10 Prohibitions trademark

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The law prohibits the registration of certain types of marks, for violating general interests (absolute prohibitions) the private (prohibitions on).

In this post we refer to the absolute prohibitions, that are contained in Article 5 Trademark Law. Refer to signs that the public interest, can not be granted. His interpretation must be restrictively because it is a limitation of rights and the list of Article has assessed character. Its basis is the general interest: The granting of such marks, would provide a competitive advantage that hinder market access to competitors, in a manner not deserved. It is generally allow use by all companies sign freely available and preventing an employer from appropriating them exclusively. It is also intended to prevent the use of signs that may be misleading.

Comprehensive bans the registration of trademarks are revised job and have imprescriptible: action to request never expires. For prohibitions on, the limitation period is five years (art. 52 Trademark Law).

The prohibitions of Article 5 are set out below:

1.-Signs that are not distinctive and graphics

Section 5.1.a) refers to the signs that under Article 4.1 of the Act, they can not be registered as trademarks. It must be signs capable of being represented graphically (requirements for registration and publication) and must distinguish products that apply the rest of the market.

Do not allow a company to appropriate all shapes and colors of a market (Judgment Dyson, C-321/03, TJCCEE).

Olfactory marks are not allowed, taste ni touch, given the difficulty of graphic record.

2.- Signs that lacks the distinctiveness

Included in Article 5.1.b) and refer to those who lack the ability or the distinctive differentiating capacity. If not distinguish products, can not be registered as a trademark. No marks or overly simple accepted, or too complex, on the perception that an average consumer can have.

3.- Absolutely prohibited signs

Article 5.1.c) a series of signs whose registration is absolutely prohibited as are collected:

  • Descriptive signs: needed in the trade and should be available to all players. They refer to the species, quality, the amount, destination, value, geographical origin or time of collection.
  • Suggestive signs the evocative: refer to a quality of the product. Although registration is accepted in this respect despite enabling the consumer to sense the product or activity.
  • Descriptive names in foreign languages ​​and languages, than Castilian Spanish, unless the use has become common. If the meaning of the foreign word is not recognized by the average consumer, you can register.
  • Publications: Newspapers such as "El Norte de Castilla" have the right to set mark, but they can not appropriate the individual word (in this case "Castilla").
  • Compound Words: If words are common, to unite them still maintain their descriptive and thus, can not register.
  • Geographical indications of origin: Registration of descriptive marks the geographical origin is permitted if it is collective marks or certification or are requested by the Regulatory Board or the appropriate supervisory. Set out in Regulation 510/2006 of the EU Council.

4.- Signs which have become customary

Your registration prohibition set out in Article 5.1.d): This is to avoid the monopoly use by an enterprise of a term that has become generally with respect to products or services. The common or usual character of the sign must be made regarding the time at which he applied for trademark registration. For example "broker" to financial intermediaries or "Light" for products with fewer calories.

5.- Dimensional signs, forms imposed, necessary or which give substantial value to the product

Included in Article 5.1.e). Three-dimensional marks can be registered but not all forms are susceptible of registration marks, that the necessary forms, generic or common products, can not be monopolized by the "clever" entrepreneur that could record: Examples, we can mention the ban on trade mark registration forms snacks (STS 26.06.2006), or yogurt containers.

Also, you can file the forms imposed by the nature of the products themselves: Not recordable bottle wine containing no prints or patterns that distinguish it from other.

You are not allowed to register the product as a necessary to obtain a technical result, as a mechanism to "skip" the patent laws and how to register trademark, get a monopoly that can be "eternal" renewing the brand: the case for denial Philips brand consisting of three rotary heads arranged in triangles of their shavers. Nor can register forms which give substantial value to the product of ornamental or aesthetic nature that are not really differentiating the commercial origin of the product and seeking to circumvent the time limitation that gives them the intellectual property.

6.- Signs contrary to law or public policy

It takes into account the average sensitivity of the consumer to whom the goods are directed, the current laws or the violation of the social principles, political and legal that shape our society.

Registration opposite signs are also prohibited from morality as words "swear".

7.- Signs misleading

Registration of signs which are likely to mislead the public about the nature are not allowed, quality or source of the product, for example the registration of the trademark "V Vitamins Guarantee" was denied by generating an image of qualities that did not correspond to reality. Or the brand "Teka Kenya" by power applied to products that are not made of the material.

8.- The special protection for wines and spirits

Section 5.1.h) collects this special protection: Registration as trademarks of designations referring to designations of origin or geographical origin identifications are prevented.

9.- Brands contain official signs

Can not be registered as trademarks which reproduce or imitate the shield, Flag, Awards and other emblems of Spain, the Autonomous Communities, Municipalities and local entities, or are in the public interest.

10.- Exceptions acquired distinctiveness

Articles 5.2 and 5.3 it avoids the registration prohibitions, if the mark has acquired distinctiveness and differentiation has resulted from previous use by the applicant. For example, trademark registration of the phrase "Take a break" allowed by the manufacturer of chocolate bars.

In summary, the registration of a trademark is limited by a number of prohibitions. It is advisable to seek the advice of a attorney who specializes in trademark, to avoid the problems that can arise.

Have you been denied on occasion the registration of a mark by an absolute prohibition?

 

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