Well-known trademarks and their protection

Pursuant to the Trademark Law, all signs, especially words, including names of people, drawings, letters, figures, colors, the shape of the product or its packaging, or sounds, may constitute trademarks provided that such signs are appropriate for:

a) distinguish the products or services of a company from those of other companies and
b) be represented in the Trademark Registry in a way that allows the competent authorities and the general public to determine the clear and precise object of the protection granted to its owner.

Before Royal Decree Law 23/2018, of December 21, on the transposition of directives in the field of trademarks, rail transport and combined travel and related travel services, of December 27, 2018, proceeded to reform the Law 17/2001, we found the concepts of well-known trademarks and renowned trademarks.

With this reform, article 8 of the Trademark Law modifies its wording, and the distinction between a well-known and renowned trademark or trade name disappears, providing for only one category, that of reputation in Spain, if it is a Spanish trademark and the of renown in the European Union, if it is a Union trademark.

The difference between a well-known and renowned trademark varied depending on the sector in which the trademark was known, being a well-known trademark when the trademark was known “by the relevant sector of the public for which the products, services or activities that distinguish are intended” , while it was a renowned trademark when the trademark or trade name was known “by the general public”.

According to current article 8 of the same Law, signs that are identical or similar to a previous trademark cannot be registered as trademarks, regardless of whether the products or services that it intends to protect are identical or similar to those protected by the previous trademark, when it is renowned in Spain or, if it is a Union brand, in the European Union.

Therefore, well-known trademark are those trademark known by a significant part of the target audience of the products or services covered by it. In order to determine the existing knowledge in the public, the market share held by the trademark, the intensity, the geographical extension and the duration of its use, as well as the importance of the investments made by the company for promote it.

It is necessary, therefore, that in order for us to be able to deal with a trademark that is renowned, there must be a significant market share or a leadership position in the market that proves the importance of the trademark in its sector, a prolonged and constant intensity of use with a volume of sales and a turnover in accordance with the reputation, an extension that covers the entire national territory, as well as having invested in intense and broad advertising campaigns.

What is achieved by recognizing the reputation in these trademarks is to allow them to fulfill their various functions, guaranteeing business competition and transparency, facilitating the protection of the trademark owner against acts of unfair competition, and protecting the rights and interests of consumers  among other.

The expanded and reinforced protection enjoyed by renowned trademarks is the result of the effort made by their owners to achieve that reputation, to position their distinctive signs as a mirror of their business values.

At CASAS ASIN we work with special tenacity and detail on the reputation of the trademarks that trust us, collecting evidence, arguing the writings and enriching each procedure with previous resolutions so that the reputation of the trademarks is declared first and consolidated later.