration of a trademark in Spain through the International trademark.

 

In this post we will focus on explaining how to register a trademark in Spain directly in the Spanish Trademark Office.

 

What can be registered as a trademark in Spain

In Spain you can register as a mark a sign (name, logo, shape, …) that is distinctive and that can be represented graphically. A sign is distinctive when it allows the product or service that identifies with it to be distinguished from others. It can not be a usual sign or a too complicated sign since in these cases it is not possible to distinguish the product that uses it from the others.

 

Registration procedure for a trademark in Spain

The process of registering a trademark in Spainincludes the following steps:   registration of a trademark in Spain   Before applying for a trademark in Spain, it is advisable to contract a preliminary report to determine if this trademark may or may not be registered in Spain.   If the previous report is positive then you can apply for the trademark before the Trademark Office in Spain.   Exam to get an application date. This preliminary examination is important because it grants the date of application and therefore the beginning of the rights granted by the trademark in Spain.   Formal examination to evaluate if the trademark in Spain complies with the different formal requirements required by the law of Spain trademarks. As a peculiarity, in Spain the Spanish Trademark Office performs a substantive examination where it evaluates whether the trademark requested conflicts with one of the previously registered trademarks. In the event that the trademark application does not pass this formal / substantive examination, it will receive a formal / substantive suspension of the trademark application that must be answered in order for the trademark registration to continue. In case of not answering the mark will be denied.   If the trademark in Spain passes the formal and substantive examination, the Spainish Trademark Office grants the trademark application in Spain .

trademark application in Spain

 

 

How to know if a trademark is already registered in Spain

 

Before applying for a trademark in Spain, it is very interesting to know if the trademark we intend to register is already registered in Spain . If so, it is very likely that our trademark is not granted and we have lost money and time. There is a trademark search engine in Spain that can be used to know if the trademark exists identically. We must remember here that not only the identical trademarks but also the similar ones can be a problem when registering a trademark in Spain v. To know all the trademarks that may be a problem, the professionals in the registration of a trademark in Spain  offer the service of report prior to the registration of a trademark in Spain .

 

How much it costs to register a trademark in Spain

The price of registering a trademark in Spaindepends on the products and services that you wish to protect. Products and services are classified into classes and the price of registering a trademark in Spain depends on the number of classes that are requested.

In addition, the registration price of a trademark in Spaincan be increased if the trademark application receives a substantive or third party opposition. To know the exact price of the registration of a specific trademark  in Spain you can send us an email to info@patentes-y-marcas.com

 

How long it takes the registration of a trademark in Spain

The registration of a trademark in Spain takes approximately 2 weeks. Logically, if the application for registration receives a formal suspension or an opposition, the registration of a trademark takes a few more months.

 

How long is the registration of a trademark in Spain

The registration of a trademark in Spainoffers 10 years of protection in Spain from the date of application. When these years come to an end, the trademark can be renewed to extend the protection 10 more.

 

Where to register a trademark in Spain

The registration of a trademark in Spaincan be done directly before the Trademark Office of Spain . However, there are some requirements that applicants must meet, a fact that makes it difficult for an applicant to register a trademark in Spain . For this reason there are specialized professionals in the registration of a trademark in Spain that helps applicants to apply for their trademark efficiently.

 

Spanish trademark office

 

Trademark watch in Spain

The SpainTrademark Office does not offer active protection of trademarks. They must be the owners of the trademarks in Spain who carry out an active surveillance of their registered trademarks. There are companies specialized in trademark surveillance in Spain . The watch service of a trademark in Spain consists of notifying the owner of the monitored trademark of each trademark application in Spain that may violate their rights.

 

Expand the protection of a trademark in Spain to other countries

The registration of a trademark offers territorial rights so if the trademark is not registered in a specific country, a third party can use it and even register it in their name. If you have the trademark registration in Spain, you could not use your trademark in the country where a third party registered the trademark in your name.

The trademark law allows the protection of a trademark in Spain to be extended to other countries, maintaining the priority date for 6 months from the date of application for the trademark in Spain. In other words, if the trademark is requested in another country, claiming priority, the trademark rights in that country will exist from the moment the trademark is requested in Spain. Subsequently, the protection may also be extended, but the trademark rights in the country where it was expanded will only exist from the moment the trademark has been applied for in that country. Remember that the application date marks the beginning of the trademark rights and therefore in case of conflict, the first one who requests the registration of your trademark wins.

 

Lawyer specialized in the registration of a trademark in Spain

 

On this website there is a directory of lawyers specialized in the registration of a trademark in Spain. Thanks to this directory, anyone can find the professional that best suits them.


