ELZABURU Blog - Industrial and Intellectual Property

Tag Archives: Trademarks

Fashion Law. Trademark protection in the fashion sector (I)

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

Visit our website: http://www.elzaburu.es/en

 

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)

An oddity: The official fee for rehabilitation in the event of non-use of a trademark in Honduras

The Republic of Honduras in Central America is somewhat unusual in its approach to certain aspects of trademark protection.

Article 106 of the country’s Industrial Property Act provides for an optional means of protection for owners who have failed to make use of their trademarks, enabling them to safeguard their marks from the risk of cancellation on that ground by paying what is known as a “non-use rehabilitation fee”.

As one might typically expect, trademarks in Honduras must be put to use in the marketplace. However, the possibility of covering for non-use through the payment of a fee is something that can perhaps be considered almost exclusive to Honduras.

A cancellation action may be brought in Honduras whenever a mark is not in use and the plaintiff knows that there has been no use thereof during the preceding three years and that the owner has not paid the rehabilitation fee during that time.

Thus, in the event of non-use of a trademark over three consecutive years, it is highly advisable to pay the rehabilitation fee. It is similarly advisable to pay that fee in a situation where, although the mark has been used, documentary evidence of that use is not available.

In practice, since there is a legally established provision that enables trademark owners to avoid non-use cancellation through the payment of a fee which is simple and also inexpensive (the official fees amount to approximately 25€), it is recommended to pay the fee, for safety’s sake, for all periods where there has been no use of a mark.

 

Author: Cristina Arroyo

Visit our website: http://www.elzaburu.es/en

Trademarks in Iraq. Re filing of main interest trademarks

As if it had ever been out of the spotlight in recent times, Iraq is once again in the international news: for the first time since the commencement of the war against ISIS, the United States has started to withdraw troops from the country.

I have paused for a moment over this piece of news, which could have gone almost unnoticed in the midst of extensive coverage of the unsettled political situation and the heavy snowfalls in Spain, to reflect on the scope and unimaginable consequences of a crisis which, on its various fronts, has lasted for decades.

I can clearly recall the impact that the news of the bombing of Iraq by the United States, towards the end of the nineties, had on me when I was practically still a girl. At that time I was not able to comprehend the reasons for what was happening or to grasp the implications. Nor, I fear, would I be able to do so now, twenty years later. I even find it hard to envisage the conditions in which our profession may be practiced in such a scenario. Conflicts affect all aspects of life and, although this may seem of little significance within the broader context, therefore extend also to intellectual property, to trademarks, to the governmental institutions and agencies which administer them, to local officers and practitioners, to right holders and interested third parties, even to communications, postal services and technology, and to physical files which may disappear or be destroyed.

I can well appreciate that in this scenario priorities may be hard to establish and it is for this reason that I am starting to see a justification for the decision, of which we have recently learned, taken by the Iraqi Trademark Office to “wipe the slate clean”. Thus, out of what I take to be a desire to make a fresh start after the disaster, the Office has implemented a new procedure for the registration of trademarks in which the order of some of the principal steps has been reversed. Now, all applications must, at the outset, successfully undergo prior examination. Only then will they be deemed to have been officially filed. Subsequently, they will be published and registered.

This, in itself, would not have been of such relevance to our profession had it not been accompanied by a further decision to suspend the prosecution of those trademark applications previously filed under the former law and practice. It appears that the owners of those applications will have no option but to re-file, while at least retaining their original priority during the registration proceeding of the new application.

It seems rather unlikely that the suspended applications will be reactivated, particularly in view of the fact that on 29 January 2018 – according to our sources – the Iraqi Trademark Office started sending out notifications to their owners inviting them to re-file and warning them that their rights could otherwise be lost.

While this news should be viewed with a certain degree of reservation, given that the information emerging is not uniform and other opinions have also been expressed, it would appear advisable in the circumstances for trademark owners to review their main interests in Iraq and, for safety’s sake, to re-file in cases where a previous application for a mark of fundamental importance may be affected by the suspension process.

Author: Cristina Arroyo

Visit our website: http://www.elzaburu.es/en

Venezuela: Recommended to pay official fees for trademarks in good time before the due date

In Venezuela, as a consequence of the Partial Reform of the Stamp Duties Act (Article 6 of Decree No. 1398) in 2015, there has been a significant increase in theofficial fees for procedures for registered rights.

The Reform has also complicated the handling of payment of fees for registration, renewal and recordals of changes of ownership, changes of address and licences in the area of trademarks.

Experience has shown us that in Venezuela steps must be taken as far in advance of the due date as possible, given that payments of fees must be transferred to the account of the Autonomous Intellectual Property Service (SAPI) and once the transfer has been completed, the transfer receipt must be officially stamped. It is not uncommon to encounter extraordinary bureaucratic obstacles, which lead to delays.

Furthermore, the U.S. Government recently imposed economic sanctions on Venezuela, which also have an impact in the field of trademarks. The Office of Foreign Assets Control (OFAC) is monitoring transactions made in dollars to accounts in Venezuela, which can lead to considerable delays in the completion of payments. These obstacles can have significant consequences for trademark rights. If we consider, for example, the renewal procedure, in relation to which there are no provisions under Venezuelan legislation for a grace period beyond the expiry date, the payment of the official fee (which for one trademark in a single class currently amounts to 3.000 USD) must be duly confirmed by the SAPI prior to the expiry date of the trademark, otherwise it will be declared abandoned.

It is therefore advisable to keep in mind that in Venezuela, with respect to those procedures requiring payment of a fee affected by Article 6 of Decree No. 1398, it is necessary to act well in advance of the deadline.

Author: Cristina Arroyo
Visit our website: http://www.elzaburu.es/en

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