Patents & Trademarks / Intellectual Property

In trade mark law, the central issue is the likelihood of confusion: the probability that the public will believe that two products come from the same company or from related companies. Law 17/2001 prohibits the registration of a sign which, due to its resemblance to an earlier trade mark and the similarity of the goods, is likely to give rise to such confusion. The comparison is an overall assessment; it takes into account the overall impression at the visual, phonetic and conceptual levels, the dominant element and the interdependence between signs and goods. This is the approach followed by the Trade Mark Analyser.

In the field of patents, Law 24/2015 requires worldwide novelty, an inventive step and industrial applicability, and excludes, amongst other things, computer programmes as such, which are protected under intellectual property law. In copyright law, the requirement is originality in accordance with the consolidated text of the Intellectual Property Act; plagiarism is assessed by comparing the substance of the works, not the ideas, which cannot be appropriated.

An unfavourable result – or even one that is simply inconclusive – suggests that a professional analysis should be carried out before filing, launching or opposing an application. The tools do not consult the OEPM or the EUIPO; an availability search and an opinion on the case remain essential where investment or a conflict of interest is at stake.

What should I do if another brand is similar to mine?

The first step is to check who filed their application first and for which classes, because in trade mark law, priority determines almost everything. If the similar sign is a recent application, the natural course of action is to file an opposition, within two months of its publication by the OEPM, or within three months by the EUIPO. The OEPM does not reject applications ex officio on the basis of earlier trade marks; it merely notifies their proprietors, so it is the proprietor’s own responsibility to defend the registration. Hence the importance of systematic monitoring.

If the similar trade mark is already registered or in use, the available remedies are a preliminary injunction, invalidity proceedings and infringement proceedings, including an order to cease infringement and compensation. Before taking any action, it is advisable to gather evidence of use and consider negotiating a coexistence agreement, which is often less costly than litigation.

In a start-up, the brand, the software and trade secrets underpin the valuation, and ownership of these is one of the first things an investor examines during due diligence. If you need to organise and protect these assets, take a look at our start-ups section. See the practice area.