Friday, 30 December 2016

Mercantile courts make a move

The Official State Gazette for the penultimate day of the year came out with a surprise in the form of the publication of a decision whereby the National Judicial Council has designated specialized courts to hear IP related lawsuits in the following autonomous communities:

Designated courts


Barcelona Mercantile Courts Nos. 1, 4 and 5: patents and industrial designs

Barcelona Mercantile Courts Nos. 2, 6, 8 and 9: trademarks


Madrid Mercantile Courts Nos. 7, 8, 9 and 10


Valencia Mercantile Court No. 2: patents
Valencia Mercantile Courts Nos. 1 and 3: trademarks and industrial designs

The decision has been prompted by the risk (relative though it may be), perceived upon the promulgation of the new Law 24/2015 on Patents, that lawsuits in the IP field could migrate to Barcelona. It will take effect from April 2017, which is when that new law comes into force.

It remains to be seen whether, since the geographical scope of the specialization remains limited, legal actions are going to be concentrated in    Madrid, Barcelona and Valencia (together with Alicante) to the exclusion of other autonomous communities. However, that is another story. For the moment, the decision of the National Judicial Council may be received with relief and applause.

Author: Antonio Castán

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Wednesday, 23 November 2016

The graphic representation of the Rubik’s Cube will no longer be a trademark in the European Union

All of us will be familiar with the famous puzzle invented in 1974 by Erno Rubik. The cube has a core mechanism with intersecting axes allowing each of the six faces to rotate independently, thus giving shape to a six-colour puzzle.

Given the worldwide success it rapidly achieved, the puzzle inevitably inspired the appearance in the marketplace in the course of the years of a multitude of other models made of various materials and in a range of shapes and colours.

In these circumstances appropriate protection naturally had to be sought for the Rubik’s Cube and was obtained through intellectual property rights such as those afforded by EU trademark No. 162784.

EU trademark No. 162784, the mark in dispute

A conflict arose in connection with that trademark in 2006, when a famous German toy manufacturer filed an application for a declaration of invalidity on the ground, essentially, that the mark embodied a technical function consisting of the rotatable nature of the product and that third parties were thus prevented from selling similar puzzles which necessarily incorporated that mechanism and took a shape essential for the proper functioning thereof.

Up to now the EUIPO and the General Court had maintained that the representation of the Rubik’s Cube with its grid structure had sufficient distinctive character to perform the function of a trademark and that the internal mechanism could not, in any event, be perceived therein. However, in a judgment published on 10 November 2016 (C-30/15 P) the Court of Justice has overturned those previous rulings.

In that judgment, which is in line with the conclusions previously drawn by the Advocate General, the Court holds that the essential characteristics of a shape must be assessed in the light of the technical function of the actual goods at issue (a three-dimensional puzzle), also taking into account the elements which are not visible in the graphic representation of that shape and the rotatability of the individual elements of a three-dimensional puzzle of the Rubik’s Cube type. Thus, for want of arbitrary or decorative elements, the shape of the Rubik’s Cube does not qualify for registration as a trademark, as such a registration severely limits the freedom of other traders to market products characterized by the same or a similar technical result, i.e., that of a three-dimensional puzzle to be resolved through positioning moveable elements in a logical order.

Now the EUIPO will have to deliver a fresh decision taking into account the findings of the Court of Justice.

N.BA Spanish version of this article was published in the economic newspaper Expansión

Author: Soledad Bernal Montes

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Friday, 21 October 2016

Brexit: Prospects for data protection

The decision made by the British people in the 23 June 2016 referendum has multiple consequences, many of them legal. Some have already been addressed, but the issue of what Brexit could mean for European citizens’ privacy and data protection rights has been pushed to the background.

