ENTRY INTO FORCE OF THE EUROPEAN GENERAL DATA PROTECTION REGULATION (GDPR)

27.03.2018

On May 25, 2018, the General European Data Protection Regulation (RGPD) will enter into force, regulating the collection, storage and processing of personal data. This regulation is mandatory for companies, professionals and individuals who manage data from third parties, whether customers, employees, suppliers, etc..

Some of the main novelties introduced by these regulations are that tacit consent is not permitted in obtaining data and that, at the time of collection, the purpose for which they will be used must be expressly indicated. Likewise, the figure of the Data Protection Delegate is also introduced. 

Therefore, it would be a good idea to check whether your protocols meet the new requirements. It is possible that if your company was already complying with the previous regulations, only a few adaptations may be necessary, without having to make a full data protection implementation, although the specific case would have to be assessed.

If you have an interest in carrying out an audit and proposals on actions to be implemented, we would appreciate it if you indicated it as soon as possible in order to be able to comply with this regulation before May 25, 2018.

H&M and graffiti Revok

27.03.2018

On March 9, 2018, H&M, the famous Swedish fashion company, sued a Los Angeles graffiti artist named Jason "Revok" Williams in New York City for permission to use Revok graffiti in its new men's sportswear advertising campaign "New Routine".

Prior to this lawsuit, on January 8, 2018, the street artist had sent a letter of formal notice to H&M, complaining about the unauthorized use of his graffiti in the campaign, and requesting compensation for the infringement of intellectual property rights.

H&M replied that graffiti is illegal and that it is an act of vandalism, and therefore there was no copyright on the graffiti. When this demand became known, a great deal of controversy was sparked, and people called for a boycott of H&M in all media and social networks.

In the end, the Swedish company, in view of the damage being done to its image, has decided to withdraw the complaint by announcing on Twitter: "We respect the creativity and originality of artists, no matter the means.

We should have acted differently in dealing with this matter. It was never our intention to set a precedent in relation to public art or its influence, nor to discuss the legality of street art.

Finally, H&M has announced that it has also contacted Revok to find a amicable solution.

RUSSIA ADHERES TO THE HAGUE SYSTEM

26.03.2018

Since last 28 February, Russia has joined the Hague System.

With this adhesion, Russia becomes one of the countries that comprise the international design application and that translates into protection in a single application of up to 100 industrial designs in more than 67 territories and intergovernmental organizations, thus eliminating the need to file applications in each country or region.

VALIDATION OF EUROPEAN PATENTS IN CAMBODIA

26.03.2018

European patents can now be validated in Cambodia since 1st March. For more information, see the following link.

Trademarks on sale

24.03.2018

We list the trademarks that we currently have for selling. Please, do not hesitate to contact us sugranes@sugranes.com in case you need further information indicating SELLING in the subject of the email.

MARK

CLASSE/S

ALFA SEGURIDAD

37

BULERÍA by Flamenco

14,18,21,25,35

CATALUNYA REPUBLIC TERRA NOSTRA

25

CURIOCITY INLOVE

18,25,35

DETRUI

5

EL ARROSITO

29,30,31,35

EL ARROSITO PAL DOMINGO

29,30,31,35

EL RISOTTO PAL JUEVES

30

EUROFIX

6, 8,11,20

FLAMENCO

3,35,9,14,16,18,24,25,42

FLAMENC KIDS

3,18,25

IDAPT

9

INDIGO

20, 24, 25

INSECON

5

LA FIDEUA PA LOS NENES

30

LA FIDEUA PALOS VIERNES

30

LA PAELLITA

29,30,31,35

LA PAELLITA NEGRA PA VARIAR

30

LA PAELLITA PA LAS FIESTAS

30

LA PAELLITA PAL DOMINGO

29,30,31,35

MICROZUL

1, 5

NACRAM

5

PEPITA PEREZ

3,14,16,18,24,25,42

PIPIPOP

5,10,35

PISFRUTAR

35

PIZZA 4U

30,35

POWERSLICE

9,38,42

REGIMENTAL

25

SEXAPIL

3

SI, REINA

3,9,14,16,18,21,24,25,35,42

TOP-DISSENY

42

TRAVELS THE BEST SENSATIONS

39

Copyright

29.11.2017

The proliferation of fraudulent companies that offer registration services for works subject to intellectual property is increasing.

From Sugrañes we offer advice and procedures for the registration of works before the official records on the subject and other legal instruments that allow the work to be kept confidential and have proof of its authorship before third parties.

If you are interested in protecting a literary, scientific, audiovisual, musical, architectural work, drawing or painting, among others, please contact us and we will advise on the possibilities of protection and registration procedures.

INDONESIA WILL JOIN THE INTERNATIONAL TRADEMARK

27.11.2017

On January 2, 2018 Indonesia will join the International Trademark Agreement. With this new incorporation, the International Trademark now includes 100 Member States. More information

Validation agreement with Tunisia for European Patents

25.11.2017

The EPO (European Patent Office) has signed a validation agreement with Tunisia that comes into force on 1st December. Tunisia is the third country to adopt a similar validation agreement that is already available in Morocco and the Republic of Moldova, bringing the number of countries that recognize European patents as national patents to 43.

NEW REGULATION ON THE EUROPEAN UNION TRADEMARK

27.09.2017

As we have seen in previous publications, Regulation (EU) No 2015/2424 of the European Parliament and of the Council ("amending Regulation") amending the Community Trade Mark Regulation entered into force on 23 March 2016. The Regulation introduced important changes, some of which were to be developed and implemented as from 1 October 2017 with the entry into force of the Rules of Procedure (Implementation Regulation (EU) 2017/1431 of the Commission of 18 May 2017) and the Delegate Rules (Delegated Regulation (EU) 2017/1430 of the Commission of 18 May 2017).

The most significant changes to be implemented are aimed at increasing legal certainty, efficiency and uniformity of the European Union's trademark law provisions. Broadly speaking, the amendments to be applied from 1 October 2017 will be as follows:

1. The graphic representation of the marks. Until now, the trademark application has been made according to a graphic representation of the same. However, with the entry into force of the amending Regulation, other ways of representing a trademark using the technology available at all times will be acceptable provided that it is sufficiently clear, precise, complete, easily accessible and searchable.

2. Certification marks. A new legal instrument has been introduced (similar to the guarantee marks provided for in the current trademark legislation in Spain) which allows the registration of a type of trademark that guarantees certain specific characteristics of certain goods and services through the so-called "certification marks". In particular, the European Union certification mark is defined as a mark which makes it possible to distinguish the goods or services certified by the proprietor of the mark in respect of materials, the method of manufacture of goods or of rendering of services, the quality, precision or other characteristics, with the exception of the geographical origin, of goods and services which do not possess such certification. For its application, it must fulfil certain requirements and submit a use regulation that includes the characteristics, conditions of use, tests and supervision measures to be applied by the trademark owner.

3. Procedural changesNew practices of the Office with regard to claiming distinctiveness acquired as a subsidiary or alternative claim shall apply; requirements for admissibility of oppositions in order to take account of the separate plea on geographical indications introduced by Article 8 (6) of the Trade Mark Regulation of the European Union; - conditions of admissibility of oppositions to take account of the separate plea on geographical indications introduced by Article 8 (6) of the Trade Mark Regulation of the European Union; documentation accrediting earlier rights (the Office' acknowledges' all databases of national IP offices, and TMview is also accepted as a portal through which' access to these national offices'); simplification of translation requirements; updating the media with the Office, eliminating outdated channels of communication.

4. Resources. The provisions relating to the Boards of Appeal which were in different legislative sources, the reorganisation and structure of the Board of Appeal and new clarifying provisions on the admissibility of appeals are consolidated in a single text.

THAILAND WILL JOIN THE INTERNATIONAL TRADEMARK

27.09.2017

On November 7, Thailand will join the International Trademark Agreement. With this new incorporation, the International Trademark now includes 99 Member States. More information

COVERT ADVERTISING IN INSTAGRAM, YOUTUBE AND SOCIAL NETWORKS

24.09.2017

Some of the so-called influencers, bloggers or YouTubers are paid to post photos of restaurants or any type of product or service. This practice is lawful if used with the hashtag #ad #advertisement or similar. But the reality is that very often this is not taken into account, so the consumer is being deceived, who believes that the suggestion or recommendation is spontaneous when it comes to paid advertising.

