Intellectual Property Glossary

Administrative Appeal Proceeding
It is brought before a High Court of Justice of an Autonomous Community against the explicit or implicit dismissal of an appeal. This appeal, in turn, is lodged against an administrative resolution, in our case, of the SPTO.

Annuity
Fee established by patent laws that should be paid as long as one wishes to keep the registration of the file in force. It is usually paid every year. In Spain, it should be paid starting from the third year after the application date, and up to a maximum of twenty annuities in the case of patents and a maximum of ten in the case of utility models.

Anticipation
A patent or application is said to be “anticipated” when there is some prior public disclosure that invalidates its novelty. Anticipation is sufficient cause to prevent a patent application that is being processed from being granted or to allow its annulment, even after it has been granted by the corresponding registration agency.

Appeal
It is filed no more than one month after the publication of a resolution by the SPTO in the Official Intellectual Property Gazette which grants or denies a type of intellectual property. It is filed by anyone who believes that they have been infringed upon by said resolution.

Authorization
Document that the applicant of a patent, trademark or other type of Intellectual property should sign to appoint an Intellectual Property Agent to represent them and manage their rights before the corresponding registry office.

BOPI
Acronym, in Spanish, of the Official Intellectual Property Gazette, which has been edited on a daily basis in Spain since the 19th century. Today it is edited by the Spanish Patents and Trademarks Office (SPTO). It contains three volumes: the first is dedicated to trademarks and other distinctive signs, the second to invention patents and utility models, and the third to industrial designs and to old models and intellectual drawings. It contains comprehensive information related to the application and processing of those Intellectual Property files, as well as their granting, denial, appeal and transfer of rights.

Brand awareness
A trademark has brand awareness when, due to its sales volume, distribution or prestige attained, it is generally known by the public sector targeted by its goods or services, i.e. not necessarily to the general public.

Claims
Fundamental part of an invention patent or a utility model. They state, using very specific legal and technical language, the technical characteristics of the invention that the protection conferred by the patent or model will have an effect on.

Class
Term that is used to describe each one of the 45 sections that make up the Trademark Classification List. Each class includes a specific range of goods or services. The applicant of a trademark or trade name should choose the goods/services and state the classes in which he/she would like to register his/her distinctive sign.

Classification
Classification refers to all of the goods and services in the market to which trademarks are applied. It currently includes 45 classes. Most countries have adopted the International Classification, which comes from the Nice Agreement of 1957 on the international classification of goods and services. It has been in effect in Spain since 1967 and is reviewed by the WIPO every five years. It must be referenced when registering trademarks and trade names.

Collective trademark
Trademark that distinguishes the goods or services marketed by the members of an association of manufacturers, traders or service providers. The filing of this trademark should be accompanied by regulations that govern its use.

Community Design
Registration of an intellectual design through its filing before the European Union Intellectual Property Office (EUIPO). It has equal effect throughout the European Union for an initial period of five years, renewable for successive periods of five years, up to a maximum of twenty-five years.

Community Patent
It no longer exists as such. It should not be confused with the European Union Trademark or the European Patent.

Copyright
It is expressed with the symbol ©. It is the exclusive right given to all authors of literary, artistic, scientific, musical or audiovisual works by virtue of the mere fact that it is their creation. It is governed by Intellectual Property legislation.

Denial
Unfavorable resolution of a patent, trademark or other type of intellectual property file which is issued by the corresponding registry office and ends its administrative processing. This resolution can be appealed by the applicant. In the case of Spain, the applicant can first file an appeal before the Spanish Patent and Trademark Office. If rejected, there also exists the possibility that administrative appeal proceedings can be brought before the Courts.

Disclosure
Information that has been made available to the public. It is an important concept for patent, utility model and intellectual design applications. If an invention or technological innovation is disclosed, even by the own inventor prior to the application, novelty is destroyed. Therefore, it is essential to keep an invention a secret, to maintain confidentiality and to not disclose that it can be patented until the corresponding application has been filed.