The regulatory framework for data protection in the European Union conferred total freedom of circulation on data within the 28 Member States.  The United Kingdom’s exit from the EU, and consequently from that legislative environment, will therefore mean that its citizens will be considered as established in a third country, and issues such as those currently existing with the United States will have to be contended with.  Basically, sending data from any EU country to the UK will constitute an international data transfer, with the legal effects that this entails.
Obviously, given the importance of massive data processing for a company from any sector, the UK is not going to remain aloof from its former fellow Member States, since not interacting with the EU in this field would leave it out of the game in a sphere that is vitally important for the economy.   

This situation obviously gives rise to uncertainty -which will have to be cleared up by the British government in the coming months- concerning the decision to be made on the subject of data protection in the island State.

Friday, 7 October 2016

Increase in number of counterfeit goods seized by customs authorities in the EU in 2015

On 23 September, the European Commission published its report on the results of the border measures against infringement of industrial and intellectual property rights in 2015.

According to the report, in 2015 a total of 40,728,675 products suspected of infringing IP rights were seized at customs in the EU, representing a 14% increase with respect to the 35,568,982 products seized in 2014. The value of the goods seized in the EU in 2015 was more than 642 million euros.

In the case of Spain, the increase in the number of goods seized in 2015 was even greater: the number increased by 17% with respect to 2014 (1,893,019 products seized in 2015, compared with 1,619,264 products seized in 2014). Spain is still in the top 10 of EU countries with the largest number of items seized, specifically in 9th position.

The level of effectiveness of the border measures provided for under (EU) Regulation No. 608/2013 is very high: the goods detained were destroyed in 80% of cases, legal proceedings were undertaken in 9% of cases and the goods were only found to be genuine in 2.7% of cases.

China continues to be the main country of provenance of goods seized by customs in the EU (40%). By category, the main countries of provenance for the goods were the following: Benin (foodstuffs), Mexico (alcoholic beverages), Morocco (other beverages), Malaysia (body care products), Turkey (clothing), Hong Kong (mobile telephones and accessories, memory cards, computer equipment, CDs/DVDs and lighters), Montenegro (cigarettes) and India (medicines).

Products for daily use that could pose a danger to the health and safety of consumers (such as foods, beverages, toiletries, medicines, electrical appliances, toys, etc.) make up 25.8% of the total seizures.

The most used modes of transport, per number of seizures, are still postal and courier deliveries (77% of seizures), commonly in response to purchases made online.

The principal categories of goods seized in 2015 were cigarettes (27% of seizures), other goods, such as batteries, glue, furniture and lamps, manuals and other documents, magnets, pesticides, etc. (10%), toys (9%), labels, tags and stickers (8%) and foodstuffs (7%).

It is striking that labels, tags and stickers have risen to the top 5 on the list of goods seized in 2015, which would appear to confirm the latest technique used by criminal counterfeiting organizations of importing unbranded articles, separately importing branded labels and stickers and subsequently affixing the brands to the articles once in the EU. This technique was highlighted by Europol and the EUIPO in their 2015 Situation Report on Counterfeiting in the European Union of April 2015.

Author: Juan José Caselles

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Friday, 30 September 2016

Infringement of an EU trademark... but not in the whole of the EU

The Court of Justice of the European Union has recently delivered its judgment in case C-223/15, combit Software (judgment of 22 September 2016, ECLI:EU:C:2016:719) concerning the interpretation of the unitary character of the European Union trademark in relation to the scope of infringement actions against confusingly similar signs.

In the case that prompted the Oberlandesgericht Düsseldorf to make a reference for a preliminary ruling, that court considered that a company’s use of the word sign “Commit” for computer programs gave rise, on the part of the average German-speaking consumer, to a likelihood of confusion with the EU trademark “combit”.  However, in the German court’s view, there was no such likelihood of confusion on the part of the average English-speaking consumer, who could easily understand the conceptual difference between the English verb “to commit” and the term “combit”, comprised of the letters “com” for computer and “bit” for binary digit.

