Adidas’ battle of three-stripes mark(s)
Adidas has lost one of the (many) battles it has assumed in the last couple of months (years) related to its three-stripes marks, which could mean a big blow-out to Adidas’ current enforcement proceedings against companies using a similar pattern on their products. The war was lost against a company called Shoe Branding Europe (SBE), which filed a declaration of invalidity against the Community Trademark (CTM) registered by Adidas consisting of a “ three parallel equidistant stripes of identical width, applied on the product in any direction ” (see below image) for goods in Nice Class No. 25 (which includes mainly clothing, footwear and headwear). Actually, the controversy between these two companies began back in 2009, when SBE filed a CTM registration for a two-stripes mark for shoes, which ended by Adidas opposing to it and the EUIPO ruling on Adidas’ favor since it considered that there was a risk of confusion due to the similarity between both marks and that the second mark would benefit from the notoriety of Adidas’ marks. After throwing actions at each other, the General Court (GC) understood that EUIPO did not commit any mistakes, and that it is probable that SBE’s mark would be benefitting from the notoriety of Adidas’ trademark. Unsatisfied with the results and, especially, annoyed at Adidas’ wit to file for registration of the three-stripes back in 2014, SBE backfired filing a declaration of invalidity against the three-stripes CTM in 2016. EUIPO agreed with SBE and understood that the three-stripes CTM should not have been registered in the first place, since Adidas’ had failed to prove the distinctiveness for the...
A step forward in the approval of the Project of the Trade Secrets Act
Since June 2018, the House of Representatives is reviewing the Project of the Trade Secrets Act through which the European Union Directive 2016/943 is incorporated into the Spanish legal system. The Directive, approved by Parliament and the European Counsel on June 8, 2016, foresees the protection of technical knowledge and non-disclosed business intelligence (trade secrets) against its illicit collection, use and disclosure. The protection of trade and company secrets is one of the essential elements of competition between companies. Therefore, the health of the markets depends directly on the proper safekeeping of such rights. Prior to the abovementioned Bill, the Spanish legal system entrusted the protection of trade secrets to the Unfair Competition Act (Act no. 3/1991, of January 10). Its regulations on trade secrets may be deemed as a Surveillance system, in other words, a set of rules whose application is triggered solely upon its breach. However, the real scenario surrounding trade secrets is much more complex. As one of the main assets in a company, considering them as solely from its vulnerability has been insufficient. The Trade Secrets Act The Trade Secrets Act, in compliance with the provisions set forth in the European Directive 2016/943, enshrines the existence of an ownership right over trade secrets. Therewith a true heritage of trade secrets is produced. Therefore, it is crucial that the companies carry out a proper valuation and assessment of trade secrets, in order to apply over them the applicable tax considerations. Thus, those who used to be the titleholder of a secret, whose commercial exploitation was articulated normally through non-disclosure agreements, can from now onwards seek other...
Sara de Román joins as new partner of the Firm
Santiago Mediano Abogados is pleased to announce that Sara de Román has joined the firm as a Partner. Sara obtained her law degree from the Complutense University of Madrid, specializing in Copyrights. She was appointed Best Student of her promotion in the Masters Degree in Copyrights at Carlos III University of Madrid. With more than twelve years of experience, she also has extensive knowledge in Audiovisual Law, Data Protection and New Technologies, being a lecturer in several masters programmes on these...
