The Eurasian Patent Organization is an international organization created in 1995 that manages through the Eurasian Patent Office (EAPO) the protection of inventions and industrial designs for several of the Contracting States of the Eurasian Economic Union (EAEU) through the Eurasian patent. We talked about its origins in previous entries of the blog.

Patentes euroasiáticas

It is a regional patent for the protection of inventions that allows unifying the application, examination and granting process of a patent for all the member States of the Eurasian Patent Organization. At the moment it is made up of 8 states, after the departure of Moldova in 2011.

The current member states are: Armenia, Azerbaijan, Belarus,Kazakhstan, Kyrgyzstan, Tajikistan, Turkmenistan and Russia.

Eurasian designs

From June 1st, 2021 the Eurasian Patent Office has started processing industrial design applications. In this way, it is possible to obtain protection for a design simultaneously for several of the Member States.

At this time these countries are: Azerbaijan, Armenia, Kazakstan, Kyrgyzstan, Russia, Tajikistan. In the coming months the entry into force of the agreement with Belarus to join this design granting system is expected.

Eurasian trademarks: a system about to come into force

The Eurasian Economic Union (EAEU) Trademark Treaty introduces a new regional system for the protection of trademarks and appellations of origin. It was signed in February 2020 by five member states: Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia. Through the Treaty, a unified system for filing and registering trademarks and appellations of origin within the member states is created.

Despite entering into force on April 26th, 2021, it is not yet available to applicants and is expected to start operating around July 2022.

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Although the exit is effective on February 1, 2020, as regard to Industrial Property rights, the key date will be December 31, 2020, the date on which the so-called “transition period” will end. Until then, European Union legislation regarding the protection of Industrial Property will remain in force for the United Kingdom.

In this article we are going to shed some light in regards to Industrial Property rights.

Patents

The scenario regarding the protection of inventions remains intact. The United Kingdom maintains its system for the protection of inventions through national patents and continues to be part of the rest of the international agreements signed to date in this field, among which are: The PCT (Patent Cooperation Treaty) and the European Patent Convention( EPC).

It never hurts to remember that the European Patent Convention is an international agreement not subject to the legislation of the European Union. This agreement far exceeds the territorial scope of the European Union. It is currently signed by 38 countries and its protection can be extended through validation agreements to countries such as Morocco or Cambodia. So, despite its name, the European Patent is not a figure subject to the regulations of the European Union.

In conclusion, in what it refers to patent rights, everything remains the same.

Trademarks

Trademarks with effect in the United Kingdom can be divided into two types:

A. Trademarks in the United Kingdom and International trademarks designating the United Kingdom.

These rights are not going to be affected at all.

B. Trademarks of the European Union and International Trademarks that designate the European Union.

These trademarks are the ones that will suffer the effect of Brexit, which will affect them differently depending on whether by the key date of December 31, 2020 these registrations are granted or are still pending.

♦ Granted rights

The United Kingdom will proceed to issue titles equivalentto those already registered within the framework of the European Union. These titles will not have an additional cost to holders, and the application dates, priority will be maintained… corresponding to them.

♦ Pending cases

For the cases that are still pending December 31, 2020it will be necessary to file an equivalent application in the United Kingdom to qualify for protection in that territory. This will imply management and representation expenses for applicants. Of course, the date of application will be respected, that of submission to the EUIPO (Office of Intellectual Property of the European Union). The deadline for submitting these new applications in the United Kingdom will be 9 months.

Designs

We find a practically identical situation to that of the brands.

A. Designs in the United Kingdom and International Designs that designate the United Kingdom

These rights are not going to be affected at all.

B. European Union Designs and International Designs that designate the European Union.

All of the above already mention for trademarks apply here. Of course, we must bear in mind that the processing times in the case of designs are infinitely shorter than for brands. In fact, a European Union design can be granted in just 1 or 2 days after its request if no formal defects are detected in the application. Therefore, it will be relatively easy to prevent a European Union design application from being processed on December 31, 2020, if we have planned our protection strategy well.

Brexit is here and 2020 will be a year to update our portfolio of trademarks and designs. We must plan our protection strategy for the moment of truth, December 31, 2020.

From San Martin we are at your disposal to advise you on the management of your portfolio of trademarks and designs.

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Its entry shall have effect as from 27 December 2019.

To know more, click here.