EPO
Acronym for “European Patent Office”. It is the international organization with headquarters in Munich that centrally processes and resolves European patent applications. Its decisions to grant or deny a European patent are binding for registration authorities in the countries designated by the applicant.

EUIPO
Acronym for “European Union Intellectual Property Office”. It was called OHIM (Office for Harmonization in the Internal Market) until 2015. It is an organization created by the European Union, with its sole headquarters in Alicante, Spain and which processes, grants and manages the registration of European Union Trademarks and Community Designs.

EURO-PCT
Regional phase of the processing of an international application (PCT), which is carried out as a European patent application before the EPO.

European Patent
Certificate granted by the European Patent Office once the patentability requirements are fulfilled. The protection of this certificate can be extended to all or some of the member countries of the European Patent Agreement which have been designated by the applicant. The patent must be validated in all of the countries of interest where it will continue its legal life with the same rights as a national patent.

European Union Trademark
Trademark that is filed with the European Union Intellectual Property Office (EUIPO) in Alicante and which, once granted, extends its legal effects equally to all member states that currently form the European Union. It was called the “Community Trademark” until 2015.

European Union Trademark Regulations
The EU-wide legal text that regulates everything related to the processing, granting and management of European Union Trademarks (formerly Community Trademarks) at the European Union Intellectual Property Office (EUIPO), formerly known as OHIM. It is currently Regulation (EU) No. 2015/2424 of the European Parliament and the Council, of December 16, 2015, which entered into force on March 23, 2016. This legal text replaces the previous Regulation (EC) No. 207/2009 of the Council on the Community Trademark. The first Community Trademarks to be registered were applied for on April 1, 1996 under Regulation (EC) No. 40/94 of the Council, from December 20, 1993.

Five-year fee
Fee that the holder of a trademark must pay every five years for certain cases in Spain so that the trademark remains in effect. Today, it is only applicable to signs registered prior to the current Trademark Act which have not yet been renewed due to expiration. Such cases are increasingly uncommon.

Franchise
Contract created between a franchisor and a franchisee (recipient of the franchise), under which the former grants the latter the exclusive or non-exclusive exploitation of a franchise for a specific period of time. This can include different elements, including the trademark, specific know-how, training sessions for franchisees, etc. In exchange for the grant, the franchisor receives royalties or a payment that compensates for the granting of the trademark, the know-how transferred and the training and consulting received.

Generic nature
It is the main limitation in trademark law when creating and registering a trademark. Signs and names are generic when they are used in business to designate a good or service. For example, an optical store, restaurant, shoe, cookie, etc. However, names that evoke a good or service, but do not describe them, can be registered as a trademark. Sometimes the boundary between something descriptive and something evocative is very subtle. We offer you our professional opinion on a case-by-case basis.

Goodwill
An expression used to highlight the prestige of a trademark. A trademark with high goodwill is one that is highly recognized by the public customer and is one of their preferred trademarks.

Granting
Favorable resolution of a patent, trademark or other type of intellectual property file which is issued by the corresponding registry office and ends its administrative processing. However, its granting can be appealed in certain situations by someone who feels they have been infringed upon by it.

Guarantee trademark
Trademark that ensures or certifies that the goods or services to which it applies fulfill the common quality requirements. As in the case of collective trademarks, a guarantee trademark should be accompanied by regulations that govern its use.

The Hague Agreement
The Hague Agreement was signed on November 6, 1925 and ratified by Spain on May 1, 1928. It was most recently amended in 1999 with the Geneva Act, ratified by Spain on September 23, 2003. It established a procedure to protect one’s drawings or intellectual models in all of the contracting countries by submitting an international filing to the World Intellectual Property Organization in Geneva. Every January the WIPO publishes the updated list of States party to this Agreement.

IPEA
Acronym for “International Preliminary Examining Authority”. This authority is responsible for drawing up an in-depth report about the novelty and inventive step of a PCT patent application during its international processing phase. The Spanish Patent and Trademark Office is also an IPEA and is the only one in the Spanish-speaking world.

