Wednesday 11 December 2013

European Commission proposes new directive on the protection of trade secrets

On 28 November 2013 the European Commission brought out its proposal for a Directive on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure. 

The proposal results from a public consultation and an external study carried out at the end of 2012 and during 2013 in connection with the relevance and protection of trade secrets in the European Union and is made within the framework of the global strategy adopted by the Commission aimed at optimising the internal IP market.

Through the external study the Internal Market and Services Directorate General of the European Commission had noted the marked differences existing between the Member States with respect to the legal protection of trade secrets and to the measures available to the holders thereof in the event of unlawful acquisition, use and disclosure. For this reason the Commission has drawn up this proposal for a Directive, within the general context of the harmonization of IP and related rights in the EU, with a view to making the legal protection of trade secrets more effective.

The proposal begins with a definition of trade secrets taken word for word from article 39.2 of the TRIPS Agreement. It then sets out the circumstances in which the acquisition, use and disclosure of a trade secret is unlawful, where the key element is the absence of consent of the trade secret holder. The proposal similarly makes reference to the circumstances in which such acquisition, use and disclosure is considered lawful. These include independent discovery and reverse engineering.

The proposal then establishes the measures, procedures and remedies that should be introduced in the laws of the Member States for the protection of trade secrets. The system of protection thus envisaged is similar to that relating to IP rights and provision is consequently made for the adoption of interim and precautionary measures and for the subsequent implementation of final measures resulting from the decision on the merits of the case, such as an order for cessation or prohibition of the use or disclosure of the trade secret and the removal from the marketplace and destruction of the infringing goods. It is likewise established that damages may be awarded to the holder for the detriment caused, that these may be calculated on the basis of hypothetical royalties, and that the judgment may be published. Lastly, provision is made for the imposition of sanctions in the event of non-compliance with any provisional or final measure adopted and reference is specifically made in this regard to recurring penalty payments.

The proposal introduces some procedural rules, such as the implementation of mechanisms to preserve the confidentiality of trade secrets disclosed in court for the purpose of litigation and the setting of a time limit of two years for bringing actions for the infringement of trade secrets, which will, when the time comes, require the amendment of the laws in Spain. It will also be necessary to include measures aimed at avoiding abuses of litigation.

In accordance with the ordinary legislative procedure, the proposal will now be referred to the Council and to the European Parliament prior to its approval, which the Commission expects will take place before the end of 2014. There will subsequently be a term of two years for transposition into the national laws of the Member States.

Author: Carlos Morán

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Tuesday 12 November 2013

EPO to carry out searches on more than one invention in an application

The Administrative Council of the European Patent Office (EPO) has removed the obstacle to performing further searches for applications in the European regional phase (Euro-PCT applications) where an objection is raised on grounds of lack of unity of invention.

Under the current wording of Rules 164 and 135 of the Implementing Regulations to the EPC, where an application in the European regional phase is deemed not to comply with the unity of invention requirement, the EPO may only conduct a search on the invention appearing first in the claim set; no additional searches may be performed for any other inventions in the set. Since patent applications may not contain subject matter that has not undergone a search, up to now the only option for applicants interested in claiming such unsearched subject matter has been to file divisional applications, with the additional cost this entails. The costs attaching to filing a divisional application include paying anew all the official fees already paid previously for the parent application, including all the cumulative annuities, which can sometimes be considerable.

Rule 164 EPC is to be amended to allow additional searches where the EPO raises objections against the unity of invention of regional phase applications. The EPO will conduct a search on the first invention appearing in the claim set and will invite the applicant to pay further search fees for any other unsearched inventions within a two-month time limit.

The amended wording of these Rules will take effect on 1 November 2014.

Author: Ruth Sánchez

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Friday 8 November 2013

Inventors' Day

The ELZABURU Firm marks Inventors' Day, celebrated on 9 November, in recognition of all the inventors who have worked with us.  

This day was chosen because it is the birthday of Hedy Lamarr, Austrian screen star, telecommunications engineer, and inventor. She invented an early version of the spread spectrum modulation technique used in telecommunications to transmit digital data over radio frequencies. As an actress, she had roles in many Hollywood pictures, including Samson and Delilah.