Renew a trademark in Andorra

6 August, 2018

Filed under: Sin categoría — Admin @ 17:45

In this article we will answer the main questions regarding the renewal of a trademark in Andorra. The registration of a trademark in Andorra offers a right to exclusive use of the registered trademark for a period of 10 years. To extend this right, the owner must renew the trademark in Andorra within the period established for it. renew-trademark-andorra The registration of a trademark in Andorra has a series of peculiarities that must be known in order not to commit formal or substantive errors that cause a loss of money and time. It is common that individuals, without the help of a professional in the trademark registration in Andorra, receive suspensions from the Andorra Trademark Office. These suspensions delay the granting of a trademark or even prevent it. In this post we will give a series of recommendations to avoid receiving suspensions during the processing of a trademark in Andorra.

 

When to renew a trademark in Andorra

Trademarks in Andorra must be renewed after 10 years from the date of application (expiration date). They can be renewed from 6 months before the expiration date to 6 months later. In case of paying later, a surcharge must be paid.   renewal of a trademark

trademark renewal in andorra

 

Who can renew a trademark in Andorra

The trademark law in Andorra only allows the renewal of a trademark whose holder is not a national of Andorra through the services of an official trademark agent.

 

How much does it cost to renew a trademark in Andorra?

The price of the renewal of a trademark in Andorra depends on the registered trademark. It should be remembered here that a trademark can be renewed partially so that, for example, a trademark registered for three classes can be renewed exclusively for one. The price of a renovation of a trademark in Andorra for a class is approximately 500-700 €.

 

How to register a trademark in Andorra

You can get protection of a trademark in Andorra through the following channels.   Registration of a trademark in Andorra directly in the Trademark Office of Andorra   In this post we will focus on explaining how to register a trademark in Andorra directly in the Andorra Trademark Office.

 

What can be registered as a trademark in Andorra

In Andorra you can register as a mark a sign (name, logo, shape, …) that is distinctive and that can be represented graphically. A sign is distinctive when it allows the product or service that identifies with it to be distinguished from others. It can not be a usual sign or a too complicated sign since in these cases it is not possible to distinguish the product that uses it from the others.

 

Registration procedure for a trademark in Andorra

The process of registering a trademark in Andorra includes the following steps:   registration of a trademark in andorra   Before applying for a trademark in Andorra, it is advisable to contract a preliminary report to determine if this trademark may or may not be registered in Andorra.   If the previous report is positive then you can apply for the trademark before the Trademark Office in Andorra.   Exam to get an application date. This preliminary examination is important because it grants the date of application and therefore the beginning of the rights granted by the trademark in Andorra.   Formal examination to evaluate if the trademark in Andorra complies with the different formal requirements required by the law of Andorra trademarks. As a peculiarity, in Andorra the Andorran Trademark Office performs a substantive examination where it evaluates whether the trademark requested conflicts with one of the previously registered trademarks. In the event that the trademark application does not pass this formal / substantive examination, it will receive a formal / substantive suspension of the trademark application that must be answered in order for the trademark registration to continue. In case of not answering the mark will be denied.   If the trademark in Andorra passes the formal and substantive examination, the Andorra Trademark Office grants the trademark application in Andorra.

Trademark-application-in-Andorra

 

 

 

How to know if a trademark is already registered in Andorra

 

Before applying for a trademark in Andorra, it is very interesting to know if the trademark we intend to register is already registered in Andorra. If so, it is very likely that our trademark is not granted and we have lost money and time. There is a trademark search engine in Andorra that can be used to know if the trademark exists identically. We must remember here that not only the identical trademarks but also the similar ones can be a problem when registering a trademark in Andorra. To know all the trademarks that may be a problem, the professionals in the registration of a trademark in Andorra offer the service of report prior to the registration of a trademark in Andorra.

 

How much it costs to register a trademark in Andorra

The price of registering a trademark in Andorra depends on the products and services that you wish to protect. Products and services are classified into classes and the price of registering a trademark in Andorra depends on the number of classes that are requested.

In addition, the registration price of a trademark in Andorra can be increased if the trademark application receives a substantive or third party opposition. To know the exact price of the registration of a specific trademark  in Andorra you can send us an email to info@patentes-y-marcas.com

 

How long it takes the registration of a trademark in Andorra

The registration of a trademark in Andorra takes approximately 2 weeks. Logically, if the application for registration receives a formal suspension or an opposition, the registration of a trademark takes a few more months.

 

How long is the registration of a trademark in Andorra

The registration of a trademark in Andorra offers 10 years of protection in Andorra from the date of application. When these years come to an end, the trademark can be renewed to extend the protection 10 more.

