WIPO to hold a Diplomatic Conference to conclude a Treaty on Copyright Limitations for the Benefit of Visually Impaired Persons

On 18 December 2012 an extraordinary session of the World Intellectual Property Organization convened a Diplomatic Conference for June of next year. Its main mandate is to conclude a treaty regulating limitations and exceptions for use of copyright to facilitate access to copyrighted works for millions of visually impaired persons and people with print disabilities.

In few countries does current legislation make provision for specific limitations for the visually impaired. In most cases the exceptions made to copyright are intended for the benefit of the handicapped in general, without specifying the type of impairment (as in, for instance, article 31bis, section 2, of the consolidated text of Spain's Copyright Act). Internationally the legal vacuum is still greater, in the absence of any treaty dealing with limitations of this kind. This project is estimated potentially to benefit some 300 million blind or visually impaired persons around the globe, particularly those living in the less developed nations. The future treaty is intended to honour the rights of this group of people to non-discrimination, equal opportunities, accessibility, and full participation and inclusion in society proclaimed in the Universal Declaration of Human Rights and the United Nations Convention on the Rights of Persons with Disabilities.

Under the draft text of the treaty the contracting parties are obliged to make works available to the visually handicapped in an accessible format. This will entail a limitation of the copyright holders’ rights of reproduction, distribution, interpretation, translation and communication to the public (see article C of the draft). The conversion of the works into accessible formats (Braille, large print, audio and other formats) will be undertaken by authorized entities who will similarly have the task of making the copies available to the beneficiaries and facilitating the exchange of works with entities in other countries. The manner in which that exchange is to take place, together with the laying down of parameters to determine what should be understood by the distribution of the works at a reasonable price in the different countries, are issues that will have to be discussed at the conference in the coming month of June.

Author: Patricia Mariscal

Visit our website: http://www.elzaburu.es/

Unitary Patent latest news

On 19 November the European Commission, European Council, and European Parliament's Legal Affairs Committee reached a tentative agreement on the proposed creation of the unitary EU patent and Unified Patent Court. The final vote by the European Parliament on the legislation laying the groundwork for this new legal system is to be held on 11 December.

Spain and Italy are not taking part in this EU initiative, claiming that it discriminates against their languages. Also on 11 December the Advocate General is to make public his opinion in the appeals lodged by Spain and Italy against Council Decision of 10 March 2011 authorising enhanced cooperation in the area of the creation of unitary patent protection.

Author: Enrique Armijo Chávarri

Visit our website: http://www.elzaburu.es/

New Accessions to the Madrid Protocol relating to the Madrid Agreement concerning the International Registration of Marks

Designation of the Philippines and Colombia became possible under the Madrid Protocol in the framework of the Madrid System for the International Registration of Marks on 25 July and 29 August 2012, respectively.

Designation of New Zealand, in turn, will be possible from 10 December 2012.

To date, the number of countries that have joined the Madrid System totals 88, with Mexico being expected to join in early 2013 and afterwards Thailand.

Trademark rights will thus be obtainable under the Madrid System for the International Registration of Marks in three IberoAmerican countries. Cuba has been a member of the Madrid System since 1989, Columbia has recently joined, and Mexico will become a member shortly.

Author: Cristina Arroyo, Juan Miguel Sainz de Marles e Inmaculada Rodes

Visit our website: http://www.elzaburu.es/ 

Open Access to Scientific Research Information in the EU

The European Commission has announced its plans to improve access to scientific information produced in Europe in order to increase innovation capacity and benefit citizens by giving them quicker access and opportunity to build upon publicly-funded research. The EC will start with making open access to the scientific publications a general principle of Horizon 2020, the EU's Research & Innovation funding programme for 2014-2020. Those would either be made immediately accessible online (‘Gold’ open access) and be eligible for up-front reimbursement of publications costs, or no later than six months (twelve months for articles in the fields of social sciences and humanities) after publication (‘Green’ open access). The EC said that without quick access to up-to-date scientific literature, it takes small and medium-sized enterprises up to two years longer to bring innovative products to the market and only 25% of researchers share their data openly. 

This project will give Europe a better return on its €87 billion annual investment in R&D and the aim of the EC is that by 2016 open access would be available to 60% of European publicly-funded research articles. It furthermore urges Member States to take a similar approach and the UK was the first one to do that, preceding the Commission’s announcement with one day (16^th July 2012), by deciding to remove the pay walls of taxpayer-funded research through a “gold” model, introduce walk-in rights via public libraries and extend access licensing of universities.