ISA
Acronym for “International Search Authority”. This authority is responsible for carrying out a background search report, mainly of registrations, to later determine the patentability of an invention. The Spanish Patent and Trademark Office is an ISA.

Implementation
Certificate issued by the Spanish Patent and Trademark Office to the holder of a patent or utility model which verifies and is a rebuttable presumption that the patent is being exploited.

Intellectual Application
The third objective requirement of patentability established in patent laws, along with novelty and inventive step. It reaffirms the fact that ideas in and of themselves cannot be patented: the invention must be used or manufactured in some type of industry, including agriculture.

Intellectual design
Registration to protect the full or partial appearance of a good that results from the special features of the lines, configuration, colors, shapes, texture and materials of the good, or of its ornamentation.

Intellectual Property
A property right for special signs that is acquired by the person who applies for a patent, trademark or other type that is legally provided for in the corresponding Official Register. It is divided into three main blocks: 1) Distinctive signs: trademarks and trade names; 2) Inventions: patents and utility models; and 3) Shapes: industrial designs. They constitute the intangible assets of companies.

Intellectual Property Agent
Private individual registered as such at the Spanish Patent and Trademark Office who, as a liberal professional, often offers their services to advise, assist or represent clients in order to obtain different types of Intellectual Property and to defend the rights derived thereof before said Office.

Intellectual Property Register
From the end of the 19th century until 1992, this was the official name of the organization which is now known as the Spanish Patent and Trademark Office (SPTO).

Intellectual Property
A special property right granted to the author of a literary, artistic, scientific, musical or audiovisual work by virtue of the mere fact that it is their creation. For full validity and protection of the work, its registration in the Intellectual Property Register is highly recommended, although said registration does not constitute the right.

Invalidity
All trademarks, patents or any other intellectual property right can be declared entirely or partially invalid by the final decision of either an administrative body or a court of justice when they have been granted by a registration authority that breaches the established laws that are applicable to each case. In Spain, invalidity is only declared by ordinary courts of justice.

Invention
Technical regulation, embodiment, procedure and/or use that satisfies human needs and can be patented when it can be carried out on an intellectual scale. In addition, it fulfills the requirements of novelty and inventive step which are expressly set out and defined in the different applicable laws.

Invention patent
Certificate that confers to the patent owner the right to exclude, for a specific time and in a specific territory, any type of commercial activity of the patented invention by third parties.

Inventive Step
The second objective requirement of patentability established in patent laws, along with novelty and intellectual application. The applicant of a patent is required to prove that the invention involves a certain degree of creativity or merit. The established criterion is generally that the difference between the object of the invention and the most similar document from the state of the art is not obvious or, in other words, cannot be deduced by a “person skilled in the art”.

International Trademark
Trademark that is registered with the WIPO. The applicant of this trademark should designate the contracting parties that he/she wishes to register, whether it be a single country or all the members of the Agreement that regulates it. It should be based on at least one trademark that was previously filed in the country of origin.

International Intellectual Model
Model that is registered in the WIPO for the member countries of the Hague Agreement. Unlike the International Trademark, this type of right does not need a model, drawing or intellectual design to be previously registered in the country of origin.

Know-How
Represents the body of knowledge that a company has for one or several topics. This knowledge is usually acquired over time through work and experience. It tends to be very valuable and difficult to imitate. Know-how complements and goes beyond the stated content of a patent.

Lapse
Patents, utility models, industrial designs and other intellectual property rights lapse following expiration of the period for which they were granted, surrender by the holder or failure to pay the maintenance fee in the established period. In some jurisdictions, they can also lapse due to the lack of use or exploitation. Lapse causes the object registered to enter the public domain, meaning that no one can “reapply” for it. In the case of trademarks, there are some unique features. They can also lapse due to surrender, lack of use or the failure to renew following their expiration. Trademarks, however, can also be continuously renewed without limit, meaning that they can not lapse. In addition, a trademark that has lapsed can be reapplied for as long as it does not interfere with another prior trademark or receive opposition from said prior right.