Inventors' Day is a day set aside in recognition of all those individuals who, working on their own or as employees, make a decisive contribution to our everyday lives and to the progress of society as a whole.

Inventions are the best testaments to human ingenuity and are an essential part of every country's innovation system. Behind an invention there is always someone (the inventor) who, alone or as part of a team, has expended great effort to achieve results that will benefit everyone.

This year, it should be remembered, a Spanish railway engineer, José Luis López Gómez, won the European Inventor Award 2013's Popular Prize. And so, to some extent Inventors' Day can be regarded as a tribute to all those who are engaged in research activity in Spain.

Author: Pedro Saturio

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Monday 4 November 2013

Modernization of the trademark system in the European Union

In March 2013 the European Commission adopted a number of proposals to recast the Directive to approximate the laws of the EU Member States relating to trademarks (now codified as Directive2008/95/EC), and to revise the Regulation on the Community trademark (now codified as Council Regulation (EC) No. 207/2009) and the Regulation relating to fees (codified as Commission Regulation (EC) No.2869/95).

The aim of the proposals is not to create a new system; instead they intend to modernize the existing provisions to make the trademark registration system in Europe more accessible, coherent and efficient.

The new proposals include:

New terminology:
The OHIM will change its name to the ‘European Union Trade Marks and Designs Agency’ (or ‘EUTMDA’) and the terms Community trademark and Community Trademark Court will be changed to "European trademark" and "European Trademark Court".

The number of classes covered by a trademark application fee will be reduced from three classes to one, and the application fee will be lowered to reflect this change.

Definition of European trademark:
The requirement that a sign be capable of being represented graphically will be eliminated.

Absolute grounds:
Trademarks applied for in a foreign language will not be granted protection if refused on absolute grounds once the mark is translated into an official language of an EU Member State.

Designation and classification of goods and services:
The new legal texts will codify the EU Court of Justice’s ruling in the "IP Translator" case (literal interpretation). The applicants must specify the goods and services to be covered as opposed to using the general class heading. The owners of CTMs applied for prior to 22 June 2012 will be given a term (probably around six months) in which to evaluate and reformulate the list of goods and services.

Rights conferred by a European trademark:
- CTM infringement actions shall be brought without prejudice to any existing prior rights (article 16 (1) of the TRIPS agreement).
- In cases of double identity and similarity (in relation to the signs and goods and services in question) the only criteria applied shall be the origin function (the functions of advertising, communication and investment shall no longer enjoy protection).
- The use of a protected mark as a trade name shall be considered an infringement.
-  The "own name" defense shall only be applied to personal names. 
 - Rights holders will be able to prevent the use of their marks on illegal comparative advertising.

Protection of geographical indications and traditional terms:
Grounds for refusal shall be adapted to European laws with respect to geographical indications and traditional terms in the wine sector and other specialist sectors. 
Geographical indications and designations of origin protected under EU laws shall be considered applicable as relative grounds for refusal of registration and may thus be cited as possible bases for opposition.

European certification marks:
European certification marks, which currently exist at a national level only in some Member States, are introduced throughout the EU.

Changes in procedures:
- Member States shall establish an administrative procedure for the invalidation and revocation of trademarks (rather than court procedures).
- Ex officio examinations by national offices shall be limited to absolute grounds for refusal. 
- The option of applying for European trademarks via National Offices shall be eliminated.

Anti-counterfeiting measures:
-  Rights holders will be able to oppose the transit of counterfeit goods throughout the EU customs territory, irrespective of whether or not the goods had been released for free circulation. 
- Rights holders may also prevent the import of counterfeit goods to the EU even if the sender is acting for commercial ends (with a view to combating the sale of counterfeit goods online).
- Rights holders may prevent the distribution and sale of labels and packaging that may subsequently be used in connection with counterfeit goods.

Trademarks as objects of property:
Incorporation of new rules relating to the use of trademarks for commercial purposes.

