FAQS

Why is it necessary to manage my company’s intellectual property?

Intellectual property needs to be managed in the same way that other balance sheet assets do.

The fact that intellectual property is intangible does not make it any less significant as a company asset, with all that this status implies.

It is therefore essential to preserve the economic value of patents, trademarks and original designs, which implies:

1. Being aware of the current status of your intellectual property portfolio at all times.
2. Assessing how well this portfolio matches the company’s protection and exploitation needs.
3. Taking action to protect exclusive rights and prevent third parties from acquiring similar rights that reduce the value of your own company's portfolio of patents and trademarks.

What are trademarks and what are the advantages of registering them ®?

What is a trademark?
Trademarks are understood to be those signs (denominations, logotypes, three-dimensional forms, sounds, smells and combinations of all of these) that serve to distinguish a specific product or service from others in the market.

Why register a trademark?
Registration makes it possible to obtain the exclusive right to use the trademark thus preventing third parties from creating confusion in the market by using a registered trademark in an undesired manner.

Registration of a trademark implies the acquisition of a right of property over a distinctive sign for an indefinite period. In this manner, the trademark is also an important business asset that affects the value of the company that possesses it.

Area of geographical protection:
Options range from the most basic, i.e. a specific country, to more global forms of protection, such as international or Community trademarks .

Are domains "trademarks" for the Internet?

Domains on the Internet are the denominations that identify specific websites. As such, they constitute a form of trademark use when the website they refer to is that of a publicly recognised company, business or organisation.

The use of trademarks on the Internet, however, goes beyond Internet addresses (domains). Trademarks may be used within a website (denominations, graphics, etc.) regardless of whether or not the domain in which the website is found includes the same trademarks.

In addition, “ICANN” (the international body that regulates the registration of domain names) is making regulation of the concession of registered domain names increasingly subordinate to international trademark regulations, which, unlike regulations applied to domains, are legally binding in most OECD countries.

Summary: The registration of domains which are going to be used to identify a website for advertising purposes is recommended. Trademark registration is also recommended to protect any distinctive signs (denominations and/or graphics and/or three-dimensional forms and/or sounds) that identify products or services whose exclusive use should be protected.

Is it necessary to register "commercial names" before patent and trademark offices?

National and international regulations generally protect the rights of the proprietors of a particular business name that has been registered with the corresponding trade registers. This protection covers possible infringements by third parties who seek to register the same denominations as trademarks before patent and trademark registers. It is, however, necessary to protect commercial names as trademarks if these are used to distinguish products or services on the market.

This form of protection is necessary because a single denomination may be used to distinguish products and services that are related (but not identical) to those protected by the commercial activity of a specific company that is identified by a particular business name. In such cases, it is very difficult to have these products withdrawn from the market by claiming infringement of the rights associated with registration of a business name.

Moreover, the protection granted registered trademarks does not apply only to identical elements: it also covers any phonetic, conceptual or visual similarity that is associated with another distinctive sign and may lead to confusion among consumers in the market.

How can the right to exclusive use be protected for designs, the presentation of products and creations of form in general?

There are two ways of protecting the right to exclusive use of product designs and the form in which products are presented (packaging, etc.):

1. The "industrial model"
2. The “three-dimensional trademark”

In both cases, it is possible to obtain an exclusive right to the use of the design in question. The best choice between these alternatives will depend on the details of each case.

In this area, as in others, we recommend that an intellectual property professional be consulted, given that there are no “standard” formulas that can be generally applied. The characteristics of each case and the needs of each client should be analysed in order to select the most appropriate option.

What are inventions and how can they be patented?

The term ”inventions” refers to human creations of an original nature. In order to be patentable (subject to exclusive protection), they must:

1. Be new developments
   
   1. The requirement of “novelty” means that an invention cannot be part of what is known as the “state of technology”. In other words, it cannot concern a development that has been made public, and there must no other invention that is highly similar to that for which the patent is sought.
   2. In Spain, the condition of novelty must be worldwide if the option chosen to protect the invention is patenting. If the form of protection chosen is that of “utility model”, the novelty of the invention must apply at the national level.
2. Involve an inventive activity
   
   1. The “inventive activity” requirement means that the invention cannot be one that an expert in the area could readily derive from the existing state of technology.
3. Be susceptible of industrial application
   
   1. The “industrial application” requirement means that the invention must be one that can be applied in industry and lead to improvements in that area.