Law on the Legal Protection of Intellectual Design
This Law is part of the regulatory framework of Intellectual Property in Spain. It is called Law 20/2003 and has been applied in full force since July 9, 2004. It regulates everything related to intellectual design.

License of Use
Contract that is drawn up by the holder of intellectual property rights, called the licensor, for one or several people, called licensees. With this contract, the holder cedes certain powers (usually powers of use and exploitation) to the licensee under specific conditions and requirements. The license can be exclusive or non-exclusive and, to be effective against third parties, it should be registered with the Spanish Patent and Trademark Office, in the case of Spain, and with the corresponding registries in other countries, depending on the territorial scope of the license.

Madrid System
The name given to the agreement signed by different countries, including Spain, on April 14, 1891 in Madrid in order to create the “International Trademark”. Spain ratified the agreement on June 15, 1892. It was modified in 1989 by the Protocol Relating to the Madrid Agreement, known as “the Protocol”, and ratified by Spain on April 17, 1991. Different members have joined this system since its entry into force and it currently has nearly 100 members, including countries and supranational organizations, such as the European Union and OAPI. This system designates the countries and supranational territories belonging to the agreement to which the owner is interested in extending their trademark, being able to do so via a single filing with the World Intellectual Property Organization (WIPO) in Geneva.

Novelty
The first objective requirement of patentability established in patent laws, along with inventive step and intellectual application. An invention is said to be novel when it is not included in the state of the art (see “State of the Art”).

OAPI
Acronym, in French, for the “African Intellectual Property Organization” in Yaoundé, Cameroon and formed by the following French-speaking countries: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Republic of the Congo, Ivory Coast, Gabon, Guinea, Equatorial Guinea, Mali, Mauritania, Niger, Guinea-Bissau, Senegal and Togo. With this organization, it is possible to process trademark and patent applications consisting of unitary law applicable to all of the aforementioned countries under the same file and with effects in all of the mentioned countries. These applications, unlike the International Trademark, cannot designate some countries and exclude others.

OHIM
Acronym for the former “Office for Harmonization in the Internal Market”. It is currently called “EUIPO” (see “EUIPO”) as a result of the adoption of Regulation (EU) 2015/2424 of the European Parliament and the Council, from December 16, 2015, which introduces significant changes to the regulation of European Union Trademarks (formerly, Community Trademarks).

Official Action
Each one of the communications made by the Examiner of a Registry Office to the applicant of a patent, trademark or other type of Intellectual Property, according to the relevant legislation. It is normally used to notify reasons for denial of the file in question, giving the applicant additional time to respond and provide the necessary arguments and/or documents.

Opposition
This is a key element in the processing of any intellectual property registration. In general, and with different features, it involves a third party that opposes the granting of the right. Depending on the case law and the type of intellectual property, it can take place during the processing phase or after registration has been granted.

PCT
Acronym for “Patent Cooperation Treaty”. It is normally used to designate international patent applications, which allow an applicant to use a unified application process for 150 countries. It is processed in two phases: in the first phase, which is centralized, the decision concerning the final countries to which the patent will be applied is delayed and a search report is provided. In the second phase, the patent application comes into effect in each country or region of interest.

Paris Convention
Took place in Paris in 1883 among the signatory countries of the Agreement of this Convention in order to protect intellectual property. It is the world’s most renowned regulation in this subject area, with its most important highlight being the establishment of the principle of international priority. Most countries are party to this Convention.

Patent Act
As in the case of trademarks, each country has its own legislation. Spain currently has Law 11/1986, which has been in force since June 26, 1986. It will be replaced by the new Law 24/2015, which will come into effect on April 1, 2017. It regulates everything related to invention patents and utility models, as well as jurisdiction, competence and procedures related to the legal proceedings associated with intellectual property rights.

Patent family
Group of patents applied for in different countries, directly or via international agreements, which are based on an initial patent application in the country of origin.