 

Where to register a trademark in Andorra

The registration of a trademark in Andorra can be done directly before the Trademark Office of Andorra. However, there are some requirements that applicants must meet, a fact that makes it difficult for an applicant to register a trademark in Andorra. For this reason there are specialized professionals in the registration of a trademark in Andorra that helps applicants to apply for their trademark efficiently.

 

logo bueno

 

Trademark watch in Andorra

The Andorra Trademark Office does not offer active protection of trademarks. They must be the owners of the trademarks in Andorra who carry out an active surveillance of their registered trademarks. There are companies specialized in trademark surveillance in Andorra. The watch service of a trademark in Andorra consists of notifying the owner of the monitored trademark of each trademark application in Andorra that may violate their rights.

 

Expand the protection of a trademark in Andorra to other countries

The registration of a trademark offers territorial rights so if the trademark is not registered in a specific country, a third party can use it and even register it in their name. If you have the trademark registration in Andorra, you could not use your trademark in the country where a third party registered the trademark in your name.

The trademark law allows the protection of a trademark in Andorra to be extended to other countries, maintaining the priority date for 6 months from the date of application for the trademark in Andorra. In other words, if the trademark is requested in another country, claiming priority, the trademark rights in that country will exist from the moment the trademark is requested in Andorra. Subsequently, the protection may also be extended, but the trademark rights in the country where it was expanded will only exist from the moment the trademark has been applied for in that country. Remember that the application date marks the beginning of the trademark rights and therefore in case of conflict, the first one who requests the registration of your trademark wins.

 

Lawyer specialized in the registration of a trademark in Andorra

 

On this website there is a directory of lawyers specialized in the registration of a trademark in Andorra. Thanks to this directory, anyone can find the professional that best suits them.


Pharmaceutical Trademarks. Use of common terms

3 August, 2018

Filed under: Sin categoría — Admin @ 13:47

It is usual that pharmaceutical trademarks contain commonly used terms, so they are formed by the combination of elements such as prefixes, suffixes or commonly used words that evoke somehow an idea about the properties of the product, its active principles, and its therapeutic function. They also may refer to a component of the medicine or the organ for which they are prescribed.

Pharmaceutical-trademarks

Terms are considered commonly used for two reasons: either for being part of the several marks or for being evocative of the product or any of its features. By common usage anyone is free to include them in a mark, provided that it is not confused with other marks of other owners.

For example, a prefix commonly used in Class 5 is the prefix CORTI that evoke the active substance corticosteroid or the word “cortisone”. The prefix CORTI is present in the formation of numerous registered trademarks owned by different owners, such as: CORTIFLEX, CORTIDERM 10, CORTIMED, CORTICREM, CORTIFENOL, etc.

The Court of Justice of the Andean Community has established in a precedent that the prefixes, suffixes, roots or endings commonly used in the marks cannot be subject to monopoly or exclusive use of a single person since they are usual words which use by the general public can’t be prohibited.

Usually it is argued that because the signs identify products that directly affect health and have consequences on the human body, the consumer will have a higher level of attention and special care when purchasing the pharmaceutical products. This has been recognized in diverse jurisprudence of INDECOPI where stated that “in the case of pharmaceuticals referred to the signs in question, it is reasonable to assume that the consumer, when purchasing such products, would make a close examination based on their needs “.

However this is not enough to dismiss the risk of confusion because in the pharmaceutical trademarks that share commonly used terms, whose names could prove to be very similar, the consumers themselves might be induced to confusion, i.e., it may acquire a product in the belief that it is purchasing another, which is known as direct confusion or might think that the product has a distinct commercial origin tan the real one, what is called indirect confusion.

It is therefore very important that pharmaceutical trademarks have additional elements added to the common term, whether figurative or verbal, with sufficient distinctiveness to identify and distinguish the commercial origin of the product to avoid the risk of confusion, as also prevent the sign to become descriptive because that would make it to not distinctive and therefore in consideration of the prohibition of registration of the Article 135 subparagraph e) of Decision 486 from the Andean Community which would make impossible their protection.

Authors: Marietta Flores / Kelly Sánchez – Ip specialists

IPfirm: OMC Abogados & Consultores


Trademark in Andorra

5 July, 2018

Filed under: Sin categoría — Admin @ 12:09

In this article we will answer the main questions related to the registration of a trademark in Andorra. The registration of a trademark in Andorra offers a right of exclusive use of the registered trademark so that the owner of a trademark can prevent third parties from using the trademark without their permission. If someone uses the trademark without your permission you can ask for damages for the infringement of your trademark right.