It is expected that the above proposals will be formally adopted in spring 2014. Once these proposals are adopted, the EU Member States will need to incorporate the provisions of the new trademark directive into their respective national laws within a term of two years. Most of the amendments to the new Regulation on the European Trademark, meanwhile, will come into effect after its entry into force in 2014.

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Wednesday 23 October 2013

Divisional applications may again be filed as long as the parent application is pending

On 16 October 2013 the European Patent Office's Administrative Council adopted another amendment to Rule 36 of the Implementing Regulations to the EPC, dealing with the requirements for filing divisional applications. The purpose of this revision is to alter the existing approach of requirements governing divisional patent applications.

The EPO has amended Rules 36 and 135 of the Implementing Regulations to the EPC to enable divisional applications to be filed while the parent application is still pending. That is, the revision reverts back to the wording of Rule 36 as it stood before the current wording that took effect on 1 April 2010. This was not the only amendment adopted, however. An additional fee has been established as part of the filing fee for divisional applications in the case of divisionals of divisional applications. Accordingly, Rule 38 of the Implementing Regulations to the EPC has also been amended.

The intent behind the different revisions to Rule 36 has been to restrict the use of divisional applications as a strategy to extend the life of patent applications that looked as if they were going to be refused. The EPO's goal has been to afford certainty to third parties and decrease the number of divisionals filed, thereby reducing the additional workload they represented.

In the amended version currently in force, the EPO specified 24 months as a time limit for filing divisional applications. Specifically, it was stipulated that divisional applications could be filed:

  • within 24 months of the Examining Division's first communication in respect of the earliest application for which a communication had been issued, or
  • within 24 months of any communication in which the Examining Division had objected that the earlier application did not meet the requirements of unity of invention (Article 82 EPC), provided that this objection was being notified for the first time.

However, the outcome has not been as expected. Numbers of divisional applications have actually grown, because applicants have preferred to file divisionals before the end of the 24-month time limit, as a precaution. Not only that, but interpretation of the current wording of Rule 36 is not straightforward; in fact, it was revised further a few months before it was to enter into force. There have, as well, been numerous complaints from applicants who feel that the current wording of Rule 36 goes against their interests. Filings of successive divisionals from the initial application remains possible and is another aspect that has not improved. Thus, Rule 36, as it currently stands, has been more of a problem than a solution.

With this new revision the EPO has decided to try a new approach to solving the initial problem, i.e., limiting use of divisionals as a means of indefinitely extending the life of patent applications.

Under the new approach, the 24-month time limit has been rescinded, hence divisional applications may once more be filed as long as the parent application is still pending. However, an extra fee has been added on top of the filing fee, perhaps a simpler and more direct way to deter applicants who might be interested in filing successive divisionals.

The amount of the extra fee remains has yet to be decided, and discussions are planned, but the idea is to increase the fee progressively for each generation of divisional applications filed. The amendment provides that the first divisional application filed will not be subject to an additional fee.

This new revision of Rule 36 will enter into force on 1 April 2014 and will be applied to divisional applications filed on or after that date.

Author: Ruth Sánchez

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Tuesday 10 September 2013

China passes new Trademark Law

On 30 August 2013 the Standing Committee of the National People's Congress, China's top legislative body, passed the third revision to the Trademark Law. The new law will take effect on 1 May 2014. Here are some of the main changes:

Faster prosecution: Under the former law there were no time limits for prosecuting applications, oppositions, requests for cancellation, or disputes, and proceedings were very slow. The law has been amended to specify time limits of from 9 to 12 months for each proceeding, extendible for 6 or 12 months.

Sound and other non-traditional trademarks The new law paves the way for registration of sound marks and other non-traditional marks, though the latter are not specifically mentioned in the amended version of the law.

Multi-class filings Up to now, trademark filings in China have required a separate application for each class, even for the same trademark. Under the new law, China joins other countries, like Spain, in allowing a single application to claim multiple classes.

Electronic filing: Applications may be filed electronically now, but only on a limited basis. The new law specifies electronic filing as a valid means of filing applications and also makes provision for the electronic filing of all sorts of documents relating to an application.

