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Experts call for a reduction in the gap between marketing and legal departments when a brand is launched
Experts call for a reduction in the gap between marketing and legal departments when a brand is launched

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Marketing marcas nueva ley

The Asociación de Marketing de España, in cooperation with PONS IP, held a conference this morning at Fundación PONS geared at analyzing the impact of the new Trademark Law on the marketing strategies of companies.

During the meeting, the changes and opportunities brought about by the Trademark Law reform that came into force on January 1st were analyzed. Nuria Marcos, Pons IP General Manager, welcomed attendees and proceeded to explain that the new regulations have made companies more sensitive to marketing departments because it grants greater protection to their brand concept.

From a marketing perspective, Víctor Conde, General Manager at the Asociación de Marketing de España, affirmed that brand is everything: “It is the symbol, and the aspect that differentiates one company from another.” Conde has also called for a greater mainstreaming of marketing in the business context. “Marketing is undeniably focused and required to work with all areas within the company; there is no possibility for the Marketing area to develop its value without the support from other departments,” stated Conde.

Carmen González, Trademark Manager at PONS IP, began her lecture by highlighting the main news under the revised Trademark Law. Firstly, she pointed out that one of the most notable changes has been the disappearance of brand concept as it was known until now. “The requirement of graphical representation disappears, so a whole range of possibilities is open when it comes to registering a trademark. You can hold the exclusive right to a number of signs that differentiate you from the market, which you would not have been able to register before. We’re still talking about trademarks here, but now we are talking about many more types of registration, because we are now going to continue to protect trademarks whether of color, sound, movement, figurative, denominative, positional, three-dimensional, pattern, etc.”

The PONS IP Trademark Manager went on to highlight a second change: “In opposition proceedings, it is necessary to ask for the proof of use.” In this regard, she made a few recommendations, including: Carrying out a brand position analysis, establishing a coordinated work plan between Marketing and Legal, creating a family of brands, and preventing the diffusion of the brand and free-riding.

Carmen González concluded by pointing out that the Legal department needs to review the brands from the Marketing department’s perspective to prevent discrepancies between both areas.

Pablo López, General Manager at Renowned Trademarks Forum, talked about renown when it comes to brands. López began with a statement, saying that notorious trademarks have disappeared. “The modification of the law means that now we only talk about renowned trademarks as opposed to the old law that referred to both notorious trademarks and renowned trademarks. Notorious trademarks were known in the industry of activity, while renowned trademarks were those known by society as a whole,” explained López. However, the new regulations also protect notorious trademarks: “Now you can be renowned in your industry or category, thus, we talk about intensity or renown,” argued the general director of the Renowned Trademarks Forum. López explained that the criteria for evaluating the renown of a brand are: Brand awareness, market share, intensity of use through sales volume, and turnover, extent of brand’s graphical use, length of time brand has been used, and activities to reinforce brand awareness.

Lourdes Velasco, Head of the National Distinctive Signs Examination area at SPTO, Patent and Trademark Office focused her lecture on the implementation of the new regulations. Velasco reviewed the key dates of the new law, highlighting 14 January 2023, the date on which the SPTO’s direct jurisdiction will come into force to deal with requests for nullity and expiration of distinctive signs. “Until the SPTO acquires the competences to declare the nullity or expiration of signs, it will be under civil jurisdiction, but substantive rules governing the matter contained in the new Section VI of the Trademark Act will apply,” stated the expert. Velasco also wanted to clarify that anyone can be a trademark owner as of January 14, but if a citizen does not reside in a country, they can be a trademark owner but are required to have a representative.

With respect to the opposition proceeding, there is a detailed legitimacy regulation to file oppositions, which makes a distinction between when it is based on absolute prohibitions and when it is based on relative prohibitions. As for absolute prohibitions, “there is a direct reference to the legal instruments concerning denominations of origin and geographical indications,” explained Velasco.

Jorge Camman, Director of Innovation and Verbal Identity at Interbrand, mentioned the importance of the brand and, through several examples, explained how the denominative and the figurative concepts, when used together, can be a very powerful weapon for brand protection. “The brand lives everywhere. There are brands that excite us, that cause us to have a behavior, such as Nike’s copy (Just to do it), and that irreverence comes to life not only through the slogan, but it is also reflected in everything the company does. As Jeff Bezos said, your brand is what others say about you when you are not present,” stated Camman. The Interbrand executive concluded by noting that, “brands create stories that persist over time, anticipate change, seek differentiation, generate passion, change rules, reflect on consumer behavior, comprehend new ways of relating to the client, and make you dream. The brand sells an attitude, not just an aptitude.”

José Sierras, Brand Manager at Hannibal Laguna, detailed the fashion firm’s success story. Sierras spoke about the beginnings of the brand and the work required to register it: “Hannibal’s parents had a children’s fashion firm. As they began to develop their own patterns and the brand started to grow, they understood that they need to do something to differentiate themselves but, when it came to registering the brand, they realized how complicated was to register a word mark under the Hannibal Laguna label. That led us to turn to PONS, and we solved the problem.”

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