Can I use a company logo in my publications?

Can I use a company logo in my publications?

We are used to seeing in countless digital and physical publications, from influencers, magazines, blogs, websites, social media posts… etc., the indiscriminate use of logos of well-known brands when they are mentioned, compared, or simply used as decoration in advertisements. Can anyone use my company’s logo to place it in their content?

Logos are distinctive signs that are part of the industrial property title, “trade name”, protected by Law 17/2001, of December 7, on Trademarks, in its articles 1 and 87. What does this mean? This means that, if the trademark has been registered in the patent and trademark office, the holder of that registration title has been granted the right of exclusive use over their logo, and they will also be authorized to prohibit any third party from using, without their consent, in economic traffic, any sign in relation to products, services or publications. In addition, the Law tells us that not only registered signs are granted rights, but also those that are not registered can be protected if they are a well-known trademark in Spain within the meaning of Article 6 bis of the Paris Convention, except as provided for in point c) of paragraph 2.

In this sense, we see that the legislation grants the holder the right to prohibit third parties from using their distinctive signs in economic traffic. For economic traffic, both the Trademark Law and Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015, on the approximation of the laws of the Member States relating to trademarks, and in subsequent judgments where the term has been clarified, such as the judgment of the Court of Justice of the European Union of April 30, 2020 (case C-772/18) The judgment of the Court of Justice of the European Union of April 30, 2020 (case C-772/18). What they come to tell us as a conclusion is that the important thing is not the use given to the object that incorporates the logo, but that the use made of the distinctive sign must be within private use.

In addition, among the specific cases prohibited by law, we find an enumeration in Article 34, which prohibits the following uses of a trademark:

• Placing the sign on the products or their packaging.
• Offering the products, commercializing them, or storing them for such purposes, or offering or providing services with the sign.
• Importing or exporting the products with the sign.
• Using the sign as a trade name or company name, or as part of a trade name or company name.
• Using the sign in commercial documents and advertising.
• Using the sign in telematic communication networks and as a domain name.
• Using the sign in comparative advertising in a way that violates Directive 2006/114/EC.

All uses made of the sign of a recognized or registered trademark would be prohibited for use to third parties. This includes comparative advertising that we can see in publications on different social networks, in which a product is advertised in comparison with another. As well as placing signs on products, packaging, advertising, etc.

The use of a logo by a third party in economic traffic may entail some legal implications, as its holder will have the right to exercise both civil and criminal actions against this third party, as provided for in Article 41 of the Trademark Law. These may include, among others, (i) the cessation of use by the third party, (ii) the payment of compensation for damages, (iii) the adoption of measures to cease this use, etc.

As we can see, this is a delicate issue and we must be careful when including any distinctive sign of a well-known brand in our publications, as previously mentioned, it will be considered illegal when the publication is made in economic activity. However, we must be aware of what each company has defined in their intellectual and industrial property policy, since some brands for promotion and notoriety purposes establish usage guidelines for their distinctive signs and allow the use of their logos. In this way, they seek to maintain brand consistency and distinction, allowing its promotion but avoiding any alteration of their signs by users.

It should be remembered that as long as the use of distinctive signs is for private use, we will not be committing any illegality. That is, if we are not in a commercial environment and the objects/publications will only be intended for personal use, without being affected in any way by an object or publication with commercial purposes.

If you have a business or website and use distinctive signs without the prior consent of the brand, you could be committing an illegality. Therefore, at Letslaw by RSM, we recommend monitoring publications and their content to avoid being involved in a claim for improper use of a brand.