Welcome¡

If you want to know more about how to protect your trademarks internationally, contact us, we will be happy to assist you.

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Beyond these traditional signs (the denominations, the logos and their combination) the legislation in the matter of trademarks allows to register a wide variety of distinctive signs that do not fit into these categories. These are options that we do not always have in mind, such as three-dimensional, sound or color trademarks.In fact, after the recent reform of the Law on Trademarks, the range of possibilities expands and new types of trademarks appear, such as holograms or movement marks.

If you are currently defining your brand image or thinking about how to update it, it is key to keep in mind all the types of trademarks available so you can decide which one best fits your product or service. Because choosing the right type of trademark can really make a difference.

Check out all the options you have and if you have any doubt,here we are to advise you.

TYPES OF TRADEMARKS

Three-dimensional trademark

Have you thought that your own product could be your brand?

There are many examples of brands whose products are perfectly recognizable by their shape, size and design. These are the cases where the packaging or the external appearance of the product are so characteristic that we can know what product it is without seeing the brand name of the company that produces it. The example we all have in mind is Coca-Cola bottle, completely iconic, even though it has evolved over the years. But this is not the only case, nor the only area in which we find this type of three-dimensional brands, and here we have some other examples:

M3713888(X) – “SOLIMON” – DERIVADOS CITRICOS, S.A. and M3733092(6) –“THE RUSTIK BAKERY” – BIMBO, S.A

Position trademark

Because sometimes the important thing is where the brand appears.

And this is what is protected by position trademarks, a symbol or a logo but linked to the specific position where is placed in the product. This type of brands appears regularly in footwear, accessories and clothing, so if your products are of this type, think if a position mark may be the right choice for you.

EUTM 017901400 – Esquitino Payá, Daniel Franklin

Pattern trademark

It is not necessary to be Louis Vuitton to dress our products with our names.

When we want to imprint our brand on clothes, bags, jewelry or on the packaging of our products, a pattern trademark can help us stand out and make our brand memorable for our customers, using such a resource as simply as repetition. We can opt for a pattern trademark if we find the right design.

EUTM 17418121 – LA FOURNEE DOREE (société par actions simplifiée)

Color trademark

Can a color be a brand?

Maybe not at first glance, but with time and by making a consistent and homogeneous use of our corporate image we can get the public to identify a specific product or service with a combination of colors, or even with a single color. If this is our case, if the color is enough to reveal the business origin of our products or services, we can consider protecting those corporate colors as a trademark.

EUTM 008148934 – Duracell Batteries BVBA

Sound trademark

Let’s take advantage of that indelible memory that sounds generate and protect how we sound.

When we hear the sound of a Harley Davidson’s engine we don’t need to see it to know what it is. The same with Windows startup music, which is played every day when you turn on your computer. Why don´t you consider protecting the sounds associated with your product or the services you offer as a trademark? Because nobody can deny how persistent a melody, a sound or a song can become in our memory.

EUTM 012438628 – TWENTIETH CENTURY FOX FILM CORPORATION

Don’t you know what music it is? Click here. Let´s see if you recognize it!

Movement trademark

Currently most of the marketing campaigns are carried out through audiovisual media, where moving images and sounds are combined. The movement trademarks allow us to better use of these broadcast media and offer the public an image and sound endowed with dynamism … the perfect combination to be memorable. Do you want to check it?. Click here:

EUTM 017894840 – Vodafone Group Public Limited Company

Hologram trademark

Perhaps the least used of the types of trademarks that we can register are holographic trademarks, because they are quite unknown or simply because they do not currently have much diffusion. All in all some companies are registering this type of brands. Time will tell if they end up being part of our daily life. Meanwhile, here you have an example: EUTM 017993401 – Google LLC.

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Althought the Spanish Patent and Trademark Office (OEPM) makes available to the applicant extensive information and tools for submitting trademark applications in Spain, the truth is that the process is not exempt of difficulties, in view of the notification of defects that are published everyday in the Official Gazette of the Industrial Property.

Next we address the 5 most frequent mistakes when applying for a trademark and how to avoid them:

1. Selecting a generic name

First time applicants tend to select names that describe the activity they perform or the products they sell. It does not always have to do with the lack of ideas, because, who has not thought of the great idea of ​​being unique that can use the name of the product that sells ?. Something like being the only seller of milk that can use the word “milk” for its products. Knowing these temptations, the legislators established that it is not possible to register trademarks that are constituted in full by the denominations that serve to describe the products or services they designate. Your brand should allow you to differentiate yourself from your competitors, stand out in the market.

