This work addresses, in a general way, the principle of trademark specialty and its direct link with the registration of trademark signs.
This principle is analyzed as a rule to be taken into account in the granting of exclusive rights to trademark signs, as well as the cases in which the use thereof is exceptional: well-known trademarks registered in some countries such as Spain where it is used. It extends the margin of protection of the products or services covered by that trademark, when it is demonstrated that there is some nexus between the one requested and that notorious one already registered that leads to a confusion by association, and the renowned ones. An outline is made by the main international legislative bodies related to trademark signs, as well as an analysis of what is established in the new trademark Law of Spain and the current Cuban Decree Law. A brief assessment is made of the relationship between this principle and that of confusion, both indissolubly linked.
Introduction
When referring to Industrial Property as a fundamental branch that integrates the content of Intellectual Property, it is necessary to refer to the different modalities that comprise it, fundamentally those that grant rights, and that constitute its content under study. These modalities present characteristics that allow them to be united in certain groups of families, although at the same time each one of them within the group is differentiated by its particular elements, for example, the modalities that are protected by patents and within this group, inventions are they distinguish from the rest of the modalities that comprise it; thus we have the distinctive signs and within these to the brands - distinctive sign par excellence-,that have their own characteristics that make them different from the rest of the distinctive signs that make up that family.
Among these elements, the presence of the classes - international classifier of Nice or national - of products and services to be represented in the market by these brands stands out, which makes each trademark sign have the mission of distinguishing and differentiating certain products or services in the market of other similar ones and can coexist without creating confusion in the final recipient: customer, consumer or user.
That is, what in Trademark Law is known as the specialty principle, which is aimed at determining the compatibility of identical or similar signs when they are applied in sectors of products or services that are different within a specific commercial area, that is,, allows identical brands to coexist for different products, provided that these are sufficiently different so that the risk of confusion regarding business origin does not arise.
Development
Trademarks, unlike the rest of the distinctive signs, protect only the articles for which it has been registered and nothing else, that is, the products or services that the applicant expressly reflected in the documents of the registration process and for which the corresponding national office granted exclusive rights, this being the most palpable and direct effect of the principle of trademark specialty. Hence, the same trademark can be registered by any other person to distinguish products of another class, provided that it has not acquired sufficient credit or notoriety to prevent such registration or when the products may be confused by the consumer.
From what has been raised so far, the presence of a direct and close relationship between the trademark sign as such and the products or services to be represented can be interpreted, all of which leads us to think that the exclusive rights acquired by the owner of a trademark are not they refer to the sign in the abstract but to the relationship between the sign and the products or services it identifies; and this is what is typified as a trademark specialty. Element that is unique and inherent to brands.
As Professor Fernández-Novoa said in this regard: “the trademark does not lie in an abstractly considered sign, but is a sign placed in relation to one or more classes of products or services. At the same time, the right over the trademark does not fall on a sign per se, but on a sign placed in relation to one or more classes of products or services. " Each brand is born and immediately establishes, by its very nature, a relationship to a previously determined product.
From what the authors of this work have considered, a brand is not considered as such, only and when it is linked to certain products or services - specialty-, when it comes to distinguish and differentiate them in the market from other similar ones that they have a different business origin; The act of registration alone is not enough; a series of factors must be combined to allow that trademark to gain a space in the market and in the minds of consumers with respect to the products or services it represents. Hence, the possibility given by many legal systems of being able to cancel, either ex officio or at the request of the interested party (3rd parties), a registration for non-use of the sign in the territory where it was granted (expiration due to non-use), as long as the established time elapses,which for the Cuban case is three uninterrupted years.
The principle of specialty allows a trademark that is registered for meat products, for example, to coexist with another similar or identical one dedicated to beverages and with another, identifying edible salt within the same commercial territory and all belonging to different business origins, since the products that they represent in each case are of different natures, so the brands will be too.
In the Cuban legal system, Decree Law No. 203 of the year 2000 “On Trademarks and other distinctive signs”, recognizes as one of the prohibitions related to the registration of trademark signs that related to the principle of specialty and although it does not expressly refer, in the content of the rule (art. 17.1 - a-), to the name of the same, if the presence of this is clear in terms of describing it and I quote: "a) the sign is identical to a registered trademark or in the process of registration in the country by a third party from a previous date, for the same products or services; " thus avoiding that the rights of third parties that are possessed prior to the submitted application and the reason for this prohibition are affected.
This normative act also establishes the possibility that the holders of trademark signs have to reduce or limit the list of products or services to be represented by said sign, through the Modification process - at any time in the life of the sign- or of the Renewal - at the time of the expiration of its validity- (art. 111.1 and 49.2 respectively). Actions that do not affect the rights of third parties, on the contrary, give the possibility of opening new rights to third parties for that territory. However, different effects produce the act of trying to expand that list by the owner of the sign, an act that only proceeds through a new application for registration,since a formal and substantive examination is required before the corresponding Office to guarantee that rights granted to third parties are not affected, that is, to be in accordance with the principle of specialty.
For its part, the Paris Convention of 1883 "For the protection of Industrial Property", amended in 1979, in its article 6 quinquies -B-1, establishes as one of the prohibitions the registration or invalidation of a trademark in a country of the Union; "When they are capable of affecting rights acquired by third parties in the country where protection is claimed", where it clearly interprets the presence of the principle of trademark specialty.
The 1994 Agreement on Trade-Related Aspects of Intellectual Property Rights, hereinafter TRIPS, in accordance with the Paris postulates, establishes respect for the provisions of Article 6 quinquies -B-1, recognizing the prohibitions on registration of trademarks enunciated by this Agreement, also giving the possibility that there may be new prohibitions different from those already mentioned, but that do not contravene them (art. 15.2 in relation to art. 15.1 of TRIPS).
