ELZABURU has had the pleasure of working together with the publisher Thomson-Reuters Aranzadi on Fashion Law, a pioneering work in Spain on the subject of fashion law, which was presented on 16 April.

In these short weekly summaries, the professionals at ELZABURU who participated in the work offer us a brief outline of their contributions:

Trademark protection in the fashion sector.

The first chapter deals with trademark protection in the fashion sector. It explains in a clear, straightforward and practical manner the main aspects to be taken into account when defining the most appropriate protection strategy in this sector. It provides guidance on what protection to seek, what it should cover and where protection should be sought. In addition to theoretical aspects, it also sets out a number of real examples showing the different types of trademarks available, the classes of goods and services most closely connected with fashion, and the different national, supranational and international systems of protection.

The first step in the strategy is choosing which trademark to register. This chapter provides an explanation of the characteristics of the different types of trademark, focusing on those of particular interest for the fashion sector.

In addition to choosing the most suitable trademark, it is also necessary to formulate a comprehensive and appropriately worded specification of the goods and services to be covered by the trademark. This will help to avoid any potential formal objections during the prosecution of the trademark application at the Trademark Office and will also provide a basis, once the trademark has been registered, for an effective defence of the trademark against competitors.

Another aspect that is covered is the territorial scope of the registered trademark and the best strategy to adopt in a process of internationalization of the trademark.

It also describes the main obstacles that a trademark application can encounter during prosecution, setting out numerous examples of real cases involving trademarks from the fashion sector and suggesting measures to minimise the risks in the process of registering a trademark or to overcome any potential obstacles that might arise.

The chapter also deals with an extremely important aspect, namely, monitoring and defence of a trademark with respect to new trademark filings by competitors. Only by means of proper monitoring is it possible to detect the most problematic new filings that could be detrimental to the exclusive rights in the mark and its reputation. The chapter also suggests measures for a more effective defence.

It naturally also covers strategies for trademark use in the fashion sector. In addition to the more common forms of use of a trademark, the fashion sector offers other more innovative forms, which likewise constitute valid uses of a trademark from a legal standpoint. The chapter analyses each of these possible uses and, by way of illustration, provides several real examples of trademarks from the fashion sector. The final section deals with the processes for updating trademarks and outlines the potential risks of loss of protection that these processes may entail and the best strategy to maintain full protection during the process of adapting to new uses in the marketplace.

In short, the chapter focuses on the aspects of most interest to businesspeople in this sector who are seeking to obtain or strengthen protection for their trademarks and who need to gain an idea of the possible conflict scenarios that they must bear in mind when defining their trademark strategy and their protection at national, European and international level.

Authors: Fernando Ilardia y Cristina Velasco

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Blog entries in the series Fashion Law:

1.Trademark protection in the fashion sector (23.04.2018)

2.Design protection in the fashion sector (30.04.2018)

3.Patent protection in the fashion sector (07.05.2018)

4.Protection of fashion through copyright (21.05.2018)

5. Image rights in the fashion sector (28.05.2018)

6.Fashion Law. Data Fashion (04.06.2018)

7.Counterfeiting in the fashion sector (11.06.2018)

8.Exhaustion of rights in the fashion sector (18.06.2018)

9.Corporate reputation in the fashion sector (25.06.2018)

10. Protection of the commercial imagen of a fashion brand (04.07.2018)

11. Websites, Apps & Social Networks (13.07.2018)

12. Valuation of intangible assets (17.07.2018)

13. Licensing (06.09.2018)