Protecting the outcome of your efforts since 1925

SUGRAÑES - Patents and trademarks registration

SUGRAÑES is a professional Company, which was founded at the end of the 19th century. It specialises in the protection, defence, consultation and management of all matters related to Industrial and Intellectual Property.

The Company is formed by a multidisciplinary team and has its own legal department. Indeed, this, alongside its network of trusted correspondents from around the world, enables SUGRAÑES to protect Industrial and Intellectual Property comprehensively, at both spanish and international level.

Meet the team >
Patents, trademarks and legal assessment services

The services provided by SUGRAÑES are defined by globalisation, privacy and a unique critical subjectivity, which enables the Company to achieve maximum protection and legal security for its clients.

SUGRAÑES specialises in the protection, defence, consultation and management of all matters related to its clients' Industrial and Intellectual Property Rights. This includes Patents and Utility Models, Trademarks and Trade names, Designs and Internet domain names.

Moreover, it boasts its own range of specialised technical and legal services, which form the basis of the SUGRAÑES business, enabling the Company to support Patents, Designs, Trademarks and Domain names throughout the entire decision process. This furthermore enables the Company to optimise response time and service provision, as well as enabling SUGRAÑES to provide the most appropriate means for protecting Intellectual and Industrial Property.

SUGRAÑES news about Trademarks and Patents

AMENDMENTS TO THE SPANISH TRADEMARK LAW

20.03.2019

As we advanced last November, the new trademark law came into force on 14th January.

One of the new features is the possibility of registering new types of trademarks, such as holograms, shape trademarks, sound trademarks, multimedia trademarks, position trademarks, colour per se or motion trademarks, so the first applications for motion trademarks are already arriving! In our office we will inform you of the details and requirements for registration.

Regarding the changes that affect the opposition system and that we have already advanced to you, these have not been implemented until the approval of an Execution Regulation. In spite of this delay, we do not want to fail to highlight important aspects to be taken into consideration:

In the opposition proceedings the opponent may be required to provide proofs of use of its earlier trademarks on which the opposition is based, provided that these have been registered for more than 5 years on the date on which the mark challenged with the opposition was applied for (or for which priority is claimed).

Therefore, we recommend that you keep in mind to record the use of the trademarks, either through catalogues, invoices, advertising and other means with which it can be accredited.

It is therefore advisable to conduct a review of your trademark portfolio in order to identify those trademarks that could be vulnerable because they are not in use or because there is no evidence of it. As always, we offer to assist you to draw the best strategy according to your interests.

Approval of the Draft Law amending the Spanish Trade mark Law

11.12.2018

Few changes to the Spanish trade mark Law are coming up in order to implement the Directive (EU) 2015/2436 to approximate the laws of the Member States relating to trade marks.

The Council of Ministers has recently approved the Draft Bill for the Amendment of the Spanish Trade marks Law, which foresees its entry into force, for most of the changes, on January 14, 2019. Nonetheless, the date of entry into force may vary during the parliamentary procedure for the final approval of the Amended Law.

Although the date on which the changes will finally begin to be applicable is uncertain, we set forth below the most relevant changes, separated into three blocks.

* AS REGARDS THE PROCEDURE:

Complications during the opposition process?

No doubt there will be some new issues for the opponent. Under the amended law, the applicant of a new trade mark who receives an opposition will be able to request the opponent to prove that the earlier trade mark on which the opposition is based has been genuinely used in the market during the 5 years prior to the new trade mark’s application date, provided that, on that date, the earlier trade mark had been registered for more than 5 years. The lack of evidence of genuine use will lead to the dismissal of the opposition, or to its continuance only for the products/services in relation to which evidence of use had been provided.

The amended law stipulates that also trade mark licensees will be entitled to submit opposition.

Where will cancellation or invalidity actions be submitted?

These actions, that until now had to be submitted before the Tribunals, will become direct competence of the Spanish Patents and Trade marks Office (OEPM), and so invalidity and cancellation actions (due to lack of use, or relative grounds, etc.) will have to be submitted before the OEPM directly. The exception will be when these actions are raised by the defendant as a counterclaim within trade mark infringement proceedings.

