Hello and welcome to International Trademark System Talks, the podcast brought to you by WIPO’s Madrid System Information and Promotion Division. This podcast will give you insights into the International Trademark System, also known as the Madrid System.
My name is Olivier Pierre and I will be your host.
Before we begin, I’d like to wish you all a happy, healthy and successful New Year 2023. Now let’s get to it!
In our previous episode, we reviewed examples of early trademark laws and regulations as well as some of the oldest brands in pioneer member states of the Madrid Agreement. In today’s episode, as I promised, we will look at more examples from member states, such as Spain, Switzerland, the Netherlands, Portugal and Italy.
Spain is one of the pioneers in adopting modern trademark regulations. The country had implemented new rules for the protection of trademarks in 1850, and introduced the national registry system. Spain had to overcome some obstacles for such a significant step. Firstly, the long-lasting tradition of using distinctive marks was usual in many countries. Secondly, urban centers and county markets were the main users of marks and signs in commerce, therefore the number of registrations was expected to be limited. Thirdly, with the ruler of the newly established liberal government taking over the laws related to guilds, economy, production and trade; the ownership of trademarks was considered to be contrary to free trade, enterprises, and free market principles. Finally, Spain's rate of industrialization was slower than other leading countries. However, despite all the above-mentioned issues , Spain was the first country to create a modern trademark law. In comparison, France did it in 1857, Austria/Hungary in 1858, the United States in 1870, and England in 1875.[1]
The new trademark law not only helped Spanish individuals and companies register their marks and signs, it also, allowed Spain to register trademarks from France, the United States of America, England, Germany, and Switzerland in the early 1880s. In addition, from early 1850, the Spanish Royal Conservatory of Arts began examining and reporting marks before their official registration, in accordance to a decree regulating trademarks. The approval of the new Spanish Patent Law in 1878 helped the Spanish authorities in reinforcing and strengthening their measures in protecting trademarks and making Spain the birthplace of the Madrid system.[2]
Now let’s look at early Spanish trademarks.
Spain is a country of great culture and grand masters of arts such as El Greco, Velázquez, Goya, Picasso, and Dalí. Miguel de Cervantes and Federico García Lorca portrayed Spain beautifully in their literature, Buñuel and Almodóvar in films. The crown heads of Europe have prized Spain's leather industry since the 8th century. This is where the story of Loewe begins, in Madrid in 1846 where Mr. Enrique Loewe Roessberg founded the Loewe Company. Loewe is one of the oldest luxury goods manufacturers in the world. In 1905, the new King Alfonso XIII and Queen Victoria Eugenia - the latter being the niece of Britain's Queen Victoria - granted Loewe the honor of the official title of "Supplier to the Royal Court". It has been said that:, “Legendary travelers to Madrid such as Ava Gardner, Marlene Dietrich, Rita Hayworth, Sophia Loren and the writer, Ernest Hemingway, all fell in love with Loewe.”[3] Loewe is an active international registered brand under the Madrid System.
Conservas Antonio Alonso, is currently the oldest operating canning company in Spain. The founder, Don Antonio Alonso Santodomingo, migrated to Cuba at a young age. When he returned to Vigo in 1873, he founded the canning company that bears his name. While the next generation of the family eventually took control of the company, they renamed it Antonio Alonso Sons. Their strategy was to supply and export canned seafood to international markets such as France and Belgium under the name brand “Palais d’Orient’.[4] The trademark is also registered under the Madrid System.
We are now moving on to Switzerland.
Switzerland had a national trademark law years before the federal patents and industrial designs law.[5] As early as the mid-19th century, various cantons in Switzerland enacted their first provisions on the protection of trademarks, partly in special laws, or in trade laws, but mostly in the penal codes. However, the lack of a federal regulation was viewed as a deficiency by the industry. In addition, Switzerland had concluded treaties with countries such as Germany, France, and Italy, according to which it had agreed on the protection of trademarks from nationals of these states, while domestic traders were deprived of such protection. These local circles soon demanded the introduction of protection for factory and trademarks at the federal level, which was enacted in 1879. However, this law was replaced in 1890 by the "Federal Law on the Protection of Trademarks, Appellations of Origin of Goods and Industrial Decorations.[6] Finally, in 1993 The Swiss new Act on Protection of Trademarks and Denominations of Origin came into force and replaced the earlier act of 1890.[7]
Let’s have a look at a few Swiss trademarks.
The pioneers of Switzerland’s ‘Chocolate Revolution’:
SUCHARD was one of the first registered marks under the Madrid system in 1893. The company's founder, Philippe Suchard, used to work in his brother's pastry shop in Bern in 1819 as a youth. Seven years later, he left his brother and established a chocolate factory in Serrières, in the canton of Neuchâtel. To make the chocolate tastier, he invented a revolutionary mixing machine named "mélangeur," which grinds sugar and cocoa powder into a smooth paste. By 1883, the company was producing half of the chocolates made in Switzerland.[8]
Fun fact: The Suchard trademark is still active under the international registration number, are you ready to take notes? 306231. Look it up in Madrid Monitor under eMadrid.
The Longines brand is a symbol of strong commitment to tradition, style, and quality. For many years, Longines has been a trusted partner of international sports federations and world sports competitions. Longines exports its products to more than 150 countries. Since early 1867, Longines began to use the Longines trade name, and its known winged hourglass mark to take advantages of the company's reputation, guarantee the quality of its products, and combat counterfeiting goods.[9] “The Longines story is about brand building by continually innovating and creating unique designs; and about business acumen in using the intellectual property system to protect and market the product.”[10] In 1889, Longines’ winged hourglass trademark was registered in Switzerland. Later in 1893, an international trademark application was filed under the Madrid Agreement. Today, “Longines is the oldest trademark or logo still in use in its original form registered with WIPO.”[11]
Moving on to The Netherlands.