Labeling of well-known brands: From entry into force of the new Trademark Law, sellers and manufacturers will not be able to label their products as well known in any sector of trade. In the event of non-compliance, the seller/manufacturer may be fined RMB 100,000 (approximately 12,500 euros).

New grounds for contesting bad-faith applications: Under the provisions of the new law, a trademark shall not be registered for goods that are the same or similar to those on which an earlier mark has been used where the applicant for the trademark has had a contractual, business, or other relationship with the owner of the earlier identical or similar mark and had knowledge of the earlier mark.

Monday 10 June 2013

The Berne Convention in the modern age, with Spanish legal principles as a point of reference

In the tumultuous times currently faced by copyright, the best thing to do is to go back and look for handholds at the source from which considerable rivers, tributaries and springs flowed for authors.  At a time when scientific knowledge seems to be limited to the microscopic boundaries of a 140-character “tweet” or confined to a post in a topical blog, it will be good to take our hats off to genuine scientific contributions.                  

A group of Spanish professors and experts in the field of copyright, led by the master Rodrigo Bercovitz, has just published a commentary of almost 1700 pages on the Berne Convention entitled Comentarios al Convenio de Berna which analyses, provision by provision, the intricacies of this key document in the history of copyright protection.        

The extreme importance of this Convention was consolidated by the tribute paid to it by the World Trade Organization’s TRIPS Agreement, among the tributes paid by many other international and Community initiatives. The WTO decided to adopt Berne as a legal reference framework for all countries.         

International legal doctrine did not, however, rise to the occasion.  Notwithstanding a number of isolated contributions, there did not seem to be any specific work that did justice to the magnitude of Berne’s contribution.  This void has now been filled as a result of this book with Spanish roots.                                                                                                          

Comentarios, published by Tecnos, contains the work of up to 15 university scholars, such as  Pilar Cámara, Ignacio Garrote, José Carlos Erdozaín, Nazareth Pérez de Castro and Rafael Sánchez Aristi, all of whom have proven experience in the field of copyright. It is cause for satisfaction that one of the contributing authors is the Doctor of Laws Patricia Mariscal Garrido Falla, a lawyer at ELZABURU, who provided commentaries on two of the articles of the Convention.                                       

In times of tribulations and uncertainty, it cannot hurt to utter a “long live the Berne Convention"  and delve into this transcendental study in order to find out where we came from and also to figure out where we want to go under expert guidance.

Author: Antonio Castán

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Tuesday 28 May 2013

Spanish railway engineer José Luis López Gómez wins the 2013 European Inventor Popular Prize

Photo taken from the EPO website
Spanish railway engineer José Luis López Gómez wins the 2013 European Inventor Popular Prize

The invention is a system, designed for Talgo, to optimize the guidance of train wheels on the track, improving stability and enhancing passenger comfort, particularly in high-speed trains.

His selection as winner of the Popular Prize is well-deserved recognition for a successful professional career with Talgo spanning nearly 40 years.
Photo taken from EPO twitter

The ELZABURU Firm took part in prosecuting the patent for this invention, so it is a source of pride and satisfaction for us to extend our warmest congratulations to José Luis López Gómez and the entire team of Talgo innovators.

Author: Pedro Saturio

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Monday 27 May 2013

Accession of Rwanda to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks

On 17 May 2013 WIPO officially announced Rwanda's accession to the Madrid System, whose members, with this year's accessions, now number 91. 

The Government of the Republic of Rwanda deposited its instrument of accession on 17 May 2013. 

The Madrid Protocol will enter into force, with respect to Rwanda, on 17 August 2013.

Author: Foreign Filing Department

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Friday 19 April 2013

José Luis López Gómez (TALGO), first Spaniard nominated for the European Inventor Award

The European Patent Office has recently published its list of finalists for the European Inventor Award 2013, a prize that in its eight-year lifetime has turned into one of the world's most distinguished awards for inventors. This year, for the first time since the award was created, the Industry slate includes a nominee from Spain, José Luis López Gómez.