In those circumstances, the Oberlandesgericht Düsseldorf asked the CJEU for guidance as to which of those two consumer groups should be taken into account in order to assess the likelihood of confusion, and whether the EU trademark should be considered as infringed throughout the whole of the EU or whether the Member States should be differentiated individually.  

In response to the referring court’s question, the CJEU indicated that where there is a likelihood of confusion in one part of the European Union, it must be concluded that the EU trademark has been infringed, even if that likelihood of confusion does not exist in other parts of the EU. This solution is in keeping with the approach followed for oppositions to EU trademark applications, where the existence of a likelihood of confusion with an earlier trademark in one part of the European Union will suffice in order for the application to be refused.     

The Court of Justice nevertheless goes one step beyond the question referred by the German court and analyses the consequences of the declaration of infringement. Here, the CJEU is supported by the case-law established in its earlier judgment of 12 April 2011, DHL Express France (C-235/09, ECLI:EU:C:2011:238).  In that judgment, the Court of Justice had ruled that a prohibition on proceeding with acts which infringe or would infringe an EU trademark must, as a rule, extend to the entire area of the EU.  However, it established the exception (paragraph 48 of the judgment) that where the defendant proves that the use of the sign at issue does not affect, particularly on linguistic grounds, the functions of the trademark in part of the EU, the EU trademark court must limit the territorial scope of the prohibition that it issues.

Based on that reasoning, the Court of Justice has now concluded that in a situation such as the one raised by the Oberlandesgericht Düsseldorf, the EU trademark court must issue an order prohibiting use of the infringing sign for the entire area of the European Union with the exception of the part in respect of which there has been found to be no likelihood of confusion. In the CJEU’s opinion, this solution, which initially seems to contradict the principle of the unitary character of the EU trademark, is imposed by the need for exclusive rights to be exercised only in cases where the use of a similar sign by a third party adversely affects the functions of the trademark.

Author: Carlos Morán

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Monday, 8 August 2016


Please be informed that certain letters have been detected in which the addressees are informed that they have won a (fake) lottery prize and that a law firm is responsible for the process of verifying the payment of the lottery prize. To claim the prize, addressees are asked to send to a stated fax number their bank details, a copy of their passport and their telephone number.

Please note that these letters use the names and addresses of professional law firms, with false stamps and letterheads. In the event of any such letter purportedly being sent from ELZABURU SLP, we wish to state that our firm has no connection whatsoever with the parties sending the letters and does not undertake any kind of verification work in relation to the fake lottery prizes. 

Any parties receiving such letters should therefore refrain from providing any of the requested information and should notify their country’s relevant authorities of the attempted fraud.

Should you have any further questions, you may contact us as follows:

Tel.: +34 91 7009400
Fax: +34 91 3193810

Author: Elzaburu SLP

Wednesday, 3 August 2016

Confirmed! The holders of licenses in Community designs may also bring claims themselves even though the license has not been entered in the register

Only some months after having given a ruling (case C-163/15)  to the effect that the holders of licenses in Community trademarks (or, rather, “European Union trademarks”, as they now are)  were entitled to bring actions for infringement against third parties even though their licenses had not been entered in the register, the Court of Justice of the European Union was asked to give a preliminary ruling on whether the holders of licenses in Community designs (as they are still called) in turn had that right.

The CJEU has given its judgment in case C-419/15 which stemmed from a request for a preliminary ruling made by the Oberlandesgericht Düsseldorf (the German court of appeal) in connection with a dispute between two German companies. The first of the two, the plaintiff, was the holder of an exclusive unrecorded license in a Community design. The defendant was the distributor of a product which allegedly infringed that design.

In these circumstances the German court referred the following questions to the CJEU: 
  • May a licensee who has not been entered in the register bring claims for infringement of the rights in a registered Community design? 

  • In the affirmative, may the exclusive licensee also bring an action claiming damages on its own, or may it only intervene in an action brought by the rightholder itself?