Consumer associations are already pursuing specific cases, but the fact is that we are still a long way from countries such as the United States or the United Kingdom where this issue is specifically regulated. Thus, in order to pursue covert advertising, the General Advertising Law is being applied, which establishes that any type of advertising must be identified as such.

Protect your trademark against GTLDs domain names

23.09.2017

We update the link of the list of new domain extensions, which can be registered from now on.

We remind you that it is advisable to protect your trademark in the extension that is relevant to your product or service, as well as a good opportunity to obtain a domain that quickly defines your business and identifies you within your sector.

If you have a trademark and you need to protect it into Internet, please contact us and we will inform you about the most appropriate options for protecting it. 

New granting program

16.09.2017

The basis for a new program for the granting of financial support to R+D+I projects in the field of connected industry 4.0 have been published for companies that develop or will develop a productive industrial activity. In the following link you will find more information.

UPDATING OF OFFICIAL FEES OF THE SPANISH PATENT AND TRADEMARK OFFICE

11.07.2017

On 29th June, with the approval of the State Budget Law, the official fees increased by 1%. This increase does not affect the rates set out in the new Patent Law which entered into force on 1st April, since these have not undergone any variation.

Sugrañes is not increasing the amount of expenses and professional fees, so that the final invoices and new budgets will only show the increase of official fees.

INTA Congress in Barcelona

30.05.2017

During 20 to 25 May it took place in Barcelona the 139th Edition of the Annual Meeting of INTA (International Trademark Association) to which some of Sugrañes’ members attended.

This is a great opportunity for us to deepen our professional relationship with industrial and intellectual property lawyers from all over the world, and to find new opportunities that may allow us offering better services to our clients as and when they look into expanding their businesses internationally.

INTA has allowed us getting to know the most trending legislative and jurisprudential novelties worldwide and new strategies to defend IP rights that are being developed in some of the more interesting jurisdictions to our clients.

Having the chance to host this big event in our city, to which more than 10,000 people attended, has been a very enriching experience which will surely have very positive outcomes in the future.

We Do NOT CLOSE IN SUMMER

14.05.2017

As every year Sugrañes does not close for holidays. We are at your disposal for any issue that you might need.

New Patent Law in Spain

27.03.2017

As we have already advanced in previous editions, the new Spanish Patent Law will enter into force next April 1, 2017. It is an important landmark to have delivered the drafting of this new Patent Law that will replace the current Law of 1986.

The New Law substantially modifies the procedures for obtaining a patent in Spain, such as by imposing the compulsory Examination (previously optional). In addition, other aspects such as the rights of inventors are specified and updated and the requesting and payment of the fees for IET (Spanish Search Report) at the time of filing the application is now compulsory.

In addition, the new Law includes substantial changes for the Utility Model applications, such as the new absolute novelty requirement or the necessary requesting of a Spanish Search Report to be able to take legal action against alleged infringers.

In addition, to reduce costs, new reductions on rates are set for SMEs and individuals. Besides to the existing reductions for universities.

Doubtlessly, the requirement to go through a substantive examination for all the patent applications, reinforces even more the involvement for an accredited Patent Attorney for preparing, drafting and defending your applications.

Warning! Fraudulent communications

12.03.2017

SUGRAÑES informs that it is being considerably increasing communications addressed to companies and individuals asking for payments of various fees of patents and trademarks using the name of official entities fraudulently. These communications are even using and reproducing letterheads, stamps and forged signatures.

Therefore, we warn that this kind of fraudulent communications are not issued by any official entity nor have legal validity. Among others, these communications are sent by REGISTRO CENTRAL DE PATENTES Y MARCAS, WORLD ORGANIZATION FOR TRADEMARKS, PT ORGANITZATION FOR PATENTS AND TRADEMARKS, INDAB GMBH. The official entities, are taking the necessary measures to avoid them, and we are collaborating to the maximum with them.

Please reject these communications and, in case of doubt, please contact us.

BRUNEI JOINS INTERNATIONAL TRADEMARK

22.12.2016

On January 6, Brunei Darussalam has joined the International Trademark Convention. With this new addition, the International Trademark already comprises 98 member states. More information

OPERATING OR LICENSE AGREEMENTS

21.12.2016

It is adviseable before reaching operating or license agreements, firstly make a good analysis of patent, trademark or design owned by the inventor or company that offers them a right to exploit or license, and according to this analysis, develop in conjunction with a lawyer, a written operating or license agreement with accurate and secure clauses.

For any questions you can contact our Legal or Patents department.

A preliminary search and feasibility study

14.12.2016

A preliminary search and feasibility study are the keys before filing a trademark and invest in its market launch.

On the Internet there are more or less reliable toolsavailable to everyone who are searching for a distinctive mark, but the subsequent assessment of an expert is essential to analyze and evaluate to what extent the new product or service is worth to be registered. In addition, an expert has several databases, which in combination, could obtain more reliable and accurate results to recommend an adequate protection to our clients.

The Unitary Patent at the AIPPI Congress held in Milan

29.09.2016

By Agueda Bondia, European Patent Attorney

This year the 2016 AIPPI World Congress was held in Milan from 16 to 20 September and was well attended by industrial and intellectual property professionals, which included Elia Sugrañes, head of the trademark department, and Agueda Bondia, agent of the patent department, who represented our firm.

The morning session held on the last day of the 2016 AIPPI World Congress in Milan sparked great interest among the participants given the presentation of a mock trial before the Unified Patent Court UPC, which undoubtedly increased due to the uncertainty caused by BREXIT regarding the future of the entry into force of the Unitary Patent UP which appeared to be very close after long years of negotiation.

Currently, 25 of the 28 European Union member states have agreed to participate in the new UP system, ratifying the corresponding agreement. However, its entry into force depends on its ratification in at least 13 member states, among which include France, Germany and the United Kingdom. Thus, as a result of the United Kingdom’s decision by vote on 23 June to leave the EU, the future of the UP and the UPC is uncertain and will definitely involve, at the very least, a delay in its entry into force.

Link to the full news 

Patent Box

28.09.2016

With the aim of fostering R&D activities, a change in the tax policy called “Patent Box” has been approved and its regulation in the Corporate Tax Law has been recently updated.

The “Patent Box” is a tax incentive that allows up to 60% reduction, according to the update, in the amount to be incorporated into the tax base (immediate tax exemption) attributable to the management of rights of use or exploitation of intangible assets such as patents, drawings or models, figures, secret formulas or procedures. 

The tax incentive constitutes a 60% reduction in the income (positive difference between earnings and expenses related to intangible assets which are subject to transfer) derived from the transfer or transmission of these intangible assets.

Any type of company can benefit from the incentive as long as it has created the assets which are subject to transfer or transmission at at least 25% of their cost.

There is also the possibility to request from the Tax Authorities the previous agreements based on asset ratings and/or their assessment, which grants legal certainty to the application of the incentive.

Links of interest:

 

 

Remember, protect your APP!

20.09.2016

In the last years it has significantly increased the number of apps (applications) for smartphones and tablets, creating new communication channels and commercial opportunities in the business world.

For this reason, before you launch a new APP, it is very important to obtain from the start priority trademark rights of both, the name that you give to the APP as well as its icon, all without forgetting to protect and register the software through intellectual property rights.

If you are interested to seek advise and analyze the feasibility of registration, do not hesitate to contact us and our team will help you throughout the process.

Trademarks on sale

17.09.2016

We list the trademarks that we currently have for selling. Please, do not hesitate to contact us sugranes@sugranes.com in case you need further information indicating SELLING in the subject of the email.

MARK

CLASSES

BRONQUIDRIN

1, 5

CONFILAND, S.L.

35

DETAXER

3

DETRUI

5

EL ARROSITO

29,30,31,35

EL ARROSITO PAL DOMINGO

29,30,31,35

EL RISOTTO PAL JUEVES

30

EUROFIX

6,8,11,20

FUNKIL

5

IDAPT

9,38,42

INDIGO

20,24,25

INDIGO, S.A.