This last change will come into force 4 years later than the rest.

* AS REGARDS THE TRADE MARKS:

Who can be the owner of a trade mark?

The eligibility to own a trade mark will be extended to any natural or legal person, regardless of their nationality, residence, etc.

What can be a "trade mark"?

The graphic representation will no longer be a requirement and, theoretically, any sign that can be represented by any technology, such as smells or sounds, will be eligible for trade mark registration. However, the requirement that the sign must be clear, precise, self-sufficient, accessible, intelligible, durable and objective will undoubtedly make it difficult to register these new types of trade marks.

Well-known or renowned brands?

The difference between well-known and renowned trade marks disappears and only the concept of a renowned trade mark will remain. A trade mark will be renowned if it is proven that it has a reputation in Spain (if it is a Spanish trade mark) or in the European Union (if it is a European Union trade mark).

* AS REGARDS THE TRADE MARK OWNER'S RIGHTS

Blocking of infringing goods in transit

The owner of a trademark will be able to act against goods that come from third countries if they feature an identical sign to their trademarks, even if these goods are in transit through the Spanish market and this country is not their final destination. However, if the owner of these goods proves that, in the country of destination of the goods, the owner of the relevant trademarks does not have registered rights that allows him to prohibit its commercialization, then the right of the owner to act against these goods will decline.

Limits to trademark law 

On the one hand, the owner of a trademark will be allowed to prevent a third party from using, with immunity, a similar sign as a commercial name or company name in the market, when this could infringe its trademark, except if it is the name of the natural person and provided that it is used in accordance with honest practices in industrial and commercial matters.

On the other hand, the possibility that a trademark owner invokes his trademark rights to be exempted from liability for infringing third parties prior IP rights (whether trademarks or any other right) is expressly removed. That is to say, having a registered trademark may not protect the activity of its owner if it infringes the previous trademark (or other rights) of a third party.

We use our own cookies on our website in order to improve our service. By browsing our pages, we understand that you accept its use. More information.

Protecting the outcome of your efforts since 1925

SUGRAÑES - Patents and trademarks registration

SUGRAÑES is a professional Company, which was founded at the end of the 19th century. It specialises in the protection, defence, consultation and management of all matters related to Industrial and Intellectual Property.

The Company is formed by a multidisciplinary team and has its own legal department. Indeed, this, alongside its network of trusted correspondents from around the world, enables SUGRAÑES to protect Industrial and Intellectual Property comprehensively, at both spanish and international level.

Meet the team >
Patents, trademarks and legal assessment services

The services provided by SUGRAÑES are defined by globalisation, privacy and a unique critical subjectivity, which enables the Company to achieve maximum protection and legal security for its clients.

SUGRAÑES specialises in the protection, defence, consultation and management of all matters related to its clients' Industrial and Intellectual Property Rights. This includes Patents and Utility Models, Trademarks and Trade names, Designs and Internet domain names.

Moreover, it boasts its own range of specialised technical and legal services, which form the basis of the SUGRAÑES business, enabling the Company to support Patents, Designs, Trademarks and Domain names throughout the entire decision process. This furthermore enables the Company to optimise response time and service provision, as well as enabling SUGRAÑES to provide the most appropriate means for protecting Intellectual and Industrial Property.

SUGRAÑES news about Trademarks and Patents

AMENDMENTS TO THE SPANISH TRADEMARK LAW

20.03.2019

As we advanced last November, the new trademark law came into force on 14th January.

One of the new features is the possibility of registering new types of trademarks, such as holograms, shape trademarks, sound trademarks, multimedia trademarks, position trademarks, colour per se or motion trademarks, so the first applications for motion trademarks are already arriving! In our office we will inform you of the details and requirements for registration.

Regarding the changes that affect the opposition system and that we have already advanced to you, these have not been implemented until the approval of an Execution Regulation. In spite of this delay, we do not want to fail to highlight important aspects to be taken into consideration:

In the opposition proceedings the opponent may be required to provide proofs of use of its earlier trademarks on which the opposition is based, provided that these have been registered for more than 5 years on the date on which the mark challenged with the opposition was applied for (or for which priority is claimed).