Author: Gergana Dimitrova

Visit our website: http://www.elzaburu.es/ 

European patent owners’ scope for procedural action under Regulation (EC) 44/2001 strengthened

We have learned from our good friend Aurelio López-Tarruella that in a judgment given on 12 July 2012, in reply to a request for a preliminary ruling submitted by the Dutch courts within the framework of an action for infringement of a European patent by various parties (Case C-616/10), the European Court of Justice has clarified the  scope of articles 6.1, 22.4 and 31 of Regulation No. 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters.

Two aspects of the judgment warrant special mention:

First, the ECJ allows that the special rule of jurisdiction laid down in article 6.1 of Regulation No. 44/2001 may prevail over the general rule based on the defendant’s domicile. For the ECJ the fact that actions for infringement of a European patent should, according to article 64 of the EPC, be dealt with by national law does not prevent the national court from deeming the different claims brought before it to be connected and thus permitting article 6.1 of the Regulation to kick in.

Second, the ECJ confirms that in the context of a European patent infringement action where the defendants have argued, by way of defence against the award of interim relief, that the patent is invalid, article 22.4 of Regulation No. 44/2001 (relating to jurisdiction as to the substance) shall not preclude the application of article 31 of that same Regulation (relating to jurisdiction over provisional or protective measures). The court states that the two provisions refer to different situations and have separate fields of application. Even so, the ECJ allows that the court seised of the application for interim measures may refuse such relief if it considers that there is a reasonable possibility of the patent ultimately being declared invalid by the competent court. 

Author: Enrique Armijo Chávarri

Visit our website: http://www.elzaburu.es/ 

European Parliament and Council at loggerheads over unitary European patent. Next chapter: September 2012

On 10 July 2012 there was lively debate on the Legal Affairs Committee of the European Parliament over the suggestion made by the Council on 29 June that articles 6 to 8 of the “Proposal for a Regulation of the European Parliament and of the Council implementing enhanced cooperation in the area of the creation of unitary patent protection” be deleted. The implementation of that suggestion would entail denying the European Court of Justice the capacity to interpret uniformly the core of patent law, specifically, the right to prevent the direct or indirect use of the invention and the limits of patent protection. The majority of the MEPs came out strongly against the deletion, maintaining that it would constitute a breach of ordinary legislative procedure, and it was thus decided that the matter should be referred back to the Commission and the Legal Service of the Parliament. More news is expected in September.

Following the mess resulting from Opinion 1/09 of the Court of Justice in March 2011, on 26 May 2011 the Commission proposed that the work be restructured in the form of three legal instruments within a single package to be adopted by the 25 Member States participating in the enhanced cooperation procedure, Spain and Italy having opted out, those instruments being a regulation on the creation of unitary patent protection, another regulation confined to translation requirements, and an international agreement for the creation of a unified litigation system with a unified patent court.

On 5 December 2011 the European Parliament and the Council struck a political deal which left just one question in the air, namely, that of where the new court should be located. As the Council had announced that a solution could be forthcoming towards the end of June 2012, Parliament decided to wait and to put the political deal to the vote at first reading in the plenary session to be held on 4 July. On 29 June the Council announced that a “Belgian style” agreement had indeed been reached and that the seat of the court would thus be in Paris while there would be specialized chambers in London and Munich, but that this would entail the deletion of articles 6 to 8 of the basic Regulation. British, German and French professionals had long been calling for the removal of those provisions, on the ground that the Court of Justice is not a specialized body and that its intervention will only give rise to greater cost and delay in the handling of infringement and nullity actions, and their views were echoed in a report by the UK Parliament published on 3 May 2012.

On 2 July the European Parliament decided not to put the package to the vote on 4 July and instead to convene the Legal Affairs Committee for 10 July. We now know the outcome of the meeting of that committee, although we cannot yet gauge its implications. To liken the situation to that of players in the time-honoured board game known as the Game of the Goose, we might have stumbled into the maze on square 42 and therefore have to go back to square 30 or, worse still, have fallen into the well on square 31. In the first scenario months will have been lost; in the second we may have to wait another three years for someone to come along and rescue the project. It is, at all events, every day more evident that, after forty years of negotiations, on this front we are witnessing a watering down of the European construction process and a waning of the belief that industrial property is one of the key elements for the consolidation of the internal market.

Author: Manuel Desantes

Visit our website: http://www.elzaburu.es/ 

Important Ruling by the Court of Justice of the European Union directly affecting practice (IP TRANSLATOR)

A recent ruling by the Court of Justice of the European Union in the IP Translator case (C-307/10) has held that where an applicant specifies the general heading of goods or services for a given Nice Class (Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks) with intent to cover all the goods or services in that class, it must be expressly so stated. Otherwise, trademark coverage will extend only to the literal content of the class heading. (*)

The ruling was dated 20 June and the OHIM reacted immediately, issuing Communication No. 2/12 of the President of the Office of 20 June 2012, requiring CTM applicants to include a declaration expressly indicating whether or not coverage is meant to extend to all the goods/services in each class claiming the general Nice heading, starting with all applications filed from 21 June.

