What you Need to Know about Legal Marketing in Spain: nothing more, nothing less
Keep calm, there is no need to panic when thinking about all those acronyms and legal concepts surrounding our full-of-marketing heads: LOPD (Spanish Act on Personal Data Protection), LSSI (Spanish Law on Society Information Services), OEPM (Spanish Organism of trade marks and Patents), RGPD (General Data Protection Regulation), the new data protection regulation, how to register a trademark… We recently held an Aprenday session at INNN, digital agency in Spain, on Legal Marketing taught by Fernández - Palacios Abogados which shed light on this topic. Here, I am about to highlight three or four key concepts that are helping me to overcome our new projects with more confidence.
Why is it called “legal marketing” when they actually want to say “law regulating marketing”?
We understand citymarketing as the definition, development, diffusion and maintenance of the promise of a vital experience, which has to be fulfilled through a series of products and services, which answers to those desires, needs, expectations or dreams for which a specific public is willing to invest certain resources.
The different areas covered by legal marketing are the following:
- Industrial property. This branch of Law is related to us (closely related, indeed). This includes inventions, trademarks, domains…
- Intellectual property. From copyright to artistic creations, including the software which makes this website possible… Intellectual property is born “naturally” with creation, in contrast, industrial property is born with registry.
- Communications Law. Closely linked to the daily activity of an advertising agency: image rights, promotional bases, advertising campaigns, labelling…
- Digital Law. One of the big protagonists and villains of the 21st century. Who has not suffered from insomnia while mentally revising legal bases (like counting sheep)? Digital Law covers areas such as data protection, website regulations, online reputation, cybersecurity, cybercrime...
What do we need to register a trademark?
Trademarks need to be registered so that we can identify and project ourselves towards the consumer, but also to protect the company from the competence. We do not want third parties to steal or manipulate our hallmarks. Otherwise, how will the public recognize our real “us”? Which value are we going to commercialize our trademark with?
When registering a trademark, there are some several aspects that we need to take into account, as these will define their level of protection:
1. The first step takes place “before”; it is convenient to research the current situation of trademarks that may clash with ours. That is, carrying out a previous study of the trademark’s possible competence would prevent any appeal against our trademark registry.
2. Determine whether our trademark will be a name, a sign, symbol or design; or a combination of these.
3. The activity of the company, or those areas of activity where we are interested in protecting the trademark. It is the famous Nice classification the one which gathers up to 45 types of products and services (by the way, it was in the Nice Agreement of 1957 when this classification was established. What a nostalgic tradition of the 20th century is that of signing treaties, standards and international conventions. What a pity was that unsuccessful global language: Esperanto… Kiel bela ĝi estis! ).
4. Geographic area. This is defined by the market or markets in which the company is going to launch its trademark. Or, as when talking about the activity of the company, taking into account those countries in which we expect the trademark will need to be protected. The typology depending on the area of protection is the following:
- National trademark. Its registry is done in the OEPM, Oficina Española de Patentes y Marcas (Spanish Patent and Trademark Office) which, in addition to its diverse delegations in different cities of our country, also has a virtual office, which you will finally learn to use, I promise.
- Community trademark. If we want to register the trademark at a European level, we need to do it at the EUIPO or previous OAMI, the European Union Intellectual Property Office. As stated before, even though its headquarters are in Alicante (Spain), the EUIPO has a complete website to process online applications.
- International trademark. As its own name shows, an international trademark is protected all around the world. The agency to which we need to apply this registry is the WIPO (World Intellectual Property Organization), headquartered in Geneva. By the way, in order to manage the complex convergence of different regulatory frameworks (as countries in the world) the Madrid System (1891) is still applied. According to it, the official language is French and the taxes have to be paid in Swiss francs (Isn’t it romantic to register a trademark?).
- Foreign national trademark. In this case, we need to circumscribe the trademark protection to a specific market, that is, register the trademark in that specific country. In order to do so, it is essential to have a correspondent established in that country.
Promos and advertising campaigns
Careful! There are many instances of promos and advertising campaigns that leave legal loose ends. Beware of trademark infringement (illicit use of a trademark which is not yours), image copyrights (we cannot use Julio Iglesias’ face without his consent) and legal bases (...I love them).
In promotional actions, we need to take care of every detail of its mechanics and we need to be extremely exhaustive with the information we provide about it. As our lawyers explained to us during the Aprenday, “through a specific mechanism, the participant accomplishing it competes for a prize, and his/her participation does not cost anything, in terms of money. everything needs to be done according to the legal bases which guaranty the consumer the participation conditions, rights and obligation regulations, disclaimers…”. That is, the bases of a promo are, in legal terms, a contract.
The bases of a promo act as a contract between the trademark and the users.
Comparative advertising deserve to be mentioned separately. Comparative Advertising refers to the practice in which the presented offer to the public is enhanced against the offer of the competence. This can be done explicitly (that is, mentioning the competitor) or indirectly (that is, referring to them implicitly, without mentioning them). This kind of advertising is only licit in Spain is it is based on objective and comparable data.
We are not going to tell you, let’s see if you can guess it on your own: Which of the following comparative advertising examples does and does not comply with the spanish regulation?
The new LOPD, which will not be called like that
Every time somebody denounces abuse or mismanagement of their personal data in digital canals "a kitten dies". And you do not want that to happen.
Hence (although not to such extent), forget about everything you have learned up to now. The LOPD (Spanish Act on Personal Data Protection) is leading to a new regulation which is going to be an authentic revolution in terms of personal data management. Privacy culture will, finally, need to be consolidated as a basic principle in Spanish and European companies: from 25 May onwards, the new General Data Protection Regulation (RGPD) will need to be implemented in all countries of the European Union. This new regulation focuses on the effective collection of data by companies. That is to say, it somehow establishes less regulations “on paper” and looks for more implication in security policies through the use of more agile and concrete mechanisms. Less sections in the legislation and possibly more implementation of measures, also punitive, to favor the compliance of the regulation. Here they are the main updates or changes:
- We go from audits every two years to a need for justification of daily strict compliance.
- From the demand (highly bureaucratic) of a security document, also renewed every two years, to the figure of an expert in data protection in the companies.
- From penalties for non-compliance of up to 600 thousand euros (maximum), to possible penalties up to (drum roll...) 20 millions euros or a 4% of the invoicing.
Yes, there is no doubt, Europe is moving up a gear in Data Protection. We are doing it, too.