35,39

INSECON

5

LA FIDEUA PA LOS NENES

30

LA FIDEUA PALOS VIERNES

30

LA PAELLITA

29,30,31,35

LA PAELLITA PAL DOMINGO

29,30,31,35

LA PAELLITA NEGRA PA VARIAR

30

LA PAELLITA PA LAS FIESTAS

30

MANEXOL

3

MICROZUL

1, 5

MOSKICID

5

NACRAM

5

ONEDAPT

9,38,42

PENIDRIN

5

PIPIPOP

5,10,35

PISFRUTAR

35

PIZZA 4U

30,35

POWERSLICE

9,38,42

PYT VAPORES

5

TOP-DISSENY

42

VECTOR

16

VENAFLOW

1

Protecting your brand online and on social networks

29.06.2016

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.

NEW DATABASE FOR THE FIGHT AGAINST COUNTERFEITING IN CHINA

29.06.2016

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.

BREXIT

26.06.2016

While the negotiation process has not finished yet, the UK is still a member state of the European Union and the Trademark in the European Union, therefore with all rights and obligations of Intelectual Property.

From now, agreements will be needed to establish the new direction. The European Patent Office (EPO), through its President Benoît Battistelli, anticipates that the referendum has no consequences, or effects on European patents in the UK, but announces that the Member States and the United Kingdom must find, shortly, a solution for implementing the unitary patent.

Once we have news of how it will affect the Brexit to the files of our customers with effects in the UK, we inform you promptly.

NEW OPPOSITION PROCEDURE IN MEXICO

19.06.2016

Starting next 30 August 2016 will be possible to file oppositions against new trademark applications in Mexico that could collide with the rights and priority interests in this country, thus extending the defense strategies of your brand at the administrative level.

New Mail Account

18.06.2016

In order to speed up any proceeding that affects your brand, we have created a new email account trademarks@sugranes.com, so from now on some of the usual communications will be sent from this new account, which you can also use when needed.

In any case, our regular email accounts remain in full operation and use.

Alimentaria 2016

23.04.2016

The Food Fair in its 40th anniversary has been a success both exhibitors and visitors. Alimentaria this year has served to record the rise of international business and domestic demand.

Up to 4,000 exhibiting companies from 78 different countries and about 140,000 registered visitors confirm that the sector of food and drinks is experiencing a major boom with both national and international potential for activation of the economy.

This year can highlight the commitment of most companies to review their products and services with an inevitable innovation work to develop new products, processes, brands, machinery and so on to respond to new market trends and the new needs of different types of consumers increasingly informed about everything related to food.

The effort of each company to be able to present their proposals in the food, and specifically in the Alimentaria this year with a crowd and wide range of companies, must be considered and deserves its congratulations.

Collaborate with companies to protect their trademarks, patents or designs is our mision, and see live the outcome of these protections complements and satisfaction to our goal of supporting our clients in their new developments.

Declaration of amendment of the heading of products and services before the EUIPO

19.04.2016

As reported in previous publications, on March 23rd  2016 came into force the Community Trademark Regulation (EU) No. 2015/2424.

Among the modifications included is the possibility for trademark holders filed before June 22nd  2012 and registered before March 23rd 2016, containing the heading under the Nice Classification in force on date of request, to present until next September 24th  2016, a declaration to the European Office of Intellectual Property (EUIPO) requesting modification of products and services of your trademarks. The declarations will be submitted for consideration by the EUIPO and approval will depend on the discretionary judgment of the examiner.

We are at your disposal to assess whether the products and / or services actually traded are protected under the wording of the statements of trademarks filed before June 22nd  2012 because, otherwise, they are subject to change.

Illustrative examples:

"Cases for watches [presentation]" are not understood within the wording of the title of the title of the statement in Class 14; or "Book publishing; publication of texts other than publicity "are not included in the wording of the title of the statement in class 41; among others.

GRANTS PATENTS AND UTILITY MODELS

30.03.2016

We inform you that on Thursday 31st March 2016 a new call for awarding grants to promote patent applications and utility models by the Spanish Patent and Trademark Office was published in the Official Gazette.

The deadline for submitting the grant application ends on April 30th , 2016. You can contact us if you want us to process the subsidy for you.

New obligation in the export of products to Egypt

19.03.2016

The Ministry of Trade and Industry of Egypt has adopted Decree 43/2016, whereby it requires foreign companies to export certain products to Egypt, be registered in the GOEIC Register (for its acronym in English General Organization for Export and Import Control).

This new obligation entered into force as of March 16, 2016 and affects companies and manufacturers who are holders of registered trademarks in Egypt this one exporting country of the products listed in the following link.

Thus, in the case of failure to comply with the registration requirement, Egyptian authorities could prevent the entry of these goods on their territory.

In the case of being affected by the previous legislation, we strongly recommend enroll in this registry. We also inform you that we can assist and represent you with the Egyptian authorities for this purpose.

Protect your trademark against new GTLDs domain names

17.03.2016

We update the link of the list of new domain extensions, which can be registered from now on.

We remind you that with the launching of new domains gTLD (generic top level domains) it is not only highly recommended to properly protect your trademarks under the extension that has great relevance for your product or service, but it becomes a good opportunity to get a domain that quickly defines your business and identifies it in its sector.

If you have a trademark and you need to protect it into Internet, please contact us and we will inform you about the most appropriate options for protecting it. 

The protection of Design

08.03.2016

Interview with Agueda Bondia

We have dialogued with Agueda Bondia, Spanish Patent and Trademark Attorney, Agent before the European Patent Office and Trade Mark and Community Designs to clarify some of the most common questions raised by our clients concerning the protection of Design.

When do you advise to file a design? I advise filing if the design is the result of work focused on product differentiation (or part thereof) from the rest, standing out for its uniqueness in terms of appearance which is derived from features such as lines, contours, shapes , colours, textures, materials, or its ornamentation, etc. The design of a product is an added value and in many cases, a key factor for the public or customers wish to pursue one product over another.

What can be registered as design? Virtually the appearance of any industrial or handicraft item may be the subject of a design, including among other things, packaging, graphic symbols, typefaces and parts of products that can be assembled and dismantled again. You can register from fashion items like shoes or jewellery to furniture, car bodies, toys, etc.

What effects and rights  do you get when registering a design? By protecting a design through registration, the owner obtains exclusive rights to prevent unauthorized copying or imitation by third parties.

What duration has a design? For how long  can I make use of? The maximum term of a design varies by territory of the design registration. For example, a design in Spain, known as "Industrial Design", once granted registration lasts for 5 years from the date of filing the application for registration and can be renewed for one or more periods 5 successive years to a maximum of 25 years from the filing date.

Can I order multiple designs in a single application? As in the previous question, it depends on the territorial area of registration of Design.

Is there a design registration for Europe? There is what is called Community Design, which gives a unitary protection in all countries of the European Union. The body of the European Union responsible for administering the Community Design is the Office for Harmonization in the Internal Market (OHIM) based in Alicante. I take this opportunity to comment that from March 23, 2016 the agency will be renamed and will be renamed the Intellectual Property Office of the European Union (EUIPO).

Should we file a design application directly in all countries that we want protection? It is not necessary, since you can start by presenting a first design application in a country or region before finalizing a priority period of 6 months, it is possible to present, based on the first application, other applications for design on other countries which are Member States of the Paris Convention or the Agreement establishing the World Trade Organization was created.

For example, you can start by submitting a Spanish Design application, also known as Industrial Design, and before 6 month anniversary submit an application for Community Design and / or design in the United States (called Design Patent Application), Canada , Japan, etc., that is, where we want to aim to obtain protection. Rather than start with a Spanish design, you can start also introducing a Community Design and before the end of the priority period of 6 months to submit respective applications where interests.

Another option to consider is to apply for an International Design, which is part of a system of international registration of designs for countries that are integrated in the Hague Agreement. This system allows the holder protection in multiple countries through the filing of an application in one language, paying one set of fees in one currency, in addition to the simplification and unification of a number of procedures such as the formal examination and publication, in rather than country to country. We should point out that in an International Design it is possible to designate all countries of the European Union collectively, through the Community Design.