This nomination is well-earned recognition for a Spanish inventor who has guided TALGO technology into use all over, in Europe, the United States, and China. We at ELZABURU take this opportunity to extend our most cordial congratulations both to our good friend José Luis and to TALGO and to wish them every success at the forthcoming award ceremony in Amsterdam on 28 May. In the present crisis our country is going through, seeing one of its inventors being honoured abroad is a hopeful sign.

Here is the European Patent Office's presentation of Jose Luis López Gómez: 
"The inventions of this Spanish railway engineer have made high-speed rail travel safer and more comfortable. He created a new method of ensuring a train's wheels stay safely on track and keep their optimal position on the rails at all times, especially in mountainous regions, and allows trains to travel 30% faster when going through curving stretches. His inventions propelled the company Patentes Talgo into one of the top spots among manufacturers of high-speed trains worldwide".

A new twist this year is the popular prize, allowing the public to vote for its preferred finalist.

For more information about the patent behind the nomination.

Author: Antonio Tavira

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Tuesday 16 April 2013

Court of Justice upholds the Decision authorizing enhanced cooperation to create the single European patent

This morning, 16 April 2013, the Court of Justice dismissed the actions brought by Spain and Italy against the Council Decision of 10 March 2011 authorizing enhanced cooperation in the area of the creation of unitary patent protection, rejecting all the appellants' pleas. The Court has followed Advocate General Bot's opinion to the letter four months after delivery.

The Decision of 10 March 2011 paved the way for adoption of Regulation (EU) No. 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection and of Council Regulation (EU) No. 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements. At the end of March of this year Spain launched challenges to both Regulations (Cases C-146/13 and C-147/13), so the final decision in this now long, drawn out chapter will have to wait until early 2015.

The judgment of 16 April 2013 is significant for a number of reasons, for instance, because it

a) is the Court's first interpretation of the "enhanced cooperation" provided for under Article 20 of the Treaty on European Union and Articles 326 to 334 of the Treaty on the Functioning of the European Union, tying it in not so much with integration as with surmounting the requirement of unanimity.

b) provides that creating European intellectual and industrial property rights falls within the framework of the internal market rather than coming under competition rules.

c) holds that "falling within non-exclusive competences" is a necessary and sufficient condition for enhanced cooperation.

d) accords the Council broad discretion in deciding when an issue is a "last resort" within the meaning of Article 20 of the Treaty on European Union.

e) reiterates that acts by the institutions are only misuse of power where there is objective, relevant, and consistent evidence that they have been taken solely, or at the very least chiefly, for ends other than those for which the power in question was conferred or with the aim of evading a procedure specifically prescribed by the Treaties for dealing with the circumstances of the case.

f) anticipating a very interesting point bearing on the actions that have recently been filed, considers that application of Article 118 of the Treaty on Functioning of the European Union probably clashes with that of Article 142 the Convention on the Grant of European Patents to the extent that the focus of the former is the European Union and that of the latter the Member States.

g) endorses an "incremental" model of integration, with partial integration being better than none at all.

h) posits that enhanced cooperation being possible in this context, creation of European intellectual and industrial property rights that do not encompass the entire territory of the Union, instead taking in only a certain number of Member States while leaving others out, should also be possible and that this is neither detrimental to the internal market nor a distortion of competition.

i) concludes that the competences, rights, and obligations of Spain and Italy have not been infringed in the course of this process.

Author: Manuel Desantes

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Friday 12 April 2013

India joins the Madrid System for the International Registration of Marks

On Monday April the 8th 2013, WIPO officially announced India's accession to the Madrid System for the International Registration of Marks, bringing the number ofcountries that have joined the Madrid System to 90.

The instrument of accession to the Madrid Protocol for the International Registration of Marks has been deposited by India's Minister for Commerce and Industry.

India's accession will take effect on 8 July 2013, at which time it will be possible to protect trademarks in India either as Indian national trademarks or in the form of international marks designating India as a Contracting Party.