 

Trademark in Andorra

The registration of a trademark in Andorra has a series of peculiarities that must be known in order not to commit formal or substantive errors that cause a loss of money and time. It is common that individuals, without the help of a professional in the trademark registration in Andorra, receive suspensions from the Andorra Trademark Office. These suspensions delay the granting of a trademark or even prevent it. In this post we will give a series of recommendations to avoid receiving suspensions during the processing of a trademarkin Andorra

 

How to register a trademark in Andorra

You can get protection of a trademark in Andorra through the following channels.

Registration of a trademark in Andorra directly in the Trademark Office of Andorra

In this post we will focus on explaining how to register a trademark in Andorra directly in the Andorra Trademark Office.

 

What can be registered as a trademark in Andorra

In Andorra you can register as a mark a sign (name, logo, shape, …) that is distinctive and that can be represented graphically. A sign is distinctive when it allows the product or service that identifies with it to be distinguished from others. It can not be a usual sign or a too complicated sign since in these cases it is not possible to distinguish the product that uses it from the others.

 

Registration procedure for a trademark in Andorra

The process of registering a trademark in Andorra includes the following steps:

Trademark application in Andorra

Before applying for a trademark in Andorra, it is advisable to contract a preliminary report to determine if this trademark may or may not be registered in Andorra.

If the previous report is positive then you can apply for the trademark before the Trademark Office in Andorra.

Formal examination to evaluate if the trademark in Andorra complies with the different formal requirements required by the law of Andorra trademarks. As a peculiarity, in Andorra the Andorran Trademark Office performs a substantive examination where it evaluates whether the trademark requested conflicts with one of the previously registered trademarks. In the event that the trademark application does not pass this formal / substantive examination, it will receive a formal / substantive suspension of the trademark application that must be answered in order for the trademark registration to continue. In case of not answering the mark will be denied.

If the trademark in Andorra passes the formal and substantive examination, the Andorra Trademark Office grants the trademark application in Andorra.

 

How to know if a trademark is already registered in Andorra

Before applying for a trademark in Andorra, it is very interesting to know if the trademark we intend to register is already registered in Andorra. If so, it is very likely that our trademark  is not granted and we have lost money and time. There is a trademark  search engine in Andorra that can be used to know if the trademark exists identically. We must remember here that not only the identical trademarks but also the similar ones can be a problem when registering a trademark in Andorra. To know all the trademarks that may be a problem, the professionals in the registration of a trademark in Andorra offer the service of report prior to the registration of a trademark in Andorra.

 

How much it costs to register a trademark in Andorra

The price of registering a trademark in Andorra depends on the products and services that you wish to protect. Products and services are classified into classes and the price of registering a trademark in Andorra depends on the number of classes that are requested.

In addition, the registration price of a trademark in Andorra can be increased if the trademark application receives a substantive or third party opposition. To know the exact price of the registration of a specific trademark  in Andorra you can send us an email to info@patentes-y-marcas.com

 

How long it takes the registration of a trademark in Andorra

The registration of a trademark in Andorra takes approximately 2 weeks. Logically, if the application for registration receives a formal suspension or an opposition, the registration of a trademark takes a few more months.

 

How long is the registration of a trademark in Andorra

The registration of a trademark in Andorra offers 10 years of protection in Andorra from the date of application. When these years come to an end, the trademark can be renewed to extend the protection 10 more.

 

Where to register a trademark in Andorra

The registration of a trademark in Andorra can be done directly before the Trademark Office of Andorra. However, there are some requirements that applicants must meet, a fact that makes it difficult for an applicant to register a trademark in Andorra. For this reason there are specialized professionals in the registration of a trademark in Andorra that helps applicants to apply for their trademark efficiently.

 

logo bueno

 

Trademark watch in Andorra

The Andorra Trademark Office does not offer active protection of trademarks. They must be the owners of the trademarks in Andorra who carry out an active surveillance of their registered trademarks. There are companies specialized in trademark surveillance in Andorra. The watch service of a trademark in Andorra consists of notifying the owner of the monitored trademark of each trademark application in Andorra that may violate their rights.

 

Expand the protection of a trademark in Andorra to other countries

The registration of a trademark offers territorial rights so if the trademark is not registered in a specific country, a third party can use it and even register it in their name. If you have the trademark registration in Andorra, you could not use your trademark in the country where a third party registered the trademark in your name.

