Interview with Mariola Caballero

We have interviewed Mariola Caballero, Attorney at Law and Deputy Director of the Trademark Department to clarify some of the most common questions raised by our clients concerning the protection of protecting your brand online and on social networks.

Does the domain name reservation provide some protection on the brand?

Registering a domain name does not automatically grants the holder a right to protect a brand with the same denomination, as in the trademark field governed by the principle of "first right basis", ie, the first recording, is the first you have the right.

That is why our recommendation is to apply for trademark protection and domain name simultaneously.

How can I protect my brand to make safely use of it in social networks and the Internet?

It is important that the brand is properly protected for products and / or services marketed by its owner, as well as in the territory of interest.

In this case, if the activity carried out in social networks corresponds to the scope of protection of the brand, to any disagreement that may arise, the owner of the mark will have tools to defend legitimate its use and pursue uses from third parties that may be considered illegitimate.

Can a Twitter or Facebook profile be disabled?

In the event that a profile of any social network is used so that impersonates the legitimate owner, perform competition mediating unfair advantage of its reputation and / or brand that is used so as to generate discredit the owner of the trademark, among others, may initiate action for the termination of such use and for the eventual elimination of the social profile itself.

If I have an application (APP), Should I apply for protection of my mark for that APP?

Indeed, it is highly recommended protecting the graphics of the application as a trademark, in order to be the only owner that can use the sign and prevent the use of unauthorized third parties of the same or similar.

Regardless of the above, depending on the technical features and functionality of the APP, it could also be considered the protection of other industrial property rights, such as Patents or Utility Models.

If I detect any fraudulent use of my trademark on the Internet, how do I proceed? Do I need a lawyer?

When there is evidence that a third party is using someone else's trademark in an unauthorized manner, before any action, our recommendation is to collect the largest possible number of evidence to facilitate the accreditation of the possible infringement.

Casuistry conflict and problems on the Internet is very diverse and, arguably, every day there are more specialized partners in abuses and usurpations use of foreign brands.

That is why, although in certain instances hiring a lawyer is not mandatory, we strongly recommend you consult a specialist in the field to advise you on the best strategy to follow in each case.

The China Trademark Office is creating a database in collaboration with the Administration of Industry and Commerce of China to establish joint mechanisms in the fight against piracy and counterfeiting in this country.

Therefore, the Administration for Industry and Commerce, when in their daily work of market inspection to detect potential counterfeit products may contact the trademark owners (if you domiciled in China) or with their representatives to communicate in a flexible and effective possible violations.

Should be of your interest to enroll in this database, we appreciate if you confirm us before the day 18 July 2016. Processing and enrolling in this system will have no associated cost. Later if any counterfeit was detected and you would like to initiate any action, we would provide you with an appropriate budget.

We hope that this system is useful and allows to carry out an effective fight against counterfeiting.  For this reason, we highly recommend to register in order to expand the possible measures to protect your brands in a country where exists a high number of trademark conflicts and counterfeiting.