The principle of specialty functions in Trademark Law as a rule for the registration of representative signs of products or services, finding its limit or exception in well-known and renowned brands, and fundamentally with the latter. These types of brands, due to their atypical characteristics, acquire special protection, even above the principle of specialty (in the specific case of renowned brands).
In the international legal order, the Paris Convention (art. 6 bis) and TRIPS (art. 16.3) recognize the existence of these special marks and their confrontation with the principle of specialty, leaving their possible inclusion and strategic forms to national legislators protection to be followed in their respective legal systems.
In this way, the new Spanish Trademark Law (Law 17 of December 7, 2001), recognizes well-known and renowned trademarks, raising the idea that if they are registered then they can acquire protection above the principle of specialty. (In principle this happens in the case of the specifically renowned ones, since these extend, in their effects, to any product or service beyond those it directly protects, reaching a greater protection than was actually granted, breaking from This form with the principle of trademark specialty, not being the case for the notorious ones, since these would only be for the economic sector for which the rights have been granted, however,The aforementioned Spanish Law establishes that when it tends to infer that a trademark in the application status that is going to represent products or services other than those represented by the notorious trademark already registered has a connection with it, it must be rejected to avoid any risk of confusion by association and stop any attempt to impair the distinctive character or protection of the well-known mark; equating, in this case, the protection of the notorious trademark as if it were a renowned one, and therefore, breaking with what is established in the principle of trademark specialty.it must be rejected to avoid any risk of confusion by association and to stop any attempt to undermine the distinctive character or protection of the notorious trademark; equating, in this case, the protection of the notorious trademark as if it were a renowned one, and therefore, breaking with what is established in the principle of trademark specialty.it must be rejected in order to avoid any risk of confusion by association and to stop any attempt to undermine the distinctive character or protection of the well-known mark; equating, in this case, the protection of the notorious trademark as if it were a renowned one, and therefore, breaking with what is established in the principle of trademark specialty.
It can be seen as a defensive and preventive measure that the Spanish Legal System establishes as a guarantee for brands that have achieved such recognition in the national market and that are registered, the aforementioned principle of specialty passing into the background); and if the supposedly notorious trademark is not registered, its protection will only reach identical or similar products or services (based on its prior demonstration of such condition in accordance with the requirements of the Law in order to become a prohibition relative to the registration of any trademark sign, according to the Spanish trademark system, because as Professor Fernández Novoa said: (…) the Spanish system is actually a mixed system in which the registration and the notorious used trademark coexist, that is,the legal recognition of notorious trademarks not registered as a prior: trademark prior to the one in the application stage, and to be able to grant powers to the owner of the same to be able to oppose its registration at the appropriate procedural moment; but always within the radius of action of the products or services for which their notoriety is recognized, not extending further, without affecting the principle of trademark specialty).without affecting the principle of trademark specialty).without affecting the principle of trademark specialty).
For its part, Cuban trademark legislation (Decree Law No. 203 of 2000) establishes within the relative prohibitions (art. 17.1 subsection d) the grounds for registration related to well-known trademarks and to say from this section, its scope seems to be beyond what refers to well-known trademarks and makes presence of the renowned ones, despite the fact that the name that appears refers to the first. Going beyond the limits established by the principle of specialty.
Another important aspect that should not be omitted due to its connection with the principle of specialty is that related to the principle of non-confusion. If this principle does not exist, the presence of specialty in brands would not make sense or grounds, because if the latter is aimed at indicating that each brand itself is linked to specific products or services, the former will determine the degree of effective protection of that trademark in relation to the former.
This relative cause of prohibition of the registration of trademarks finds its space, together with that of specialty, in the aforementioned Cuban Decree Law No. 203 of 2000, but specifically in subsection (b) of Article 17.1.
The negative dimension of the owner's exclusive right over a trademark implies that he is empowered to prohibit third parties from using the trademark. The presupposition of this negative power is constituted by the risk of confusion, which sets the limits of the ius prohibendi. Thus, the owner of a trademark will only be empowered to prevent third parties from registering an identical or similar sign within the business sector where it is used, since only in this sector is it possible for the consumer to confuse the products of an entrepreneur with those of of other.
In principle, a brand cannot cause confusion of any kind: neither brand nor informative.
Conclusions
Finally, it must be affirmed that the principle of trademark specialty constitutes the backbone of the exclusive right that is acquired over a trademark and that, combined with the rest of the principles that constitute rules in the registration of a trademark sign, it facilitates harmony and the coexistence of these in the market, thus avoiding negative consequences for the final recipients of these products or services: the general public; as well as for the holders of the rights granted, without abusive use of its content.
Bibliographies
1. Council of State of the Republic of Cuba, Decree Law No. 203 of May 2, 2000, “On Trademarks and other distinctive signs”. Extraordinary Official Gazette No. 3 of 2000.
2. Fernández Novoa, Carlos. (2001). Trademark Law Treaty. Madrid: Ediciones Jurídicas y Sociales SA.
3. Law No. 17, of December 7, 2001, “Spanish Trademark Law”.
4. Spanish Patent and Trademark Office. "Management and evaluation of trademarks", Module 2: "The relative prohibitions of trademark registration - Regulation and legal regime".
5. World Trade Organization -OMC- (1994). Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
6. World Intellectual Property Organization (WIPO), Nice Classifier, Ninth Edition, Geneva, January 1, 2007.
7. World Intellectual Property Organization (WIPO), Paris Convention for the Protection of Industrial Property, Geneva, March 20, 1983.
8. Riofrío Martínez-Villalba, Juan Carlos. "Principles of Trademark Law in the European Community". Legal News. May 2003.