Therefore, we recommend that you keep in mind to record the use of the trademarks, either through catalogues, invoices, advertising and other means with which it can be accredited.

It is therefore advisable to conduct a review of your trademark portfolio in order to identify those trademarks that could be vulnerable because they are not in use or because there is no evidence of it. As always, we offer to assist you to draw the best strategy according to your interests.

Approval of the Draft Law amending the Spanish Trade mark Law

11.12.2018

Few changes to the Spanish trade mark Law are coming up in order to implement the Directive (EU) 2015/2436 to approximate the laws of the Member States relating to trade marks.

The Council of Ministers has recently approved the Draft Bill for the Amendment of the Spanish Trade marks Law, which foresees its entry into force, for most of the changes, on January 14, 2019. Nonetheless, the date of entry into force may vary during the parliamentary procedure for the final approval of the Amended Law.

Although the date on which the changes will finally begin to be applicable is uncertain, we set forth below the most relevant changes, separated into three blocks.

* AS REGARDS THE PROCEDURE:

Complications during the opposition process?

No doubt there will be some new issues for the opponent. Under the amended law, the applicant of a new trade mark who receives an opposition will be able to request the opponent to prove that the earlier trade mark on which the opposition is based has been genuinely used in the market during the 5 years prior to the new trade mark’s application date, provided that, on that date, the earlier trade mark had been registered for more than 5 years. The lack of evidence of genuine use will lead to the dismissal of the opposition, or to its continuance only for the products/services in relation to which evidence of use had been provided.

The amended law stipulates that also trade mark licensees will be entitled to submit opposition.

Where will cancellation or invalidity actions be submitted?

These actions, that until now had to be submitted before the Tribunals, will become direct competence of the Spanish Patents and Trade marks Office (OEPM), and so invalidity and cancellation actions (due to lack of use, or relative grounds, etc.) will have to be submitted before the OEPM directly. The exception will be when these actions are raised by the defendant as a counterclaim within trade mark infringement proceedings.

This last change will come into force 4 years later than the rest.

* AS REGARDS THE TRADE MARKS:

Who can be the owner of a trade mark?

The eligibility to own a trade mark will be extended to any natural or legal person, regardless of their nationality, residence, etc.

What can be a "trade mark"?

The graphic representation will no longer be a requirement and, theoretically, any sign that can be represented by any technology, such as smells or sounds, will be eligible for trade mark registration. However, the requirement that the sign must be clear, precise, self-sufficient, accessible, intelligible, durable and objective will undoubtedly make it difficult to register these new types of trade marks.

Well-known or renowned brands?

The difference between well-known and renowned trade marks disappears and only the concept of a renowned trade mark will remain. A trade mark will be renowned if it is proven that it has a reputation in Spain (if it is a Spanish trade mark) or in the European Union (if it is a European Union trade mark).

* AS REGARDS THE TRADE MARK OWNER'S RIGHTS

Blocking of infringing goods in transit

The owner of a trademark will be able to act against goods that come from third countries if they feature an identical sign to their trademarks, even if these goods are in transit through the Spanish market and this country is not their final destination. However, if the owner of these goods proves that, in the country of destination of the goods, the owner of the relevant trademarks does not have registered rights that allows him to prohibit its commercialization, then the right of the owner to act against these goods will decline.

Limits to trademark law 

On the one hand, the owner of a trademark will be allowed to prevent a third party from using, with immunity, a similar sign as a commercial name or company name in the market, when this could infringe its trademark, except if it is the name of the natural person and provided that it is used in accordance with honest practices in industrial and commercial matters.

On the other hand, the possibility that a trademark owner invokes his trademark rights to be exempted from liability for infringing third parties prior IP rights (whether trademarks or any other right) is expressly removed. That is to say, having a registered trademark may not protect the activity of its owner if it infringes the previous trademark (or other rights) of a third party.

We use our own cookies on our website in order to improve our service. By browsing our pages, we understand that you accept its use. More information.