Author: Foreign Filing Department

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Wednesday 27 February 2013

Proprietors of Community trademarks are protected against use of their marks by all third parties, including parties holding a later registration in their own name. Judgment of the Court of Justice of the European Union dated 21 February 2013, Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza (C-561/11)

1. Background. The Fédération Cynologique Internationale, proprietors of Community trademark no. 4438751 FCI FEDERACION CYNOLOGIQUE INTERNATIONALES in Classes 35, 41, 42, and 44, lodged a trademark infringement action with Community Trade Mark Court No. 1 in Alicante against Federación Canina Internacional de Perros de Pura Raza, who were themselves the proprietors of various Spanish trademark registrations for FCI (one senior to complainants' Community trademark) as well as a Community trademark registration for FCI (figurative).

With an eye to the facts in this case, the Community Trade Mark Court in Alicante raised the issue of whether the rights conferred by a Community trademark registration entitle the proprietor to prohibit the owner of another registered trademark from using that mark or, by contrast, trademark infringement proceedings are conditional upon first or concomitantly invalidating the defendant's Community trademark.

In the circumstances the Spanish court decided to stay the proceedings and refer the question to the Court of Justice for a preliminary ruling with a view to ascertaining the actual scope of Article 9.1 of the Community Trade Mark Regulation, and in particular whether the words "all third parties" mean that a third party may be prevented from using his own trademark registration before that later trademark registration has been declared invalid.

2.  Findings. In paragraph 33 of the judgment (C-561/11), the Court states explicitly that "… Article 9(1) of the Regulation does not make any distinction on the basis of whether the third party is the proprietor of a Community trade mark or not" and afterwards goes on to add that, as it had already made plain in a Community design matter (judgment of 16 February 2012, Celaya, Case C-488/10), "… that provision grants the proprietor of a Community trade mark an exclusive right to prevent 'any third party', not having its consent, from using, in the course of trade, any signs liable to infringe its mark".

But the Court does not stop there. It also states that "… the proprietor of a Community trade mark is entitled both to apply to OHIM for a declaration of invalidity of the later Community trade mark and to oppose its use through infringement proceedings before a Community trade mark court." The court thus views these two actions as alternatives, as options to which the proprietor of a Community trade mark registration is entitled.

The Court interprets the provisions of the Community Trade Mark Regulation in light of the "priority principle", under which the earlier Community mark takes precedence over a later Community mark.

The court concludes by affirming that "… if the proprietor of an earlier trade mark, in order to prevent the use by a third party of a sign that is liable to affect the functions of its trade mark, were required to await the declaration of invalidity of the later Community mark held by that third party, the protection accorded to it by Article 9(1) of the Regulation would be significantly weakened" (paragraph 51).

3. Remarks. The judgment sets out exactly the same position the Court took in the matter of Community designs (judgment of 16 February 2012, Celaya, Case C-488/10). While this does afford the proprietor of an earlier trade mark registration some certainty, by the same token it is somewhat at odds with the obligation all trademark proprietors are under to use their mark. According to this recent judgment, the proprietor of a later registration will be in a weak and vulnerable position when he first commences using his mark.

However, in its judgment the Court does not enter into any deliberation on the final consideration set forth obiter dictum in paragraph 55 of the Advocate General's opinion, namely, "were the Court to accept the interpretation of the term 'third party' …, that interpretation would have also to include a third party who is the holder of a later registered trade mark in a Member State, regardless of the substance of the relevant national legislation."

In this regard it is important to note that the stance taken by the Supreme Court of Spain is quite different from the position taken by the Court of Justice. The Spanish Supreme Court takes the view that to be able to find that infringement has taken place, and consequently that there is liability for damages, there must also be a previous or concomitant ruling invalidating the later infringing registration (judgment of Chamber I of the Supreme Court on 4 April 2012) (in Spanish).

This difference will definitely have to be taken into account when taking legal action and, above all, when deciding whether to file for a Spanish or a Community trademark. There is also a chance that the Spanish Supreme Court may revise its position based on the judgment issued by the Court of Justice. We will therefore have to be alert to future developments. 

