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Interview: Sonia Santos on trade mark reform and enforcement in Spain

As part of the Women in IP series, Alice O’Donkor speaks to Spanish IP lawyer Sonia Santos about forthcoming reform in national trade mark proceedings and effective ways to deal with trade mark infringement

Santos has been at Grau & Angulo since the very beginning. Before joining the firm in 2003, she worked as a general practice lawyer where she developed a passion for trade marks. Santos went on to join Alejandro Angulo’s IP team at another firm before teaming up with him later to establish Grau & Angulo.

According to Santos, who made partner at the firm in 2008, opportunities for professional women are increasing: “The market is prepared for women in high positions in companies and law firms. All we need is confidence.”

Trade mark reform in Spain

While the majority of her experience is in trade marks, Santos has handled several unfair competition, copyright and science-related cases. In Spain, practitioners await the enforcement of a new trade mark law. In May, a draft bill on the Spanish Trade Marks Act 17/2001 was published to incorporate trade mark law reforms proposed by the European Commission.

In preparation, local judges and IP practitioners have met on a number of occasions to discuss the proposed amendments. Santos says: “One of the key things that we are not so confident about is, they want to give more relevance to the Spanish Trade Mark Office. Now in Spain, if you want to cancel or request a trade mark, you have to go to court.”

“In other European countries and if it is a European trade mark, you can actually request it before the corresponding trade mark office. This is one of the big changes that would be implemented in Spain.”

At present, cancellation and nullity actions must be filed before civil courts in judicial proceedings. Santos explains: “In many cases, although now it’s not necessary, you can file an infringement claim without requesting the nullity of the later trade mark. Usually, it’s very convenient to do both things at the same time because the evidence you use for the infringement can be also useful to support the nullity request.”

“It’s all about time”

There are doubts about whether the national trade mark office is competent to decide on cancellation and nullity actions in administrative proceedings. Santos says: “The Spanish Trade Mark Office is not used to dealing with this kind of evidence. For many years, they have been deciding on a paper basis, comparing one file with another. They were not really getting into the way the sign is used in the market – the kind of issues that civil courts are used to right now.”

It also unknown how long the average request might take after the trade mark bill is amended. For now the only option is to wait: “It’s all about time. There is a lot of case law that they can work with, but they have to get their own practice and own case law, in a way.”

“With the new law, it may happen in the same way that it’s happening at the EUIPO right now, that you can get an infringement action and a third party can request a nullity of the same trade mark that you are invoking in civil proceedings at the same time.” Many practitioners fear that this change may produce a problem, says Santos, as it means that “civil proceedings will be suspended until a decision on the validity of the trade mark is issued by the Trade Mark Office”.

“We discussed this recently at a conference with judges from the Supreme Court and the Court of Appeal of Alicante - the one hearing all cases related to European trade marks. They are also quite concerned.”

The future of EU trade mark protection

Initially, the Brexit announcement caused some chaos but, this has since calmed down, Santos says. The full impact of Brexit on the EUTM system is not known: “We’re all in the same situation,” Santos says. “Not even UK lawyers know what is going to happen,” but Santos advises trade mark owners to keep their national trade mark as well as their local trade mark to secure “double protection”.

Trade mark owners are becoming increasingly aware about the benefits of IP protection. She explains: “The appearance of the products is getting more and more important nowadays. Now, the consumer does not only look for something useful and practical, consumers are getting more into the design.”

Santos also notes an increase in registering and enforcing designs, particularly in the fashion sector: “Designs are a very valuable asset for the clients but still, of course, trade marks are most important for them because it identifies them in the market. I think that clients are more worried about what will happen with their trade marks than designs, because they will always have them in Europe regardless.”

Distinctiveness versus well-known character

Recently, the importance of brand distinction has been highlighted by a number of cases involving unconventional marks. Earlier this year, KISS rock artist Gene Simmons filed an application to protect what many recognise as the ‘rock on’ or ‘devil horns’ hand gesture. Simmons later withdrew this application. In February, Hasbro filed a trade mark application to protect the smell of its well-known putty product, Play-Doh. Kit Kat suffered a blow in May when the Court of Appeal in the UK ruled that the chocolate bar’s four-finger design held “no inherent distinctiveness”, inciting additional confusion about the definition of distinctive character.

On the enforcement of 3D and unconventional marks, Santos says: “The first thing we will have to overcome, everyone knows, is the lack of distinctive character. We will be using surveys. It’s the only way of proving distinctive character.” When it comes to unusual trade marks, such as those of a three-dimensional nature, Santos observes: “From my point of view, I think that the courts and the Trade Mark Office are mixing two completely different things: distinctiveness and well-known character because they ask that you prove the distinctiveness of a 3D trade mark with a survey.”

“We are talking about 70% of consumers recognising the owner of the product by the state of it. 70% is a huge number. It’s extremely high. If the trade mark is recognised by 70% of respondents, in my opinion, it is not because it’s distinctive, it’s because it’s well-known.” Santos argues that “the purpose of the trade mark is to identify the owner of the goods” meaning, if survey respondents are able to do that, this should prove the distinctiveness of a mark. Regarding the required percentage of recognition, Santos says: “50% should be more than enough.”

Know the market: beating infringers

Consumer surveys are “a huge investment and there is no certainty that the result will be the one you are expecting,” says Santos. She adds: “Infringers have become more sophisticated. They know more, so cases are not so clear cut. Infringements have become more borderline. It’s not so easy to make an assessment of the situation and chances of success.”

For well-known brand owners, “this is one of biggest challenges right now”. Like surveys, expert reports can be useful when defending a trade mark. Ultimately, anticipating the behaviour of the opposition is the most effective tool: “We know the type of infringer that we are dealing with so we advise the client not to extend negotiations more than necessary. If you don’t reach an agreement in three to four months and they are not replying to your cease and desist use letters - no matter how long you try, probably, you will not get anywhere.”

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