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New Year tips for managing Industrial Property

January 25, 2022

Now that the year is just beginning, and it is the time to make good resolutions and set goals to achieve, we offer some tips on industrial and intellectual property, with the intention of helping you to achieve a better management of your portfolio and that it ceases to be a mere resolution to become a reality.

In terms of trademarks, it is important to bear in mind aspects that our lawyer, Cristina Margalef, recently reminded us of in her article, such as the convenience of carrying out feasibility studies of the selected trademark before starting the registration procedure and, above all, before incurring certain expenses such as the design of labels, packaging, corporate material and advertising campaigns, among others. Or the relevance of the use made of a trademark. At the time of renewal, it should be borne in mind whether the trademark is in use, in what form and for what goods or services, and whether the trademark continues to cover the effective use of the trademark.

During the life of a trademark, and in order to maintain the exclusivity of use and registration obtained with its registration, it is important to be active and reactive in preventing third parties from registering trademarks identical or similar to one’s own. In this sense, by activating a surveillance service, it will be possible to detect possible trademarks applied for by third parties that may conflict with one’s own, bearing in mind that the territories to be monitored should be, at least, the territories where the trademark is registered, which should correspond to those where there is a market or where subsidiaries, branches, distributors, factories or production centres are established.

With regard to inventions that are susceptible to patent or utility model protection, care should be taken not to make public this development in such a way as to break the novelty necessary to be eligible for registration. Likewise, in order to reduce possible objections during the registration procedure, it is highly advisable to incorporate patent literature searches into the internal product development and R&D process, with the collaboration of expert advisors in the field.

Industrial designs, on the other hand, will be validly registrable after disclosure, but only during the year following their first disclosure.

As for copyright, which does not require registration in order to be protected, when it comes down to it, when you want to enforce the rights of a work, you must be able to prove, by a reliable means of proof, that the person exploiting it is the legitimate owner of that right, and it is therefore highly useful and advisable to have obtained valid proof to that effect prior to its disclosure or communication to third parties.

It is therefore clear that there are many aspects to be taken into account in order to integrate good habits in the management of the industrial and intellectual property portfolio and that the particularities of each case must be studied to determine the optimal protection and/or exploitation strategy.

A good way of keeping a rigorous and up-to-date control of the portfolio of intangible assets and the rights that derive from it is undoubtedly to carry out an annual review of the portfolio and compare it with the projects, initiatives and actions carried out by the company.

Article by Marta Vilá.

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