Author: Luis Baz

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Wednesday 20 February 2013

Twenty-four States sign Agreement on a Unified Patent Court in Brussels

The signing ceremony for the International Agreement on a Unified Patent Court took place at 3:15 p.m. on 19 February 2013. The scene in the Council Room at the Justus Lipsius Building in Brussels was a strange one: all the Member States of the European Union present except Spain. Twenty-four of them – all but Bulgaria and Poland, present but not signatories – had just concluded an international agreement to establish a Unified Patent Court outside the institutional framework of the EU. There were just three authentic texts, in German, French, and English, all together in a single volume. Starting with Belgium, one by one they affixed their signatures in the presence of the cameras under the Irish Presidency, with Commissioner Barnier as Master of Ceremonies. Spain's absence had been announced, as had Italy's presence, Italy having decided to sign the Agreement even though it had not joined the enhanced cooperation procedure that had ushered in unitary protection for EU patents for the other 25 EU Member States. Thus, in Italy, the Agreement will apply only to traditional European patents validated in that country.

The Agreement will enter into force on the first day of the fourth month after deposit of the 13th instrument of ratification or accession by the States, provided that these 13 States include France, Germany, and the United Kingdom, unless that date falls in 2013, in which case the Agreement will enter into force on 1 January 2014. Heavy pressure will doubtless be brought to bear on all signatory States to deposit their instruments of ratification by 1 November 2013, which would result in the Agreement's entering into force on 1 April 2014.

The Friends of the Presidency Group (Patents) is to meet in Brussels on Friday, 27 February, with a packed agenda including a review of each State's plans for ratification and an initial exchange of views on setting up the Administrative, Budget, and Advisory Committees.

The ceremony concluded with a family photo – Commissioner Barnier's priceless comment in front of the cameras, "Do you allow the Commissioner to be in the picture?" – and a speech by the President of the Council underlining "this important step towards a new architecture within the European Union". No mention of Spain's absence was made.

Author: Manuel Desantes

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Thursday 10 January 2013

Another round concerning revocation of trademarks on grounds of non-use: the CJEU's judgment of 19 December 2012 in the Leno Case

The use requirement for Community trademarks and the territorial scope of that requirement remain controversial issues. A recent judgment by the CJEU has formalized matters somewhat in ruling that "borders of the Member States should be disregarded" when assessing genuine use of a Community trademark in the Community in matters bearing on revocation. Even so, this seemingly unambiguous finding fails to dispel all the question marks.

The case has again raised the long-standing issue of whether use of a trademark in a single Member State (in this case, The Netherlands) suffices to fulfil the requirement for "genuine use in the Community". The reference for a preliminary ruling was made in opposition proceedings at the Benelux national office requiring the opposing party to submit proof of use, but the doctrine set forth in the judgment is deemed extensible to applications for revocation of rights entered at the OHIM or counterclaims for revocation entered in infringement proceedings citing Community trademarks.

The Court has explicitly rejected both the OHIM Guidelines and a Joint Statement deeming use in one country to constitute genuine use in the Community, on grounds that they were not binding legal acts. Yet, at the same time, it has not completely ruled out that interpretation. The Court acknowledges that since a Community trademark enjoys more extensive territorial protection, it should be used "in a larger area than the territory of a single Member State", only to go on to say, right afterwards, that it cannot be ruled out that, in certain circumstances, the market for the goods or services for which a Community trademark has been registered "is in fact restricted to the territory of a single Member State". 

In the end the Court opted not to lay down a de minimis rule, admitting that it is impossible to determine a priori, and in the abstract, what territorial scope should be chosen and that it is up to the national courts to determine the genuine nature of use based on all the facts and circumstances in each individual case. The Court held that demonstrating whether "the commercial exploitation of the mark serves to create or maintain market shares for the goods or services for which it was registered" entails assessing the characteristics of the market concerned, the nature of the goods or services protected by the trademark, the territorial extent and scale of use, and the frequency and regularity of use. 

Now is thus a good opportunity to reflect on the consequences of the judgment and to review strategies with a view to the always difficult matter of choosing between national and Community trademarks, not only as grounds for opposition but also for portfolio maintenance.

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