Investment Grants

22.02.2016

We advance that recently the Spanish Patent and Trademark Office has confirmed that this year a new call for proposals will open to recover part of the expenditure on official rates and translations for utility models or patents in Spain or abroad Spanish owners.

The announcement and official rules have not yet been published but is estimated that the requirements and deadlines will be posted in March (probably for Easter) to request the aid that will surely be a month from that publication.

As in previous years, there will be two different aid programs: the program for the Promotion of Patents and Utility Models Abroad and the program for the Promotion of Patents and Utility Models Original (SME). 4,320,900 euros will be allocated (about 400,000 euros more than last year) to the first program and 231,800 euros (similar to last year's figure) to the second program for SMEs.

The eligible activities for the program Overseas rates are associated with regional or national applications, searches, surveys, annuities European prior grant, awards and translations of complete report, provided it comes from a Spanish priority (patent application or utility model Spanish , European application or PCT filed in Spain) or European or PCT applications filed in Spain.

Eligible activities for the national program for SMEs are application fees for patents or utility models and rates of the Report of the State of the Art.

As it is usual in our firm, we confirm that  again this year we will help you dealing with such benefits. Any questions you may encounter, we will remain available.

Examination of patentability of the New Patent Law in Spain

17.02.2016

One of the most important patentability requirements of the New Patent Law in Spain, which will come into force on April 1, 2017, is the new and unique procedure for granting patents.

A compulsory examination procedure is established which it will assess, among others, compliance with the requirements of novelty and inventive step, unlike the previous system that also contemplated the possibility that these aspects of the patent was not examined.

The current Patent Law allows obtaining a concession even if the protected invention does not meet any of the requirements of novelty and inventive step which, as indicated by the preamble of the new law, may end up transferring to competitors the cost and burden to override patents that should never be granted, and encourages falsifications of competition based on titles presumption of validity which can only be destroyed through the courts.

The mandatory substantive examination of the new patent law aims to check that both, the patent and the invention to which it relates, meet all the requirements, formal, technical and patentability established by law.

The obligation to submit patent applications for examination can sometimes affect the recommended protection strategy. For example, there may be situations in which the use of utility model -which is not subject to substantive examination during its consideration of granting- may be more effective for obtaining a right valid protection either directly or via conversion of a patent application for utility model.

 

 

MISLEADING PAYMENTS ALERT

16.02.2016

As we previously mentionned, the new Community Trademark Regulation comes into force on 23 March. The name of the Community Trademark  and the Office which protects these rights, currently Office for Harmonization in the Internal Market (OHIM), will have a change of name into " European Union trade mark" and "European Union Intellectual Property Office "respectively.

In recent days the Office is alerting users and especially during the current transitional period until change its name, to show special care if you receive any mail in which payment is claimed for services relating to trade marks or designs. Remember that OHIM never sends invoices or letters requesting direct payment for their services, but everything is handled by the appropriate agent, in this case Sugrañes.

Some users have reported receiving invoices with logos or very similar to those of OHIM and even, in some cases very similar to its new name letterheads.

You can see examples of false invoices received by users on this linkIf you receive any dubious mail, please contact us.

New Community Trademark Regulation. Most relevant changes

30.01.2016

On 24 December 2015 the Community Trademark Regulation (EU) No. 2015/2424 and a new Trademark Directive was published, modifying the trademark system in Europe. The new regulation will come into force on 23rd  March 2016, although not all changes will have an impact on this date.

The most significant changes are:

1. The CTM will be called European Union Trademark, and the Office will be renamed as European Union Intellectual Property Office (EUIPO) .

2. The new trademark applications should not be represented graphically, favoring the registration of non-traditional marks. So, from now brands must register with the Office in the form that allows consumers and authorities to determine what is protected by the applicant.

3. The application fees of the new EU Trademarks include only one class of goods or services. Additional fees for each additional class will need to be paid.

4. Counterfeits in transit in the EU involves a violation of the rights of trademark owners. Currently, goods in transit, in general, did not involve a violation of trademark rights.

5. A new brand concept is created, guarantee marks, which may be used by authorized entities, in order to certify consumers that the products and / or services claimed have certain characteristics. In Spain already exist.

6. The use of a trademark by a third party without the consent of the owner, as a trade name or trade name of the company is an infringement of use of the trademark.

7. With regard to evidence of use, unlike the legally established so far, the defendant may request the owner of the earlier mark (minimum of five years of registration) to prove the use of its brands at the beginning of the procedure trademark infringement.

8. As is currently the case with CTM, national industrial property offices should create appropriate mechanisms to oppose or initiate actions for invalidation and cancellation trademarks administratively, thus avoiding having to go to Court, consequently facilitating these actions.

9. The process of registration of trademarks, including dates of application and standards for classifying products and services, will be harmonized throughout the European Union. 6 months will be granted to registered owners to verify that the list of registered products and services correspond to their current activity trademarks.

10. May be used in the context of comparative advertising, the European Union Trademark or the national trademark of a third party, provided they respect Directive 2006/114 concerning misleading and comparative advertising.

First edition of the Design Europe awards

28.01.2016

In an effort to encourage innovation, the first edition of the Design Europe awards, aimed at celebrate excellence of designs and models in the European Union, open to companies and individuals who hold a current design or model is organized.

The deadline for nominations began on February 1 and ends on 15 July 2016. The following link you can get more information.

The awards are divided into three categories:

1. Industry (companies with 50 or more employees and a turnover of more than 10 million euros);

2. small and emerging companies (companies with fewer than 50 employees and a turnover or balance sheet of less than 10 million euros, or companies created after January 1, 2013);

 

3. Special award for a career dedicated to the design.

Protection in Startups

27.01.2016

The start-ups, frequently related to technological world and with great potential for growth, known as STARTUP must be careful, like any other company, to quickly protect their rights in Intellectual Property.

There are many companies like Google, Twitter, Facebook, Tuenti, Privalia, etc. which they began as startups and over the years have become corporate giants, where a good initial protection of their trademarks, patents and designs have been key.

In Sugrañes we analyze the protection that suits you for your Startup.

NEW DOMAIN NAMES ".BARCELONA"

30.12.2015

Please note that from January 12 are now available for registration domain names .barcelona

A first phase starts in which take precedence, according to established priorities, brand holders registered in the Trademark Clearinghouse (TMCH), governments with responsibilities in Barcelona, ​​or trademark holders unregistered in the TMCH but with effects Spain, among others. We remind you that the TMCH is a global brand database authorized by ICANN, which allows trademark owners that have registered in the system TMCH register domains during the initial period or "sunrise" with the new GTLD extensions that come out.

As of 15th March 2016 this extension will available to the public, under the premise of the right of priority registration ("first-come, first recorded").

If you are interested in the protection and require more information, please contact us to inform you in more detail.

Becomes Partner

29.12.2015

Mariola Caballero becomes PARTNER along with Pedro Sugrañes, Elia Sugrañes, Pau Sugrañes, Gerardo de Lucas, Lluis Vilalta and Agueda Bondia.

Fraud Alert

28.12.2015

It has been increasingly observed in recent months, letters sent to companies and individuals to seek payment of various fees fraudulently using the name of official bodies, such as REGISTRO CENTRAL DE PATENTES Y MARCAS (nonexistent) in relation to the payment of fees for patents and trademarks. These letters are even using and reproducing letterheads, stamps and forged signatures.

Therefore, we warn that this kind of fraudulent letters are not issued by any official agency nor have legal validity.

Please reject these communications and in case of doubt, please contact us.

Utility models in 2017

26.12.2015

Following the new patent law (Law 24/2015) which will be in force on 1st April 2017, we inform you that one of the most important changes will be related to the novelty requirement required for utility models.

Thus, with the new patent law, the novelty requirement for utility models equals the current requirement for Patents, that is, a worldwide novelty requisite will be necessary to inventions protected by utility model.

This implies a significant change from the requirements so far, implying a higher degree of difficulty in registering the utility model.