In keeping with our practice of safeguarding our clients' best interests, our Firm too reacted at once, and since 21 June 2012 we have been filing all CTM applications claiming the general heading of an International Class with the requisite express declaration stating that the class heading is intended to cover all goods/services included in the respective class.

Additionally, from that same date all national applications designating class headings that we file in Spain are also accompanied by an express indication that all goods included in the class are covered unless the order letter instructs otherwise. 

(*) For instance, as in the case at hand, the general heading of Class 41 ("Education; providing of training; entertainment; sporting and cultural activities") would not cover "translation services" without an express indication of intent to cover all the services included in that class.

Author: Ramón Cañizares

Visit our website: http://www.elzaburu.es/ 

The selection and use of a reputed trademark as a keyword with “due cause” does not constitute infringement of the rights of the trademark holder. Judgment of the CJEU of 22 September 2011, Interflora (C-462/09).

1.    Background.  Interflora, the famous network of independent florists with whom clients may place orders in person, on the telephone or via the Internet, brought legal action in the United Kingdom against Marks & Spencer (one of the main retailers in the United Kingdom) for having selected the registered trademark INTERFLORA, as well as other variants, as a keyword, which meant that when the term “Interflora” was entered into the Google search engine, Marks & Spencer advertisements appeared under the heading “sponsored links”.  The text of the advertisement did not, however, include the term “Interflora”, but it did contain references to M&S and <marksandspencer.com>.  The High Court of Justice (England & Wales), Chancery Division, stayed the proceedings and referred a number of questions to the Court of Justice of the European Union (CJEU) for a preliminary ruling.  All of the questions were aimed at elucidating the extent to which Marks & Spencer’s conduct might constitute infringement of Interflora’s trademark rights.

2.    Findings.  The CJEU first of all refers to the doctrine enshrined in the judgments of 23 March 2010 (joined cases C-236/08 to C-238/08 Google) and 25 March 2010 (case C-278/08 BergSpechte), and stresses that the sign selected by an advertiser as a keyword constitutes use in trade.  The court confirms that the use of the mark is made in relation to the advertiser’s goods or services, even where the sign selected as a keyword does not appear in the advertisement itself, and in order for the trademark holder to be able to prevent such use, the existence of a double identity situation, as described in Article 5.1(a) of the “Trademark Directive”, will not suffice; rather, the use must have, or be liable to have, an adverse effect on the functions of the mark (the essential function ofguaranteeing the origin of the product to consumers and the advertising function), as well as the newly-coined trademark’s “investment” function which, despite overlapping with the advertising function to a certain degree, refers to the measures taken by a trademark holder “to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty”.

The second part of the judgment analyses the dispute from the standpoint of Article 5.1(b) of the “Trademark Directive” and from the perspective that the INTERFLORA trademark has a reputation.  The court finds that the holder of a reputed trademark is entitled to prevent the use of its mark by third parties where that use takes unfair advantage of the distinctive character or the repute of the trademark or is detrimental to that distinctive character or repute.  Based on case-law arising from the judgments handed down in cases C-408/01 Adidas and C-487/07 L'Oréal, the court holds that the selection of a sign identical or similar to a reputed trademark as a keyword within the context of an Internet referencing service does not necessarily contribute to a reduction in the sign’s distinctive character and its becoming a generic term.

In the final part of the judgment, the CJEU states that a trademark with a reputation selected within the context of an Internet referencing service by a party other than the trademark holder can be construed as having been used with due cause and within the scope of healthy and fair competition where the sponsored link advertisement proposes an alternative to the goods or services of the trademark holder without offering a mere imitation of the trademark holder’s goods or services, without causing dilution or tarnishment, and without adversely affecting the functions of the trademark in question. 

3.    Remarks.  This judgment once again tackles the boundaries of legality in the use of third-party trademarks as keywords, although it introduces two new aspects in respect of previous judgments.  On the one hand, it refers to the trademark’s “investment” function and, on the other hand, it tackles the dispute from the standpoint of a trademark with a reputation.  The court once again defends the principle of free competition, but provides the national courts with a series of guidelines and tools so that they can resolve any disputes arising between trademark holders (including holders of reputed trademarks) and those who select those marks as keywords based on the wording of the sponsored link and its content.

Author: Luis Baz

Visit our website: http://www.elzaburu.es/

The surface appearance of the glass of a bottle may be registered as a Community trademark. Judgment of the CJEU of 20 October 2011, Freixenet (C-344/10 P & C-345/10 P).

