First of all we have to consider the meaning of the Trademark in Spain. Every sign capable of being represented graphically is eligible for registration as a Community Trademark, this means that can differentiate their products or services from others.
Many companies use branding equity before the filing for a Trademark. Obviously this is important not only in colour, logo design and typography which are characteristic signs of identity but also searching trademark register must be the first step.
We cannot forget that Spanish Law refuses to register identical Trademarks, this Law is also implemented when there is a risk of confusion among the public.
Because of that when you decide to file a Trademark, not only you must check the name but also similarities in the way the slogan is worded, spelling and colour also need to be taken into consideration. It is a well known fact that for many years Trademarks have been trying to register colours as way of differentiating themselves from their competitors. These are known as Non-Conventional Trademarks.
So, as an anecdote we can mention the well-known case of Louboutin Vs Saint Laurent which had the dispute over Pantone 18 1663TP in Red Soles. This litigation was won by Christian Louboutin with the exception of full red shoe.
Some of our readers might wonder how a colour can have distinctive character. First of all it needs to be a sign, being represented graphically and what is more important the consumer should be able to associate this colour with a specific product.
This understanding was used by the well-known shoe designer in order to display Red Sole as a luxury and exclusive product.
Even when colour can also describe the origin of a product, this can be so difficult too. In many cases it is hard to obtain a clear understanding as to the way to identify the area we are working in. An example can be with the colour green being used by fast food companies as a means of presenting an ecofriendly image to the public.
Furthermore logo similarity is a point to think about it if we try to avoid any refusal in our obtaining of a Trademark.
As it is mentioned at the top of this article, certain similarities can mean an opposition to registrations. It is known that Tesla has presented its´ logo: Model as 3 parallel lines with Adidas arguing that it misleads consumers. In the end Tesla withdrew it.
To sum up, the most important thing before focusing on and paying for branding and merchandising is to acquire an Intellectual Property Agent and clearly understand Trademark availability and procedures.