Consequently, if you are interested in finding some kind of national protection for a technical solution known abroad but not yet released in Spain, it would be convenient to perform the necessary steps to apply for a utility model by 2017.

Obviously, each case must be analyzed particularly. In this regard, please contact us to discuss your specific case.

New European Legislative Reform on CTM

16.12.2015

On 15th  December 2015, the European Parliament approved the European Law Reform on Community Trademarks.

As major developments, and as we advance a few days ago, the Office shall amend its name and renamed as EUIPO (European Union Intellectual Property Office) and the Community Trademark be identified by the acronym EUTM (EU Trade Mark).

We also highlight that it has been established a system of "a fee for each class of product and / or service", allowing trademark owners to apply for protection under their real business needs and with a cost according to them.

Protection as Design

29.11.2015

Remember that you can seek protection of outlets, provision shops, restaurants and / or window displays through the figure of Design. The same Spanish Patent and Trademark Office issued a statement at the time recalling the existence of such protection.

We refer to our news last September where we inform you of the different forms of protection via Industrial Design.

Change of Name of the Office for Harmonization in the Internal Market

29.11.2015

OHIM, Office for Harmonization in the Internal Market (community trademarks and designs) is pending to publish the approval of its new name "EUIPO" European Union Intellectual Property Office", as a result of the reform of the legal system in Europe.

Over the next few months it will come into force new regulations and Community Directive that will modify the existing system. We will inform gradually of the highlights. 

Only industrial property rights could be invoke to pursue copies and / or counterfeits of your products on the market

19.11.2015

Recently the Provincial Court of Madrid has handed down the sentence 647/2015, where mention the previous case law that establish that intellectual property rights are not the right tool to prosecute those who manufacture, import, possess, use is repeated, offer or introduce in trade products that are copies or fakes.

The Audience comes to establish / remember that intellectual property protects the rights about an artistic, literary or scientific work in itself, but is not enough to pursue copies of products incorporating these art works, since what haunt is not the use or exploitation of the work itself, but marketing the product that incorporates it. In this case, the work would play a role brand, whose main function is simply to differentiate in the market that product from the competitors.

In short, the judgment dismissing the claims of a famous brand of clothes (fashion retail industry ...) and will wait to see if it is contested.

THE IMPORTANCE OF INTELLECTUAL PROPERTY IN THE ECONOMY

30.10.2015

The Office for Harmonization in the Internal Market (currently called OHIM) has conducted another study within the Observatory Infringement of Industrial Property Rights to assess the influence of these rights in companies. This study complements the first study published in 2013, by the European Patent Office, demonstrating the importance of industrial property and the impact on the international labor market (35%) and trade (90%).

This paper prepared by economists of OHIM, Member States of the European Union, the European Commission, Europe Economics and other institutions, it shows that the property of such rights entails better economic result with respect to those who do not have them . In particular, this conclusion is clearer in SMEs.

The result of this study has shifted to political and economic institutions in order to highlight the circle between industrial property and the economy so that adjusted to current economic needs action.

SENTENCE ECJ C 170/13 DATED 16/07/2015, CASE HUAWEI VS. ZTE

29.10.2015

By Íñigo Gené, Trademark Department Lawyer

As of July 16th, 2015 the Court of Justice of the European Union issued a decision in the case known as "Huawei", in which the minimum conditions are set under which the parties must negotiate a license agreement that affects an essential patent .

Beyond these minimum conditions relevant, we include the concept of essential patents.

These patents are inventions that develop a technology considered basic or essential by a standards body within a specific field of application.

At the time the technology is considered essential by the appropriate body, the holder thereof will be compelled to grant licenses to third parties under certain conditions, known as FRAND (Fair Reasonable and Non Discriminatory). Ergo, the patentee must grant licenses or fair, reasonable and non-discriminatory royalties, thus avoiding abusive behavior on the market.

This case has helped to highlight again the jurisprudential principles concerning essential patents and licensing conditions between parties. We must be attentive to the effects that this law has on the regulation of compulsory licenses.

Software applications (APP FOR PHONES or COMPUTERS)

28.10.2015

The expansion of mobile phones (smartphones) is so broad that today have been introduced in any economic sector. There are all kinds of applications and almost all companies and brands develop their own application to offer their product or service.

It is an important task to check whether the protection of your product or service mark is covered for the sector of software applications. It is also important to check the role of the brand in social networks, whether on Facebook ©, Twitter ©, © Linkedin, Pinterest, Youtube...

In any case, it is necessary to assess in each case whether the most appropriate protection is mark, design or intellectual property. Once defined these rights is advisable to incorporate them into the strategic plan of the company.

If you are interested, please contact us so that "APPanalicemos" your proposal and determine those most appropriate modalities of protection.

Platform Pinterest

21.10.2015

PINTEREST is presented as: "Pinterest is a visual discovery tool you can use to get new ideas for your projects and interests".

These visual findings are based on publications of users that form part of Pinterest. Make sure you know the consequences of publicizing possible product designs and / or logos of brands wishing to commercially exploit.

Advice for use and / or registration available at Sugrañes Patent and Trademarks.

The importance of register a design

29.09.2015

Globalization has established, among others, an easy way for industrialization and rapid reproduction of any product that can be offered or imagine on the market. Competition is already a high speed race and constant dangers of copy. Introduce a new product is reserved for the more daring.

Therefore, the differentiation of a product, in design, becomes a basic and fundamental element for a good market position. But a design, without its registered protection, becomes copy model, which consequently entail the loss of exclusivity and a decrease in its market value.

Fortunately, there are different ways for the protection of a design and so shield the exclusive product. Such protection is especially interesting in consumer products such as:

A shoe, a phone (smartphones or any electronic product), a container of perfume, packaging of a product, an object of furniture (chair, armchair, sofa, table, bookshelf, cabinet ...), an appliance, a helmet, vehicle (car, motorbike, bicycle), a hat, a bag, a lamp, a print, a toy, an object for sports (a surfboard, gloves, etc), clothing (pants, skirts, shirts, sweaters, socks, dresses ...), etc.

You can even register the appearance or layout of a facility as a shop, a restaurant or a shop.

Unlike other forms of protection, design registrations stand out for its agility, to be cheaper and have faster than other forms of protection processing.

In case of your interest to register a design, you can contact us directly to assess your case and accompany you in the following steps, to follow up a possible final register adapted to your peculiarities.

New Patent Law in Spain

29.09.2015

The New Patent Law in Spain (Law 24/2015, July 24), adopted on July 25th will enter into force on 1st. April 2017. The publication of the regulation for the implementation of this law is pending. 

TRADEMARKS IN ASIAN COUNTRIES

27.09.2015

We recommend registering your trademarks in Asian countries, and doing both in its original version and Asian characters, whether you are present or intend to operate in these markets in the near future, or preventively.

The crisis is exacerbating cases of piracy of reputable trademarks, registered in these countries by mafias that mobilize the police and judicial authorities, with the aim of extorting businesses economically affected by counterfeiting of its trademarks in Asian countries.

These organizations go as far as to halt the manufacture and export of Western companies, with the consequent economic damage that entails.

We would like to mention that in case of piracy, actions to defend their rights and interests, especially in China, Vietnam and Korea, can involve long procedures, with a higher cost than they would involve if you seek protection of the trademark.

Protect your trademark to the new .SEX domain.

30.08.2015

Since last 1st September, it is possible to register domain names under the .SEX extension. This extension is intended for use by the erotic and pornographic industry. Currently these requests are in a very early stage reserved for trademark owners who want to protect their name under this domain thus avoiding the uncertainty that at some point their brand can relate to unwanted content.

Unfortunately in this domain there is no defensive trade mark registration, as did happen in the .xxx domain. This makes the .SEX domain registration will perform annual renewals.

We also inform you that as of 4th November, the .SEX domain will pass to the open phase, that is, shall be governed by the premise that "first-come, first registered".

In case you are interested in this protection, you can contact us and we will provide you more details.

PROTECTING AND DEFENDING AGAINST COUNTERFEITING

26.08.2015

Interview with Gerard de Lucas

In recent times, the number of counterfeit products properly protected is increasing but the fight against these fraudulent activities does not seem to be slowing down and law enforcement actions are becoming more agile and effective.