So forget about generic names and select a name or an image that is truly original and distinct.

2. Not defining (well) what you want to use the trademark for

When we submit the trademark application we must indicate what we want to use the selected name or logo for.

At this point, every applicant has a clear idea about their business, so this requirement should not be problematic. However, when defining the use of our brand, we must indicate the type of products or services we offer according to a specific classification, the Nice classification. In this classification, products and services appear separately, and grouped into different categories. The dificulty here lies in fitting our activity into pre-established categories without leaving us anything along the way. And, although we see our company as a unit, the truth is that we may be developing activities or offering products or services that appear in different “classes” of this Nice classification.

3. Not having legal capacity to be a right holder

The applicant for a trademark must always be a natural or legal person. One or more, since there is also the possibility of a trademark being requested by several persons at the same time. To prove this capacity we must indicate in the application the NIF or NIE of the applicant.

Although this seems an easy requirement to fulfill, we must remember that some figures, such as communities of property, lack their own legal personality and therefore cannot apply for a trademark.

4. Not filling in the request correctly

Official forms can be “intimidating” when you face them for the first time. We get nervous and end up messing up in the simplest way: write the name of our brand in the box where it corresponds, that the denomination we write exactly matches the denomination that appears in the graphic representation of the brand. Sometimes, trying to complete all the fields of the request instance, we fill in unnecessary sections with superfluous information. Other times we forget to complete indispensable fields.

And although it seems ackward, incompletely or incorrectly filling out the application for the trademark is one of the most common causes of suspense. So check once, twice and three times before submitting your application.

5. Not performing a previous search

One of the biggest headaches we can have when registering our trademark is that, when we have the application submitted and our business is running, a previous rights holder appears with a brand very similar to ours for products and / or services similar to those we offer; and presents an opposition to the Spanish Patent and Trademark Office against the grant of our trademark.

Although there is always the possibility of counterargument defending our brand and its uniqueness, the truth is that these situations can jeopardize one of the foundations of our business: our image.

Losts Investments in advertising and marketing; expenses in design, packaging and even products that have already been marketed with our brand; Web domains, business cards … there are so many places where our brand makes us visible!

Searching for another denomination, another image, another logo and starting from scratch the registration process is a waste of time and money that we can avoid by carrying out an exhaustive search of the previous registrations of trademarks and trade names that exist in Spain that may conflict with the one we have chosen. And for that it is not enough to make sure that there is no identical brand to ours, but we must also check that there are no similar brands with risk of confusion.

So if you are thinking of applying for a trademark and desire to avoid problems, have the specialized advice of an Industrial Property Agent and contact us

We accompany you throughout the registration process, from the choice of the brand to its registration. So you only have to worry about what really matters to you, your business.

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As far as the parties have expressed their commitment not to harm the interests of rightholders under current Community legislation. These rights encompass European Union trade marks and Community designs.

Once the UK leaves the European Union, European Union trade marks and Community designs will no longer have an effect in that territory. However, measures have been envisaged to ensure that the holders of these registries remain their rights intact. However, subject to UK national legislation.

The Brexit agreement envisages a transitional period to carry out the necessary actions in order to ensure the rights of the holders. The possibility of an unarranged exit only seems to advance those same measures, eliminating the transition period.

European Union trade marks and Community designs granted

There are still many unknowns on the table, but all points to the UK being issued national trade mark titles and designs equivalent to those already registered within the European Union. These titles will not have an additional cost to holders, and the application dates, priority will be maintained… corresponding to them.

Applications pending at the time of Brexit

For cases still in process at the time when the UK’s exit from the European Union takes place, the issue is more complex. In that case it will be necessary to make an equivalent application in the United Kingdom, which will mean management and representation costs for applicants. The deadline for submitting these new applications in the UK shall be 9 months from the date of Brexit. In any case, it will be respected as the date of application, the date of filing with the EUIPO (European Union Intellectual Property Office).

International registration

We must not forget that these changes will also affect international brands and international designs designated by the European Union.
 

It’s time to review our portfolio of trademarks and designs in the European Union!

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