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Joaquín Ramón López Bravo – Lawyer, Industrial Property agent, representative before the EUIPO and director of Communications at HERRERO & ASOCIADOS.

The past year brought several legislative amendments to the field of Industrial Property that we will simply highlight. Patent Law 24/2015, its Implementing Regulation (RD 316/2017), amendments to the Regulations of the Patent Cooperation Treaty (PCT) (Official State Gazette, November 14th) and amendments to the Hague Agreement Concerning the International Registration of Industrial Designs (Official State Gazette, November 11th) went into full effect.

All of the above amendments are important, as our brands are increasingly powerful in the world thanks to innovation, development and design, which are protected by patents and industrial design rights. The most fundamental regulations for our collective concern the brands of the European Union, applicable to the trademark system throughout the EU territory. Indeed, Directive 2436/2015 has yet to be implemented and will modify many aspects of trademark protection in Spain. However, the entry into force of all pending aspects of Regulation 207/2009, codified as Regulation 2017/1001 on June 14th, and the publication of the Delegated (2017/1430) and Implementing (2017/1431) Regulations will directly impact trademark protection across the EU.

The Delegated Regulation (2017/1430) contains provisions that regulate a number of procedures before the European Union Intellectual Property Office (EUIPO), including opposition, revocation, invalidity, appeals, and international registrations. In addition, it addresses subjects such as the organization of the Boards of Appeal, notifications, the way to resume proceedings, the calculation of time limits, and certain provisions on representation.

The Implementing Regulation (2017/1431) covers a wide variety of procedural elements, including the submission of data required by the EUIPO Trademark Registry. It also regulates proceedings, the supporting documents to be used in them, the content of the certificate of registration, the costs in inter party proceedings, and the framework for collaboration between offices in Member States and the EUIPO with regards to intellectual property protection in Europe.

But from our perspective, certainly the most interesting aspect is the definition of new categories of trademarks and ways they can be registered. Until now, the law basically recognized four types of trademarks: word marks, (one or more words), graphical marks (one image), mixed marks (a combination of the previous two, or one or more words in an identifying typeface), and three-dimensional marks (the shape or appearance of the product or its packaging, container, etc.). This is not to say that other types of trademarks didn’t exist or couldn’t be registered. However, these kinds of trademarks were grouped into a sort of generic “everything that seems distinctive is capable of being a trademark” category.

Regulation 2017/1431 defines not only “new” trademark categories, but also how they should be represented (in any appropriate form using generally available technology, as long as it can be reproduced on the register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner). Moreover, the representation of the trademark shall define the subject matter of the registration, and the application must indicate the type of trademark being sought, which must coincide with the representation.

Among the types of trademarks, we find the ones mentioned above (word mark, graphical mark, mixed mark and three-dimensional mark), which we won’t discuss any further. We will instead focus on the other categories defined by the Regulation, which are:

  • Position mark. This mark protects the specific way in which a mark is positioned on the product (for example, a red stripe on the heel cap of a shoe).
  • Pattern mark. It consists of a set of elements which are repeated regularly, such as a print or repetitive design.
  • Color mark. It can consist of a single color without contours or a combination of colors without contours, but showing the layout of colors.
  • Sound mark. This mark protects a specific sound, and it may be represented by submitting an audio file or a musical notation.
  • Motion mark. It’s a trademark consisting of one or several elements in motion or changing position. It can be represented by submitting a video file or by a series of still sequential images that show the movement or change of position.
  • Multimedia mark. It consists of the combination of images and sound.
  • Hologram mark. It’s a mark consisting of elements with holographic characteristics, like the ones that appear on some devices to guarantee their authenticity.

The article on trademark types concludes with two non-consecutive sections. The first leaves open the possibility of other types of trademarks existing. They must comply with the requirements of representation and be accompanied by a description. The second indicates that a sample or a specimen (presumably of the product or service) shall not constitute a proper representation of a trademark. Therefore, a trademark for a three-dimensional shape must be represented with up to six different views of the product, if this is the type of trademark being sought.

The development of these regulations recognizes the fact that in our competitive, globalized world, any means to differentiate one’s goods and services from those of competition is good, and these means must be adequately protected. The distinctive character of the “new” trademark categories is debatable in some cases, but quite obvious in many others. Therefore, each case should be examined individually, and possibly using evidence that demonstrates the secondary meaning and the acquired and even inherent distinctiveness of these trademarks.

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