We have discussed with our Head of the Legal Department, Gerard de Lucas, who has headed the defence of counterfeit products for the benefit of some of our clients, achieving highly satisfactory results to their interests, in order to clarify some questions raised by our clients.

What do I need for taking any kind of action? Having a trademark registration, a patent registration, a utility model registration or a design registration and having it correctly protected both in the interested territory and in the form and activity wanted to protect. We always recommend to address to the specialised professional, Patent and Trademark Attorney, to ensure that this registration be useful and according to real necessities, that it will be critical and essential for fighting against possible infringements by third parties.

How do I act if a third party is committing a fraudulent use of my registered product or service? If a client finds out that their products are being falsified, he must notify us immediately in order to jointly discuss the best option to take. It is important to make a good analysis first.

How does the Law Enforcement Authorities act? The Spanish Police has a division dedicated to the prevention and prosecution of criminal offenses of Intellectual and Industrial property, reporting to the UDEF, covering all Spanish territory. This division acts everywhere in Spain, but we also can address to the Guardia Civil, any Local Police o the Mossos d’Esquadra.

Which advantages derive from reporting? The criminal proceedings are fast and agile. The main objective is agreeing on the destruction of counterfeit products and awarding damages to persons injured by the infringement.

What happens if I do not report? Unfortunately, some companies have felt overwhelmed due to counterfeiting leading them to closing, because the original product loses value for the consumer.

Are you interested in selling your trademark?

28.06.2015

If you are interested in acquiring a trademark already registered or want to sell your trademark and get profit, Sugrañes Patents and Trademarks is at your disposal to take care of the entire process.

Given the needs of our customers, we have boosted the service of selling and licensing of trademarks, handling the corresponding registration and formalization. In the case of acquiring a trademark, we check its validity and its status recorded, the territorial effects, the covered products and/or services and the priority rights.

By the various communication solutions that Sugrañes Patents and Trademarks has we will inform about the trademarks that our customers want to sell. Additionally, as of this coming July, we will monthly publish the available trademarks in our website and we include them in our Newsletter (NOTIMES) in case you want to revise it.

Please, do not hesitate to contact us sugranes@sugranes.com in case you need further information indicating “SELLING” in the subject of the email.

Three-dimensional trademark for Lego

25.06.2015

By Iñigo Gené, attorney at law of Trademark Department

Continuing with previous studies of three-dimensional trademarks, today we point out a new sign that will be familiar to all, because the General Court of the European Union has confirmed that the reproduction of a human figure of Lego Juris A/S applied as a CTM is distintive.

According to the Community Trade Mark Regulation, a sign which consists exclusively of the shape determined by the nature of the goods themselves or which consists exclusively of the shape of goods necessary to obtain a technical result may not be registered as a Community trade mark.

Based on this provision, in 2000, Lego Juris A/S applied for the three-dimensional Community trademark in the form of a human figure, which was the subject of an application of declaration of invalidity by a third party, taking into account that the trademark applied for was inadmissible according to the Community Trade Mark Regulation.

Both OHIM and later the General Court of the European Union rejected the application for a declaration of invalidity and accepted the CTM for registration, according to the following reasons:

1. The complainant had not put forward any argument to support the assertions that the three-dimensional trademark filed by Lego Juris A/S could be object of a declaration of invalidity on the grounds that the shape of the goods in question is determined by the nature of the goods themselves.

2. Under no circumstances, the shape of the three-dimensional trademark could be described as a technical result, that shape was just simply to confer human traits on those figures.

We will see how evolve the OHIM guidelines regarding the three-dimensional trademarks, but it seems clear that these will set tongues wagging because of its special features. Sugrañes Patentes y Marcas will keep you informed.

Global trademark monitoring service

08.06.2015

Globalization is a fact at the present time and the increasingly swift tools and communication networks demand efficient and immediate actions.

In this sense, it is essential to register your trademark in countries where it is being used to market, to manufacture or to import a product or service in order to fight the illegitimate use that a third party might do of it. Likewise, it is also fundamental to have a good monitoring service that would warn of new trademark applications that are similar or identical to your registered trademarks worldwide, especially regarding corporate trademarks. The referred service would help us to assess the suitability of taking appropriate actions to prevent that the grant of the detected trademarks could entail a risk of confusion for consumers.

We strongly recommend hiring the global monitoring service that we offer. If you are interested, contact us and we will provide you with further information. 

Protect your trademark against new GTLDS domain names

27.05.2015

Further to the launch of new GTLDs (generic top level domains), it becomes advisable to protect your trademark in the extension that would be relevant to your product or service. It would be also a good opportunity to obtain a domain name that would define your business quickly and would identify the same within your field.

The following link will show you a list of domain name extensions that can be registered already along with those that will be available soon, in case that you are interested in any of them.

Please do not hesitate to contact us for any queries or further information.

Remember, protect your APP!

25.05.2015

During the last few years, there has been an important increase in the use of the popular APPs (applications for smartphones and tablets), which entailed a significant change for the business world due to the new business routes involved.

However, before launching a new APP in the market, it is very important to obtain priority rights regarding the name given to the APP from the beginning, as well as for the icon, which will be essential for the user to recognize the APP.

If you are interested in receiving advice on the feasibility of registration, please do not hesitate to contact us and our team will help you throughout the process.

 

Can a bottle be three-dimensional trademark?

21.05.2015

Last March, we discussed the controversy of three-dimensional trademarks. Today, we are focusing on the recent controversy generated by the registration of the three-dimensional trademark owned by VOSS OF NORWAY ASA. It consists on a transparent cylindrical bottle with a gray cap. The referred application was cancelled.

The Court of Justice of the European Union confirmed the decision issued by the General Court, which upheld the cancellation action filed by a third party against such three-dimensional trademark on the basis of lack of distinctive character.

The decision of the General Court was based on two arguments considering the cancellation action:

  1. Drinks are usually sold in bottles, cans or other types of packaging with a label containing a distinctive word or figurative sign that serves to distinguish them from others in the market.
  2. All drinks are often sold in bottles that share common elements although they may have small differences in their respective appearance.

 

In this case, in relation to the first argument, VOSS OF NORWAY ASA did not provide arguments to convince the Court of Justice. (It should be considered also that the same bottle in dispute is being sold by VOSS OF NORWAY ASA with the corresponding label).

Regarding the second argument, the Court upheld the arguments of the General Court stating the shape of the bottle subject to be registered as three-dimensional trademark is not significantly different from the shape of other bottles used for other beverages. In this sense, the combination of non-distinctive elements “per se” do not constitute a distinctive three-dimensional trademark.

We will see how the OHIM guidelines concerning three-dimensional trademarks evolve. However, it seems that a three-dimensional trademark must comply with the same legal requirements of any other type of trademark. 

The first one to apply for a trademark = priority right

13.05.2015

The first one to apply for a trademark has priority rights on it.

It is very important to apply for the trademark when you already have the name or graphic to create a new product or service. Otherwise, if you do not register it, the possible costs for defending the same against owners of prior trademarks are higher than those of an application.

Becomes Partner

12.05.2015

Agueda Bondia becomes PARTNER along with Pere Sugrañes, Elia Sugrañes, Pau Sugrañes, Gerardo de Lucas and Lluis Vilalta.

TRADEMARK RIGHTS AGAINST COUNTERFEITING

29.04.2015

Michael Kors, the luxury fashion and accessories company, has initiated legal actions against the networks of suppliers and sellers of counterfeited products using its trademark. The company’s aim is to enforce its trademark rights and prevent future counterfeits of its products, including handbags, wallets and other goods. All actions taken by Michael Kors are made through civil proceedings instead of criminal ones.

In SUGRAÑES PATENT AND TRADEMARK OFFICE, we are specialists in protecting your trademark rights and in fighting against counterfeiting. On this regard, we have recently led, along with state security forces, several counterfeiting operations where large number of counterfeit products were seized.

THE RIGHT OF PRIORITY

21.04.2015

The priority right is a key tool to include different countries. It was established in the Convention of the Union of Paris (CUP).