The trademark law allows the protection of a trademark in Andorra to be extended to other countries, maintaining the priority date for 6 months from the date of application for the trademark in Andorra. In other words, if the trademark is requested in another country, claiming priority, the trademark rights in that country will exist from the moment the trademark is requested in Andorra. Subsequently, the protection may also be extended, but the trademark rights in the country where it was expanded will only exist from the moment the trademark has been applied for in that country. Remember that the application date marks the beginning of the trademark rights and therefore in case of conflict, the first one who requests the registration of your trademark wins.

 

Renew a trademark in Andorra

 

The trademarks in Andorra must be renewed after 10 years from the date of application. The renewal can be done after the end of that period, during the following 6 months. The late renewal of the trademark in Andorra has an additional cost.

 

How much does it cost to renew a trademark in Andorra?

The price of the renewal of a trademark in Andorra depends on the registered trademark. It should be remembered here that a trademark can be renewed partially so that, for example, a trademark registered for three classes can be renewed exclusively for one.

 

 

Lawyer specialized in the registration of a trademark in Andorra

 

On this website there is a directory of lawyers specialized in the registration of a trademark in Andorra. Thanks to this directory, anyone can find the professional that best suits them.


How to know if a trademark is registered in Cambodia?

9 September, 2016

Filed under: Trademarks — Admin @ 14:41

Before applying for a trademark in Cambodia you should check if that trademark is already registered in this country. In www.Patentes-y-Marcas.com we offer a direct link to the official Trademark Search in Cambodia. The use is free. However, remember that the results offered by the search engine only include identical marks, so similar trademarks to which you wish to register do not appear in the results. These similar trademarks are also an impediment to the registration of your trademark so we recommend you to hire professional services to perform a complete trademark search before applying for registration of your trademark in Cambodia.

registro de marca en Camboya

 

If you wish to register a trademark in Cambodia, is also advisable to hire the services of a professional who not only does the trademark application correctly but also offers a surveillance service.


How to know if a trademark is registered in Brunei?

Filed under: Trademarks — Admin @ 14:25

Before applying for a trademark in Brunei you should check if that trademark is already registered in this country. In www.Patentes-y-Marcas.com we offer a direct link to the official Trademark Search in Brunei. The use is free. However, remember that the results offered by the search engine only include identical marks, so similar trademarks to which you wish to register do not appear in the results. These similar trademarks are also an impediment to the registration of your trademark so we recommend you to hire professional services to perform a complete trademark search before applying for registration of your trademark in Brunei.

bandera brunei

If you wish to register a trademark in Brunei, is also advisable to hire the services of a professional who not only does the trademark application correctly but also offers a surveillance service.


Older Posts »

Faq

Contactanos

FAQ - BLOG DE PATENTES Y MARCAS

FAQ - BLOG DE PATENTES Y MARCAS

¿Qué es el blog de patentes y marcas?

El blog de patentes y marcas es un blog dedicado exclusivamente a la propiedad industrial e intelectual comprendiendo el registro de marcas, el registro de patentes, el registro de modelos de utilidad, el registro de diseños industriales, el registro de dominios de internet, el registro de propiedad intelectual.

¿Qué se escribe en el blog de patentes y marcas?

En el blog de patentes y marcas se escribe sobre casos curiosos, noticias de actualidad, registros controvertidos, sentencias singulares, novedades legales y siempre en el lenguaje más claro y entendedor.

¿Quién escribe el blog de patentes y marcas?

El redactor del blog de patentes y marcas es un ingeniero industrial especializado desde muy temprano en el mundo de las patentes y marcas. Actualmente está cursando los estudios de derechos dirigidos a complementar su formación. El redactor del blog de patentes y marcas trabaja desde hace 8 años en una agencia de propiedad industrial, y está especializado en el registro y control de patentes y modelos de utilidad tanto a nivel español como internacional. Conoce bien la legislación de patentes y marcas y está preparado para contestar y comentar cualquier consulta.

¿Se pueden realizar comentarios en el blog de patentes y marcas?

Justamente el objetivo del blog de patentes y marcas es crear debate y comentarios sobre los artículos (posts) publicados. En este sentido, los comentarios serán bienvenidos.

¿Cómo está organizado el blog de patentes y marcas?

El blog de patentes y marcas, está organizado según la materia tratada en el post. De este modo se pueden filtrar los artículos según si estos son relativos a patentes, a marcas, a diseños industriales, …

¿Cómo puedo encontrar la información que busco en el blog de patentes y marcas?

El blog de patentes y marcas dispone de un filtro según las materias tratadas en los artículos según si estos son relativos a patentes, a marcas, a diseños industriales, … El blog de patentes y  marcas también dispone de un buscador de palabras.