Distinctive signs

In any business strategy businessmen or entrepreneurs must give priority to distinguish themselves from their competitors and also distinguish their products or services from those of others. This is achieved through the appropriate protection of the so-called distinctive signs: on the one hand the trade name, which identifies a company business name and, on the other hand, the trademark, which identifies the goods or services of one party from those of another. In Spain and in many other countries, registration of distinctive signs confers on its holder the exclusive right to use them in the course of trade and to prevent any third party from using it for goods or services identical or similar to those.

Currently, it is possible to file national, regional and international applications before the corresponding competent bodies, of trademarks and of trade names in those countries that, such as Spain, accept this kind of registration. On a territorial basis, trademarks may be registered nationally at the national trademark office such as the Spanish Patent and Trade Mark Office (OEPM). Regionally, the effects of a registered trademark shall extend to the whole territory that conforms such region, such is the case of Community trademark, administered by the Office for Harmonization in the Internal Market (OHIM) and protected throughout the whole territory of the European Union (currently 28 member states). Finally, an international trademark protects those member states designated by the applicant and granted at the national or regional offices and it is managed by the World Intellectual Property Organization (WIPO).

At Duran Haeussler we provide, among others, the following services:

• Clearance trademark searches.
• Filing and prosecuting of national, Community and international trademark applications and trade name applications, renewals.
• Maintenance and world-wide, regional and national surveillance of trademark portfolios.
• Administrative proceedings related to suspensions, oppositions, third-party observations or appeals.
• Assessment and recordal of assignments, changes of name and licenses.
• Distinctive signs portfolio management.
• General queries.

Inventions

Innovation is the foundation stone of prosperity and of success. Innovation is a process that transforms new ideas into products or into new or improved operational processes. Both the process and the resulting competitive advantage deserve protection that may be achieved by means of a patent or through careful unregistered protection as a trade secret.

Patents are valuable tools for their holder and for society. In return for the disclosure of the invention the inventor is given temporary protection over his competitive advantage with exclusive rights to prevent third parties from commercially using the patented invention. This contribution and dissemination contribution generate new knowledge that foster innovation and progress in science and technology.

On the other hand, trade secrets may concern inventions that fail to meet all the requirements for patentability legally established or it may concern inventions that, despite satisfying said criteria, his holder decides to keep as trade secrets. This choice has some advantages such as no registration costs, immediate effects or lack of time limit protection. However, there are also some disadvantages: trade secrets do not provide exclusive rights in terms of excluding third parties from making commercial use of it, once that it is disclosed it falls in the public domain and anyone can use it or, it can be patented by someone that develops the same by legitimate means.

Currently and on a territorial basis, an invention may qualify for registered protection through three possible filing applications:

• national patents and utility models, in those countries that regulate this modality of protection, filed before national offices such as the Spanish Patent and Trade Mark Office (OEPM);

• regional patents, such as European patents that are processed by the European Patent Office (EPO) and cover all designated contracting States of the European Patent Convention, giving rise, after grant, to a bundle of national patents; and,

• international patents,also known as PCT patents, administered by the World International Property Organization (WIPO) in order to streamline the initial filing process.

At Duran Haeussler we provide, among others, the following services:

• Strategic patent counseling.
• Filing and prosecution of patents and utility model applications nationally, of European patents applications (including validation), of international PCTs and of applications of patents of addition.
• Surveillance, maintenance and payment of annuity fees.
• Administrative proceedings related to suspensions, oppositions, third-party-observations or appeals.
• Advice and filing a reply to state-of-the-art reports or to examination reports.
• Patent validity studies and patent infringement studies.
• Advice and preparation of changes of name, assignments and license agreements.
• Technology surveillance.
• Patent portfolio management.
• General queries.

Designs

Design adds value to a product, increasing its competitiveness and strengthening the trademark behind. Consequently, a design used as a strategic resource becomes a benchmark in the market, not only for their users but also for competitors.

At present, designs may be registered as national designs, whose rights extend to the territory where protection is requested, as regional designs such as (European) Community designs, which grants the holder uniform protection with unitary effect throughout de entire territory of the Community and is managed by the Office for Harmonization in the Internal Market (OHIM) and, finally, as international designs by means of which a single international application filed with the World Intellectual Property Organization (WIPO) has the same effect in each of the designated countries as a national registration in each country.

However, the dynamics of some sectors derive in a large number of designs for products with short market life where obtaining such formal protection may not be worthwhile or useful. For this reason there exists the legal figure of unregistered design. Unregistered Community designs, for example, are protected for a period of three years from the date of disclosure of the design to the public within the territory of the European Union and it constitutes a right to prevent the commercial use throughout the European Union of the design only if such use is the results from copying.

At Duran Haeussler we provide, among others, the following services:

• Preliminary searches
• Analysis and strategies for registered or unregistered design protection.
• Drafting design description and preparation of drawings/images.
• Filing and prosecuting of national, Community and international designs.
• Surveillance, payment reminders and payment of maintenance fees.
• Administrative procedures as oppositions, office actions or appeals.
• Assessment and recordal of assignments, changes of name and licenses.
• Design portfolio management.
• General queries.