Holding this right implies that any holder of an industrial property right in a country member of CUP may request an identical right in any other country member of the Convention, with all legal purposes and having as filing date the date of the first application for the right base.

There is only a temporary limitation in the use of this right: 12 months in the case of patents and utility models, and 6 for trademarks and industrial designs, as from the date of application of the basic right base.

Trademarks in Asian countries

14.04.2015

We recommend to register your trademark in Asian countries and to do it in both the original version and in Asian characters. 

The crisis is exacerbating piracy cases related to well-known trademarks. Mafias register the trademarks in those countries and they mobilize judicial and police authorities with the aim of extorting economically the companies affected by the usurpation of their trademarks in Asian countries.

These organization can even stop the manufacture and export of the goods by Western companies, entailing an economic damage. 

International events

12.04.2015

During the current quarter, our firm is actively attending international major events like the International Association of Intellectual Property Attorneys (FICPI) World Congress that is taking place in Cape Town (South Africa) these days and the International Trademark Association (INTA) Congress, where worldwide qualified professionals meet, and that is taking place in San Diego at the beginning of May. 

The importance of a trademark in social networks

29.03.2015

The use of trademarks on social networks is an increasingly recurrent issue due to the proliferation of websites and applications for sharing opinion, information, images and videos with other users. Social networks are powerful tools for disseminating and communicating information to millions of people around the world.

Sometimes, registered trademarks are used without authorization of their owner with the aim of taking advantage of their reputation, earned by their use and investment made by their owner. This unauthorized use might cause risk of confusion regarding the commercial origin of the goods or services being promoted or the content of a user profile.

In most cases, the referred social networks prohibit the unauthorized use of trademarks and the infringement of intellectual property rights. However, despite these prohibitions, infringements are increasing.

In view of this situation, it is highly advisable to carry out a continuous monitoring of the use of your trademarks on social networks in order to report unauthorized use of it for the immediate removal of any unauthorized reference. 

Grants for patents and utility models

24.03.2015

We inform you that the Ministry of Industry, Tourism and Commerce published in the Official Bulletin of Monday 23rd March the new call for awarding grants to promote applications for patents and utility models in collaboration with the Spanish Patent and Trademark Office. As in previous calls, there are two different grant programmes: the programme for the Promotion of Patents and Utility Models Abroad and the program for the for the Promotion of Spanish Patents and Utility Models (for SMEs). The first programme will be awarded 3,915,000 euro and 231.000 euro for the second programme for SME.

The actions eligible for the programme abroad are the fees are associated with regional or national applications, searches, examinations, European annuities prior to grant, grants and translations of complete memory provided that they come from a Spanish priority (Spanish patent or utility model, European application or PCT filed in Spain) or European or PCT applications filed in Spain.

The actions eligible for the National Programme for SMEs are the application fees for patents or utility models and the fees of the Report of Prior Art.

The deadline for submitting grant applications expires on 23rd April 2015If you require assistance on the application for grants, please do not hesitate to contact us.

Three-dimensional Trademarks

11.03.2015

According to the provisions of the applicable trademark legislation, all signs subject to be represented graphically, including a representation of the shape of goods or of their packaging can be constituted as trademarks; provided that such signs are capable of distinguishing the goods or services of a company from those of others.

In this sense, three-dimensional figures consisting in the shape of the product itself may be trademarks, provided that they distinguish their business origin from the rest of companies in the market. These three-dimensional trademarks must logically meet the same legal requirements as those of any other more “common” trademark.

Nevertheless, given the uniqueness of this type of trademark, it is very important to perform a preliminary registrability study in order to avoid:

  • Starting an application process for a figurative trademark whose distinctiveness is limited due to the fact that the perception of such trademarks by the audience is not necessarily the same as in the case of a word trademark or a figurative one, according to case law.
  • Starting an application process for a figurative trademark that is highly similar to an existing one. A current example of this case is the notorious legal battle between HARIBO and LINDT companies that is undergoing since 2012 regarding their teddy-shaped three-dimensional trademarks. This legal battle has even reached the highest court in Germany.

 

SUGRAÑES PATENTES Y MARCAS recommends performing a prior availability study for any type of distinctive sign in order to know the chances of success of a new project in advance and with a comprehensive legal advice.

Fighting counterfeiting

08.03.2015

State security forces have spent years creating specialized units to fight sale of counterfeit goods.  Mossos d’Esquadra (the police force of Catalonia), Local Police, Civil Guard, National Police and Customs Police in particular staffed and provided resources to genuine research units that are effective in suppressing such crime.

Thanks to their work, today we know that behind counterfeit goods, there are large mafia groups. They use illegal immigrants for the sale of this type of goods, obtaining huge economic benefits at the expense of private companies, creators and authors. The fraud involving the sale of these counterfeit goods causes serious damage to national economy and public finances.

SUGRAÑES recently participated in several operations against counterfeiting. A large number of counterfeit goods were seized with the essential collaboration of State security forces. We thank them for their work and professionalism.

New domain name .ONG

27.02.2015

From next 17th March, domain names under .ONG extension may be registered. 

Upon registration of a .ong domain, a .ngo domain will be also registered. The registration periods are: 

  • Sunrise period (for Trademarks registered in Trademark Clearinghouse). From 17/03/2015 to 16/04/2015. 5 registration years minimum. 
  • Landrush period (for registered trademarks). From 21/04/2015 to 05/05/2015.
  • General availability period. From 06/05/2015.

 

REQUIREMENTS

Applicants for a .ong /.NGO domain must certify to be an NGO, and to agree with the following 7 points:

1.  To be focused on acting in the public interest. Either in support of education or health, environment or human rights, members of the NGO community for the good of mankind and / or preservation of the planet. Furthermore, they do not promote discrimination or intolerance.

2. Non-profit organisations. Members of the NGO community do not acknowledge generating profits or keeping them.

3. Government influence. Although recognizing that many NGOs have important interactions with government for funding reasons (which may include receiving government funding in support of their programmes), the members of the NGO community decide their own policies. They run their own activities and they are independent from government.

4. Independent Actors. Members of the NGO community should belong to any political party or government. Participation is voluntary. 

5. Active Organizations. Members of the NGO community are actively and regularly pursuing their missions.

6. Structure. Members of the NGO community operate in a structured way (eg, according to statutes, codes of conduct, organization rules or other government structures).

7. Legal. Members of the NGO community act with integrity within the limits of the law.

If you are interested in protecting your trademark under .ONG extension, please do not hesitate to contact us.

New Composition

26.02.2015

Lluís Vilalta and Gerardo de Lucas become partners along with Pedro Sugrañes, Pau Sugrañes and Elia Sugrañes.

The current composition is:

  • Partner - President: Pedro Sugrañes
  • Partner - General Director. Head of the Trademark Department: Elia Sugrañes
  • Partner - Head of the Administration and Coordination Department: Pau Sugrañes
  • Partner - Head of the Patents Department: Lluís Vilalta
  • Partner - Head of the Legal Department: Gerardo de Lucas

Opposition against Sovaldi™ European Patent

12.02.2015

On 10th February 2015, the NGO Médecins du Monde (MDM) filed an opposition before the European Patent Office against the grant of the European Patent EP2203462-B1 to the pharmaceutical company GILEAD PHARMASSET LLC.

The EP2203462-B1 patent protects a chemical whose formula compound corresponds with the active ingredient of sofosbuvir under claim 2, according to the statement of opposition filed. Regarding claim 6, a composition comprising the said compound and a pharmaceutically acceptable medium are protected, which would be equivalent to the drug for the treatment of hepatitis C that PHARMASSET LLC markets under the name Sovaldi™.

The statement of opposition filed has been made publicly available on the website by the NGO itself. According to the same, among other reasons the claimed compound is not considered to be novel enough. Once the opposition is found admissible, GILEAD PHARMASSET LLC must reply to it providing arguments in defense of their patent.

For an European patent to be granted, the European Patent Convention (EPC) prescribes that it has to pass a previous examination phase that assesses, among other patentability requirements, whether the claimed invention is new and inventive in comparison to the disclosed before the effective date of the patent application, the so called “State of the Art” (Prior Art).

