Adidas’ battle of three-stripes mark(s)

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

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

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...
Santiago Mediano Abogados maximizes its link between Madrid and Mexico

Santiago Mediano Abogados maximizes its link between Madrid and Mexico

We are pleased to present the new member of our great team, Beatriz Eddy Martínez, who will work as a link in the professional relations between Madrid and Mexico, promoting and enhancing the development of commercial operations between both countries. Beatriz is an expert in Mexican and international law, with extensive experience in commercial and financial matters of large consulting and banking firms. She has a degree in Law from the University of Monterrey and has completed a Master’s Degree in Securities Law and Financial Regulation at Georgetown University, as well as being a member of several associations and having a number of written publications to her name. We are confident that this new incorporation into Santiago Mediano, will provide an excellent opportunity to promote and improve the quality of professional services between our offices and our...

Santiago Mediano develops three of its practice areas in Mexico with new incorporations and alliances

Santiago Mediano Abogados in Mexico City, has become a leader in the areas of Technology, Media and Telecommunications, Compliance and Labor Relations through the incorporation of new professionals to its team and the signing of new alliance deals with prestigious Mexican law firms. Compliance Santiago Mediano Abogados has signed professional collaboration agreements with the offices Fernández Espino & Asociados and Montero & Martínez Abogados, both based in Mexico City, in the area of Criminal Compliance. Thanks to these agreements, clients of the three offices will benefit from a common work strategy and philosophy. The sharing of experience and methodology will increase the quality of service that is provided to clients, ensuring that they get a Compliance program that is in accordance with their needs. Technology, Media and Telecomunications Ana Dorotea Vásquez, is a renowned jurist, with a degree from the Instituto Tecnológico Autónomo de México (ITAM). She will lead the TMT area of Santiago Mediano Abogados in Mexico City, one of the most important areas of the Office. With this addition, Santiago Mediano Abogados can respond to the growing needs of its clients in this field, and within an increasing geographical scope. Labor Law Elvia Aragón Palancares, an expert in labor law and with a degree in law from the Universidad Panamericana, will join the team dedicated to Labor Relations at Santiago Mediano Abogados based in Mexico. Elvia will provide legal advice in the field of labor law and social security, for business development and investment in the country. The Firm has also signed a collaboration agreement with D & M Abogados, which will provide support in litigious labor...
Portugal – Prohibition of transfer of bearer securities and compulsory conversion in nominative

Portugal – Prohibition of transfer of bearer securities and compulsory conversion in nominative

Last 3rd May it was published Law nr. 15/2017 that approves the prohibition of issuance of bearer securities and imposes the conversion of existent bearer securities into nominative, thus amending Securities Code and Commercial Companies Code. The entry into force of this law on the 4th May involves the following: a) Prohibition of issuance of bearer securities; b) Compulsory conversion of bearer securities into nominative within six months (until 3rd November 2017), with the following consequences (once the deadline has passed): Prohibition of transfer of bearer securities; Suspension of the right to the distribution of results arising out from bearer securities. Regarding the conversion of bearer securities into nominative it is further subject to regulation by the Government yet to be approved within 120 days from 4th May 2017. We will, thus, have to wait for the Government regulation in order to initiate the conversion process although we can anticipate that it will involve the amending to the articles of association of the company and the substitution of the securities. Paulo Correia...
BREXIT: Big Questions for Business

BREXIT: Big Questions for Business

Until the UK officially declares its intention to leave the EU by activating Article 50, many businesses within the UK, EU and around the world with some connection to the UK, are left with many questions and a great degree of uncertainty, resulting in all sorts of speculations. One thing that is certain is that as with most situations in life, Brexit will produce losers and winners. The category in which your business falls may, to a large extent, be determined by the steps you take now to protect your business and/or at least minimize the risk. In the link below, we have put together some key points on the likely effects on IP rights, contract (both existing and future contracts) and the steps that can be taken now to safeguard against potential risks of Brexit which, we hope you will find very useful. Link to complete Brexit article. We, here at Santiago Mediano Abogados (SMA), will be watching and keeping you posted on the issues that we believe will be of concern to our clients most, as things develop.  In the meantime, we are available to provide any existing or potential clients with any specific support or advice, including “Brexit-friendly” contract-audits, tailored to our clients´ specific business needs during these uncertain times. Chris Cooke (UK DESK) English Barrister and Partner at Santiago Mediano Abogados CCooke@santiagomediano.com Helen Okusi (UK DESK) English Associate at Santiago Mediano Abogados hokusi@santiagomendiano.com...
A new Directive on copyright in the single market soon to be a reality

A new Directive on copyright in the single market soon to be a reality

The European Commission (EC) has long been working on adjusting European copyright regulation to new ways of e-commerce and technological advances. Since the EC announced the strategic plan for a Digital Single Market in 2015, it has drafted several proposals that have been crystallized into the draft of Directive on copyright in Digital Single Market that was made public last 31St of August. The main purposes of the EC with this draft Directive is to: 1) ensure the protection of works when used online 2) improve the profitability of said use for right holders 3) ensure users the possibility to consume online content (films, sport broadcasts, music, e-books and games) when they travel in other EU countries. The draft, although condensed, addresses some important and controversial issues with regard to e-commerce, digital and cross-border uses of protected works; among those, the use of audiovisual works on video-on-demand (VoD) platforms, as well as the application of the limitations and exceptions to these uses. The draft has already brought controversy amongst parties interested on the matter. According to its Whereas, the draft Directive does not affect the current legal background: it was created upon the rules laid down in the copyright related Directives and it is only aimed to complementing them. Namely, the draft addresses the following topics: Exceptions and limitations regarding scientific research and illustration for teachingRegarding databases, the draft limits the reproduction right and the sui generis right with respect to text and data mining uses (or automatic data extractions). These limitations would imply that a research organization (as a university and/or any other organization with educational services) could...