Prior examination
Procedure for processing patents in Spain, through which the applications are analyzed with a substantive examination to determine whether the invention fulfills the patentability requirements. This is one of two possible granting procedures that are provided by the current Patent Act. The other option, known as the general procedure, is the one in which processing is carried out without prior examination on patentability, for which reason the patent will always be granted. The new Patent Act, which will come into effect in April 2017, only provides for processing with prior examination.

Priority
This is one of the cornerstones of Intellectual Property and it comes from the Paris Convention of 1883. Today it is unusual for a country to not form part of this agreement. A patent that has been applied for in one country can be extended to any other country within twelve months, claiming its application date to be that of the country of origin, without destroying its novelty. However, the priority period for trademarks and industrial designs lasts just six months.

Property Title
Certificate that grants national or international registration management to the applicant of any type of intellectual property, after fulfilling the legal requirements that allow the file to be granted and the property to be accredited.

Protocol Relating to the Madrid Agreement
Better known as “the Protocol”, it is called this because of the agreement signed by several countries on June 27, 1989 in Madrid. It entered into force on December 1, 1995. This agreement allows access to the International Trademark system with a treaty that is more flexible than the one established by the Madrid Agreement. It was amended on November 12, 2007 and the most recent version of the Common Regulations under the Madrid Agreement and the Protocol relating to that Agreement is dated April 1, 2007. Today, nearly one hundred countries are a part of this agreement, including two supranational organizations, which are the European Union and the African Intellectual Property Organization (OAPI). The Protocol complements the Madrid Agreement and also designates the countries and supranational territories belonging to the agreement to which the owner is interested in extending his/her trademark, being able to do so via a single filing with the World Intellectual Property Organization (WIPO) in Geneva.

®
Symbol that verifies that a trademark is registered and granted. We advise using it on the upper right corner of the trademark. It informs the general public that that name or sign is the exclusive property of its owner. It is an abbreviation that substitutes the phrase “Registered Trademark”, which was previously used on many labels.

R.S.A.
Acronym for “Report on the State of the Art”. All applicants of an invention patent in Spain must ask the Spanish Patent and Trademark Office to carry out an RSA. This Office writes up the report, mentioning the background and state of the art that may be relevant to patentability.

Registration research
Before starting the application of an Intellectual Property file, it is a good idea to try to determine its viability and registrability. It is not enough to find a series of registrations through an informative list; instead it is necessary for a professional Agent to carefully assess this information, as well as other possible obstacles, and issue a report with their professional opinion on the subject. This is one of the most important and sometimes the most complex tasks that an Intellectual Property Agent must carry out.

Renewal
To prevent a trademark, trade name or intellectual design from expiring, it is essential to apply for its renewal once it reaches its first expiration date or any of the following expirations. In the case of trademarks and trade names, renewal should be filed ten years after its application date or most recent renewal (the same process is applied to European Union Trademarks). Therefore, trademarks and trade names can remain in effect indefinitely. In addition, industrial designs must be renewed every five years, but up to a maximum of twenty-five years (the same process is applied to Community Designs). Patents and models, however, cannot be renewed once they expire, regardless of having to pay maintenance fees (annuities) during their period of validity.

Renown
A trademark is said to be renowned when it is recognized by the general public due to its sales volume, distribution or prestige attained. Its protection extends to any class of goods, services or activities.

Reply
Written document presented before the SPTO to reply to the objections presented. It is supported by arguments and/or documents that are best suited to achieve the granting of an intellectual property file. There is also the possibility to present a response to an appeal lodged by a third party against a resolution by the registry in favor our interests.

Royalties
Amount the licensee of a patent, trademark or other intellectual property right should pay to the holder of said right (licensor) for the granting of use or exploitation of said right.

SPTO
Acronym for “Spanish Patent and Trademark Office”, an autonomous organization linked to the Spanish Ministry of Industry, Tourism and Commerce. It is the only state organization authorized to process, grant and manage registrations of patents, trademarks and other types of intellectual property which are valid through all of Spain. Its only headquarters are located in Madrid. It was called the “Intellectual Property Registry” until 1992.