If a patent application passes successfully the referred examination phase, the patent is granted and the grant is published in the European Patent Bulletin. After that, a period of nine months begins. During this term, third parties may file an opposition against the patent, just as Médecins du Monde did. An opposition must be reasoned and it must be based on evidence that supports the reasons for which the granted patent is not considered valid (provisions of Article 100 EPC).

It is not unusual that a procedure of opposition against an European patent takes several years to be resolved. After the exchange of written arguments in defense of the patent grant and against it on the basis of the opposition filed, the involved parties are summoned to attend a hearing (“Oral Proceedings”) before the Opposition Division in charge of the case at the European Patent Office. The parties discuss outstanding key issues in detail so that the Opposition Division can issue a decision. The decision may be to maintain the patent in the form in which it was granted (favorable to the owner of the patent), to revoke the patent (favorable to the opponent) or to maintain the patent, but to introduce modifications, i.e. reducing the scope of the initial protection.

There is no doubt that the development of this case will followed closely due to the impact that the outcome may have. 

Is there life after Google News?

09.02.2015

Possibly not, for many people; but it is true that the world continues connected.

As we all know, Google’s news aggregation services (Google News) ceased to be available in Spain following the approval of the bill that intends to reform the Intellectual Property Act 1/1996, which includes, among others, a new plan concerning the regulation of news snippets in Spain. Consequently, Google stopped offering the referred services on 16th December 2014.

But the question is: How is this circumstance affecting the Spanish media? First of all, it should be considered that, although Google does not offer its news aggregation service anymore, it is still possible to find news results when using the browser. However, although Google does not longer show news snippets, it stills includes the Spanish media in the results. In this sense, users can still find news of their interest in the Google browser results.

This new situation affects not only the results of Google search, but also to the data traffic of the concerned websites. According to media themselves, there has been a marginal reduction in their results. Other sources refer that web visits dropped between 10% and 15%.

In view of these current events, what will happen next? All signs are that Spain will follow in the footsteps of other countries. It will perhaps modify (if not abolish) the bill reforming the Intellectual Property Act, which is intended to be in force by the next year (if not before).

GoPro vs. Apple. IP value

03.02.2015

Apple has recently been granted a patent in the digital camera system area (US Patent N. 8.934.045) by the USPTO (United States Patent and Trademark Office). This grant had a negative impact in the stock market value of GoPro, a company that is considered the market leader in digital cameras. Hence, shares in this company lost 13% value in the stock market.

Nevertheless, it should be emphasized that this patent belongs to the trove of Kodak patents that were purchased by Apple in 2012.

For its part, Apple refused to reveal the company’s aim in acquiring this patent. Is Apple seeking an entrée into the digital camera sector? Is the company willing to use it for improvements in photo settings on iPhone and iPad products instead? Will it be a new device part of the Apple Watch?

We will soon see. What is clear is that, as they say in Wall Street: “buy on the rumour, sell on the fact” has an impact. Even when a technology patent does not usually have such an effect in the stock market value of another company, the issue at stake in this case is not technology but a trademark’s power and, it is clear, Apple is a good example of it. 

Interview with Elia Sugrañes

02.02.2015

On Sunday 1st February, newspaper ARA published the interview with Elia Sugrañes on the occasion of the 90th anniversary of Sugrañes Patent and Trademark Office as IP professionals. You can access the interview by clicking the link below.  

Validating European patent in Morocco

29.01.2015

Starting March 1, 2015, an European patent can also be validated in Morocco, having the same legal effect as national patents and being subject to the Moroccan Patent Law. Applications filed before March 1, 2015 and European patents derived from said applications cannot be validated.

By the agreement between Morocco and the European Patent Office, this country becomes the first non-member of the European Patent Office validating the European Patent.

If you are interested in receiving further information on this regard, please do not hesitate to contact us. 

Protecting your trademark from .adult and .porn new domain name extensions

28.01.2015

Over the next few months, .ADULT and .PORN domain name extensions will be available for registration.

In view of these new domain name extensions, an abusive registration of .ADULT and .PORN domain names identical to registered trademarks by third parties could become a serious threat. They could mislead the consumer, and therefore undermine his confidence in the products and/or services protected by your trademark.

In order to avoid this risk, new registration periods aiming at protecting the rights of trademark holders that are unconnected with adult entertainment industry have been created.

  • TMCH Sunrise period (for Trademarks registered in Trademark Clearinghouse). From 02/03/2015 to 01/04/2015.
  • Sunrise B. period (for trademark holders that applied for a defensive registration of a .XXX domain name). From 06/04/2015 to 30/04/2015.
  • Domain matching period (for holders of .XXX domain names). From 06/05/2015 to 31/05/2015.
  • General availability. From 04/06/2015.

 

If you are interested in protecting your trademark from these two new domain name extensions and your trademark are already registered in the Trademark Clearinghouse, we can assist you to proceed with any of the above-mentioned proceedings.

Otherwise, if your trademark is not registered yet in the Trademark Clearinghouse, it will be necessary either:

  • to fulfil this requirement and then to proceed with the registration of .PORN .ADULT or
  • to register the domain name, if available, during the general availability period registration.

 

Should you be interested in this kind of protection, please do not hesitate to contact us and we will be glad to inform you about the requirements and costs for these proceedings. 

Increase of official fees

27.01.2015

On 1st January 2015, in accordance with the contents of the current Finance Act, the Spanish Patent and Trademark Office increased rates 1,01 % more. For its part, Sugrañes has not raised its professional fees and expenses. Therefore, our debit notes and new estimation of costs will only reflect the increase of the official fees.

Finally, we inform you that official fees for International Trademark applications also increased due to currency exchange rate.

 

PUBLICATION OF FINAL DECISIONS ON GRANTS

12.11.2014

We inform you that the final decisions on applications for grants under the 2014 call for Aids for the Promotion of Patent and Utility Model Applications corresponding to both the national programme and the international one were published yesterday.

Should you require further information, please do not hesitate to contact us.

 

 

ENFORCEMENT OF THE ORGANIC LAW 15/1999, OF DECEMBER 21st, PROTECTION OF PERSONAL DATA

27.10.2014

We inform you about the coming into force of a regulation on the protection of personal data harmonized at an European level.

Once approved, said regulation will be mandatory for the European Union Member States, and therefore, it will concern Spain. The regulation will include new accountability mechanisms controlled by the Responsible for Personal Data processing within the frame of Privacy by Design or the Impact Assessment, as well as a higher protection of ARCO rights.

We remind you that currently, failure to comply with the regulations on Protection of Personal Data can lead to several punitive consequences, to fines and to damages for the reputation and image of companies (fines up to 40.000 Euro, dissolution of the company, cancellation of the company activities for a period of 5 years maximum, closing the companies’ premises and establishments, ban on access to subsidies, among others).

Our office offers you an integral assessment service for the regularization of the Protection of Personal Data processed in the normal course of the exercise of your daily duties; as well as an adaptation to the legal system relative to transmission of information through electronic networks and commercial electronic communications (LOPD, LSSICE, rights reservation, disclaimers, legal notices, etc.).

Pursuant to the above, we remain at your disposal for any additional information that you may require.

AIDS THROUGH THE “ESTABLISHED ICEX” PLAN

27.10.2014

The Official State Bulletin of Friday 3rd October publishes the Decision of 29th  September 2014, issued by ICEX España Exportación e Inversiones (ICEX Spain Exports and Investments) calling for the granting of aids through the “Established ICEX” Plan.

The Plan aims to support internationalization projects in foreign markets by Spanish PYMES that count with their own defined Spanish trademark policy and that belong to any activity sector. They must count with a filial already established in the moment of filing the application in foreign markets, with the exception of the European Union, Norway, Switzerland and United States. The constitution date of the filial must be before the 1st January 2013.

Please find attached the link where you can find information about the requirements and the procedure to follow for your application.

NEW WEBSITE

26.10.2014

Our team in SUGRAÑES continues working to achieve the necessary tools to suit your needs.

You can consult our website, which offers a new design and contents with the aim of adapting them to the new technologies.