“A number of countries, including the Netherlands, were members of the Madrid Union without having complete national law on industrial property.”[12] However, the Netherlands like Switzerland had a national trademark law, years before they made national legislative provision for patents and industrial designs.[13] The first Dutch trademark law was the Trademark Act of May 25, 1880, containing provisions on trade and factory marks. It came into force on January 1, 1881. Under the Act, the trademark law switched from minimum to maximum legal certainty. The Act introduced mainly formal rules on trademark registration. There were only a few substantive rules about the mark itself and the scope of the right. Within the Act framework, the legislator introduced a constitutive system in which registration of marks in the trademark registry was necessary for granting rights and protection of the mark.[14]
UPFIELD is a company rooted in the Netherlands and famous for its Margarine production. In 1871, the Frenchman Mr. Hippolyte Mège-Mouriès, who created the Margarine for the first time, sold his patent to Mr. Anton Jurgens Margarinefabrieken.[15] “By the 1930s, the Lever Brothers – leaders in the Fast-Moving Consumer Goods industry – merged with Margarine Unie to form Unilever. Unilever continued to grow and develop its plant-based spreads business until December 2017, when the business was sold and relaunched as UPFIELD.”[16] UPFIELD has diverse international registrations for its product trademarks that you could be familiar with, such as Flora, ProActiv, Rama, and Becel, under the Madrid System.
Let’s explore the case of Portugal.
The first Portuguese law concerning the protection of industrial property dates back to January 16, 1837. However, it was only related to the protection of inventions. The law was followed by several others, such as the law of December 31, 1852, concerning the ownership of inventions, discoveries, and patents. In addition, the Portuguese Civil Code of 1867 referred to the ownership of inventions. The Law of June 4, 1883, regulated by a Decree of October of the same year, dealt with matters such as factory and trademarks. The protection of Industrial property, as a whole, was the subject matter of the decree of December 15, 1894, and its regulation of March 28, 1895. On May 21, 1896, Portugal legislators approved a law protecting patents, trademarks, industrial designs, and industrial models, which some authors consider the first Portuguese Industrial Property Code.[17]
Let’s look at some Portuguese wine. Remember? Drink responsibly.
One of the famous wine making regions in the world is the Douro Valley. This area, with its vast vineyards in traditional terraces and walls, has eye-catching views. Over the centuries, locals have acquired the knowledge and techniques of grape cultivation and breeding, passing it from generation to generation. Existing evidence shows that the export history of the Douro wine through Porto’s customs dates back to 1678. Here, in the Douro, the ‘Real Companhia Vinicola’ was founded in 1756 by the royal charter of Dom José I, the king of Portugal. It is one of the oldest companies in Portugal. They have been celebrating their 265 years of producing wine without interruption. The company registered its trademark in Portugal in 1890, which is still active and effective today. In 1960, the Silva Reis family took over the Real Companhia Velha. In 1965, the brand was registered under the Madrid System (Its registration expired and currently is inactive). Moreover, in 1954, the company registered its brand Royal Ponto under the Madrid System, which is still active.[18]
Moving on to Italy.
The first Italian Law on Trademarks dates back to August 30, 1868. Italian legislators were inspired by France's “Manufacture and Goods Mark Act’ of June 23, 1857. The trademark law of 1868 did not provide an expiration date for the validity of registrations. Consequently, the trademark validity was indefinite as long as the trademark holders used their marks. It also did not require the classification of goods and services. Therefore, at that time, neither the renewal of registration nor the designation of specific classes for trademarks was considered. It was in 1942 that the Royal Decree No. 929 of June 21 replaced the law of 1868.[19]
The brand Torrini jewelry is one of the oldest family businesses in the world and has been continuing for 26 generations. Their story started in 1306 in Battiloro near Florence, a place well-known for working on noble metals. Bernardo, the ancestor of the Torrini family and father of Jacopus and Tura, founded the Torrini legacy in jewelry art and industry. In 1369, the Republic of Florence required artisans to register their marks with one of the Florentine guilds. Thus, Jacopus registered the current brand of the Torrini family at the Armorers, Keymakers and Blacksmiths' Art Guild. The Torrini goldsmith family has used the brand in their jewelry work ever since. The recording of Jacopus, which took place in 1369, is still visible in the State Archives of Florence.[20] In 1969, the Italian Patent and Trademark Office registered the Torrini trademark in class 14.[21] Later, in 1978, Torrini was registered under the Madrid System.
As you can see from the examples of the early member states - which we have covered in two episodes now - the design and implementation of trademark regulations has been quite eventful both at a national and international level.
Since its adoption, the Madrid Agreement of 1891 has been revised on six occasions. Throughout those revisions, however, the essence of the system established in 1891 has remained constant.[22] Two revision conferences were held in Brussels 1897 and 1900, which resulted in some tidying up of the original text. In the next episode we will talk about these provisions.
Today, we have seen a few additional examples of early trademarks and regulation in some of the first member States of the Madrid Agreement.
In the next episode, we will look at some of the revisions of the Madrid Agreement and their impact in tying up the original text of 1891. Stay tuned for the next episode of International Trademark System Talks.
This takes us to the end of today’s episode. Thank you for listening and if you have any suggestions or any topic you want us to discuss, please let us know. Subscribe to our podcast to be notified of new episodes. See you next time on International Trademarks System Talks. Olivier Pierre out!