Santos has been at Grau &
Angulo since the very beginning. Before joining the firm in
2003, she worked as a general practice lawyer where she
developed a passion for trade marks. Santos went on to join
Alejandro Angulo’s IP team at another firm before
teaming up with him later to establish Grau & Angulo.
According to Santos, who made partner at the firm in 2008,
opportunities for professional women are increasing: "The
market is prepared for women in high positions in companies and
law firms. All we need is confidence."
Trade mark reform in Spain
While the majority of her experience is in trade marks,
Santos has handled several unfair competition, copyright and
science-related cases. In Spain, practitioners await the
enforcement of a new trade mark law. In May, a draft bill on
the Spanish Trade Marks Act 17/2001 was published to
incorporate trade mark law
reforms proposed by the European Commission.
In preparation, local judges and IP practitioners have met
on a number of occasions to discuss the proposed amendments.
Santos says: "One of the key things that we are not so
confident about is, they want to give more relevance to the
Spanish Trade Mark Office. Now in Spain, if you want to cancel
or request a trade mark, you have to go to court."
"In other European countries and if it is a European trade
mark, you can actually request it before the corresponding
trade mark office. This is one of the big changes that would be
implemented in Spain."
At present, cancellation and nullity actions must be filed
before civil courts in judicial proceedings. Santos explains:
"In many cases, although now it’s not necessary,
you can file an infringement claim without requesting the
nullity of the later trade mark. Usually, it’s
very convenient to do both things at the same time because the
evidence you use for the infringement can be also useful to
support the nullity request."
"It’s all about time"
There are doubts about whether the national trade mark
office is competent to decide on cancellation and nullity
actions in administrative proceedings. Santos says: "The
Spanish Trade Mark Office is not used to dealing with this kind
of evidence. For many years, they have been deciding on a paper
basis, comparing one file with another. They were not really
getting into the way the sign is used in the market –
the kind of issues that civil courts are used to right
It also unknown how long the average request might take
after the trade mark bill is amended. For now the only option
is to wait: "It’s all about time. There is a lot
of case law that they can work with, but they have to get their
own practice and own case law, in a way."
"With the new law, it may happen in the same way that
it’s happening at the EUIPO right now, that you
can get an infringement action and a third party can request a
nullity of the same trade mark that you are invoking in civil
proceedings at the same time." Many practitioners fear that
this change may produce a problem, says Santos, as it means
that "civil proceedings will be suspended until a decision on
the validity of the trade mark is issued by the Trade Mark
"We discussed this recently at a conference with judges from
the Supreme Court and the Court of Appeal of Alicante - the one
hearing all cases related to European trade marks. They are
also quite concerned."
The future of EU trade mark protection
Initially, the Brexit announcement caused some chaos but,
this has since calmed down, Santos says. The full impact of
Brexit on the EUTM system is not known: "We’re all
in the same situation," Santos says. "Not even UK lawyers know
what is going to happen," but Santos advises trade mark owners
to keep their national trade mark as well as their local trade
mark to secure "double protection".
Trade mark owners are becoming increasingly aware about the
benefits of IP protection. She explains: "The appearance of the
products is getting more and more important nowadays. Now, the
consumer does not only look for something useful and practical,
consumers are getting more into the design."
Santos also notes an increase in registering and enforcing
designs, particularly in the fashion sector: "Designs are a
very valuable asset for the clients but still, of course, trade
marks are most important for them because it identifies them in
the market. I think that clients are more worried about what
will happen with their trade marks than designs, because they
will always have them in Europe regardless."
Distinctiveness versus well-known character
Recently, the importance of brand distinction has been
highlighted by a number of cases involving unconventional
marks. Earlier this year, KISS rock artist Gene Simmons filed
an application to protect what many recognise as the 'rock
on’ or 'devil horns’ hand gesture.
Simmons later withdrew this application. In February, Hasbro
filed a trade mark application to protect the smell of its
well-known putty product, Play-Doh. Kit Kat suffered a blow in
May when the Court of Appeal in the UK ruled that the chocolate
bar’s four-finger design held "no inherent
distinctiveness", inciting additional confusion about the
definition of distinctive character.
On the enforcement of 3D and unconventional marks, Santos
says: "The first thing we will have to overcome, everyone
knows, is the lack of distinctive character. We will be using
surveys. It’s the only way of proving distinctive
character." When it comes to unusual trade marks, such as those
of a three-dimensional nature, Santos observes: "From my point
of view, I think that the courts and the Trade Mark Office are
mixing two completely different things: distinctiveness and
well-known character because they ask that you prove the
distinctiveness of a 3D trade mark with a survey."
"We are talking about 70% of consumers recognising the owner
of the product by the state of it. 70% is a huge number.
It’s extremely high. If the trade mark is
recognised by 70% of respondents, in my opinion, it is not
because it’s distinctive, it’s
because it’s well-known." Santos argues that "the
purpose of the trade mark is to identify the owner of the
goods" meaning, if survey respondents are able to do that, this
should prove the distinctiveness of a mark. Regarding the
required percentage of recognition, Santos says: "50% should be
more than enough."
Know the market: beating infringers
Consumer surveys are "a huge investment and there is no
certainty that the result will be the one you are expecting,"
says Santos. She adds: "Infringers have become more
sophisticated. They know more, so cases are not so clear cut.
Infringements have become more borderline. It’s
not so easy to make an assessment of the situation and chances
For well-known brand owners, "this is one of biggest
challenges right now". Like surveys, expert reports can be
useful when defending a trade mark. Ultimately, anticipating
the behaviour of the opposition is the most effective tool: "We
know the type of infringer that we are dealing with so we
advise the client not to extend negotiations more than
necessary. If you don’t reach an agreement in
three to four months and they are not replying to your cease
and desist use letters - no matter how long you try, probably,
you will not get anywhere."