1.    Background.  The company Freixenet filed applications with the Office for Harmonization in the Internal Market (OHIM) for trademark registrations consisting of the image of a glass bottle described as a “frosted black matt bottle” and the image of another bottle described as a “white polished bottle which, when filled with sparkling wine, takes on a golden matt appearance similar to a frosted bottle”.  In its applications Freixenet declared that it did not wish to obtain protection for the shape of the packaging, but rather for the specific appearance of its surface.

The OHIM refused the trademark applications on the grounds that they were devoid of distinctive character for the purposes of Article 7.1 b) of the “Community Trademark Regulation” (Regulation 40/94).  This decision was confirmed by the OHIM’s Board of Appeal and later by the General Court.  Freixenet filed a cassation appeal with the Court of Justice of the European Union (CJEU).      

2.    Findings.  The CJEU began by reviewing its own case-law on the distinctive character of trademarks within the meaning of Article 7.1 b) of Regulation 40/94, particularly with respect to three-dimensional trademarks.  According to that case-law, since average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character.

The CJEU holds that this case-law also applies to the trademarks sought by Freixenet, even though they do not claim the shape of the packaging, but rather the specific appearance of its surface.  It concludes that the General Court had erred in not having based its assessment of the case on the aforementioned doctrine.

The judgment states that instead of checking whether the trademarks that had been applied for departed significantly from the norm or customs of the sector, the General Court merely made the general observation that the colour and polish of the glass of the bottle could not function as a trademark unless used in relation to a word element.  According to the CJEU, this appraisal means that all trademarks consisting of the shape of the packaging of the product itself, without a word component, would automatically be excluded from the protection conferred by a Community trademark.

As a result, the CJEU set aside the judgment of the General Court and annulled the decisions of the OHIM which refused to grant registration to Freixenet’s marks.

3.    Remarks.  This judgment by the CJEU is certainly good news for drinks producers, given that it confirms the possibility of registering a particular feature or characteristic of a bottle as a Community trademark without the need for it to be accompanied by a word element, provided, of course, that it is sufficiently distinctive, in which respect it will be necessary to ensure that it “departs significantly from the norm or customs of the sector”. 

Author: Carlos Morán Medina

Visit our web: www.elzaburu.es/en 

The filling of packaging on the instructions of another company does not constitute third-party trademark infringement. Judgment handed down by the CJEU on 15 December 2011, Red Bull (C-119/10).

1.         Background.  The company Smart Drinks, Ltd. (Smart Drinks) instructed Frinsdranken Industrie Winters BV (Winters) to fill cans with fizzy drink.  The empty cans had previously been supplied to Winters by Smart Drinks and bore various distinctive signs, some of which were similar to the well-known energy drink trademark RED BULL.

Red Bull GmbH (Red Bull) filed proceedings with the Dutch courts against Winters for infringement of its RED BULL trademark.  The issue of whether the filling of packaging supplied by a third party bearing a certain sign constitutes use of that sign within the meaning of Article 5.1 of the First Trademark Directive was referred to the Court of Justice of the European Union, which held that that it does not.

2.         Findings.  The Court of Justice of the European Union exempts Winters from liability for any infringement of Red Bull’s trademarks.  It holds that Winters merely executed a technical part of the production process of the final product, without having the slightest interest in the product’s trade dress or in the signs affixed to the packaging.  In that regard, the Court refers to the findings laid down in the judgment of 23 March 2010, Google France and Google (C-236/08 & C-238/08), in which it was affirmed that creating the technical conditions necessary for the use of a sign and being paid for that service does not mean that the party offering the service itself uses that sign within the meaning of Directive 89/104.

As an additional factor to support the finding that Winters had not infringed any trademark rights, the judgment adds that the necessary identity or similarity between the goods covered by the RED BULL trademark registrations (which identify a drink) and the services rendered by the company in question, consisting of the filling of packaging, is lacking.

3.         Remarks.  Red Bull and the European Commission had expressed their concerns to the Court of Justice of the European Union that trademark rights could be infringed through the strategy of dividing the production process into several stages, and entrusting those stages to different service providers.  The judgment expressly rejects this argument on the grounds that the protection conferred on the trademark owner is guaranteed by means of the possibility of holding the party contracting those successive services in order to obtain the final product to which the infringing sign is affixed liable for the acts of infringement.  In view of this doctrine, it will therefore be necessary for the trademark owner to design an adequate strategy to be followed so that defensive action can be instituted against the party that is truly liable for the trademark infringement.

Author: Carlos Morán Medina

Visit our web: www.elzaburu.es/en