Shop Sign
Registration type at a local level, which the current Trademark Act repealed as of July 31, 2002. Previously registered Signs are subject to progressive and staggered legal expiration, since they cannot be renewed until their expiration date arrives.

State of the Art
All of the information made available to the public by any means before the filing date of a patent application.

Status
Corresponds to the registration situation of an intellectual property file at a specific time. Being aware of said registration situation at different times is very important, for example, during prior research of a trademark application, with a sales or use of license contract, when faced with a claim, etc.

Surname
One of the conventional ways of creating a trademark. However, if a surname is registered as a trademark by a person or company, it cannot be later registered by someone with the same surname in order to distinguish goods or services that are identical or similar to those registered by the former, unless the two parties come to an agreement.

Suspension
The stay of administrative proceedings during a specific period of time, which is communicated to the interested party through an official letter, stating the objections raised to its granting and, if applicable, opposition filed by a third party. It provides a period of time during which the party can present a reply against the opposition, if desired. Suspension is not the same as denial; instead it is a temporary suspension of the file.

TM
Abbreviation of “Trademark”. It is mainly used to inform the general public that a third party considers itself to be the rightful owner of the trademark, even though it is not registered.

Trade name
Refers to all signs that can be represented visually to identify a company in the market and that distinguish it from other companies that carry out the same or similar activities.

Trademark
Trademark refers to all signs that can be represented graphically to distinguish a company’s goods or services from those of other companies in the market. It is a territorial right of the owner of the trademark in the countries or supranational territories where that trademark has been registered. Most legal systems, including Spain’s, establish the fact that the right to a trademark is obtained through its registration.

Trademark Act
Each country has a different Trademark Act since Intellectual Property rights are territorial. Nevertheless, recent years have witnessed their precepts grow closer together. In Spain, the Trademark Act is called Law 17/2001 and it has been applied in full force since July 31, 2002. It regulates everything related to trademarks and trade names, establishing temporary standards for the old category of “shop signs”.

Trademark monitoring
As of July 31, 2002, the SPTO cannot carry out an examination of similarities and equality of the new trademark applications, as it had done previously. This requires holders of all trademarks to increase the monitoring of the new applications that are continuously published in the different Official Intellectual Property Gazettes, so they can exercise their right to oppose and thus prevent the granting to a third party an identical or very similar trademark that significantly infringes upon their priority rights. At UNGRIA we have created a specific control and information department to help our clients resolve this major concern.

Trademark use
According to Spanish Law and that of most other countries, a trademark should be used in a real and effective way by its holder or authorized licensee. In Spain, it should be used within five years of the publication of its granting in the Official Intellectual Property Gazette and its use should not be interrupted for at least five consecutive years. After this period of time or given the lack of uninterrupted use during the mentioned period, a third party can lodge a claim of expiration of the trademark.

Transfer
All intellectual property rights are transferable to third parties, whether they are “inter vivos” or “causa mortis”. In order for said transfer to be effective for the public, it must be registered at the SPTO or with any other country or supranational registry, depending on the case and providing the legal documentation that certifies the veracity of said transfer.

Utility Model
Regulated under the Patent Act, the utility model is a type of intellectual property right that is intended to protect novel inventions with inventive step that consist of giving an object a configuration, structure or construction that results in an effectively observable advantage in its use or manufacture. According to case law, the utility model corresponds to the concept of a small invention, therefore implying that innovation results from the inventive step and its intellectual application, always having a utility or advantage despite having a lower technological impact than the patent.

WIPO
Acronym for “World Intellectual Property Organization”. It is an independent organization of the UN, with headquarters in Geneva. It processes international trademarks, international intellectual models and the international phase of PCT patent applications.

WIPO Gazette of International Trademarks
The Official Gazette published by the WIPO in Geneva. Currently it comes out weekly in Spanish, French and English. Said gazette contains comprehensive information related to applications and processing of International Trademarks with effects in different designated countries or territories, which may include Spain. It also contains information about the granting, denial, renewal, cancellation and transfer of said International Trademarks.