Blocking user access to copyright-infringing websites – an option?

By Tobias Myrstrand Leander
Vía Flickr

The Court of Justice of the European Union (CJEU) has issued its judgment in Case C-314/12 dealing with a request for a preliminary ruling regarding interpretation of Article 8.3 of Directive 2001/29/EC (on harmonization of copyright in the information society) referred by Austria's Oberster Gerichtshof. The Austrian court asked whether copyright holders could apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright.

The case involved a rightholder who had applied for an injunction to force an Internet access provider to prevent its customers from accessing the website of a third party who was not itself a customer of the said access provider

The issue raised by the matter was whether the third party – who owned an infringing website – could, under Article 8.3 of the Directive, also be deemed to be using the services of providers of access to persons seeking to access the website in question.

The CJEU's decision is incontrovertible in ruling that the infringing third party was indeed using the services of access providers who allowed their customers to access the infringing website irrespective of whether or not there was a contractual link between provider and infringer. This means that an injunction may be ordered against all service providers, not only against the one that provides services to the infringer as its customer.

The judgment further rules that an injunction may be ordered without having to prove that an Internet service provider's customers have actually accessed a website containing unlawful content, because injunctions are aimed not only at bringing infringements of copyright and related rights to an end but also at preventing such infringements.

Nevertheless, the Court goes on to specify that the measures to be adopted by service providers in compliance with injunctions issued under the legislation cited may not unnecessarily deprive users of lawful access to the information while at the same time need to be reasonably effective so that they cannot be readily circumvented by users.

Accordingly, the judgment entitles copyright holders to apply to the courts for injunctive relief against Internet service providers whose services are used by users to access unauthorized material, and relief may comprise blocking access by users to copyright-infringing third-party websites such as websites providing downloads or streaming of films without the rightholder's consent.

Author: Joaquín Rovira 

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Revisions to the Patent Act: a necessary step to foment inventing in Spain

Nearly 30 years after passage of the current Patent Act, the legislation currently in force plainly stands in need of revision to bring it up to date with the advances made by society since that time. With this in mind, the Spanish Patent and Trademark Office (SPTO) has proposed a revised Patent Act, and a second draft of the proposed bill (in Spanish) was published this past month of December.

Lately, one of the most controversial aspects of the current system is what is known as the alternate route to grant, where the applicant may choose between the traditional granting procedure, in which all patent applications mature to grant, and the granting procedure involving preliminary examination, in which SPTO examiners examine the patent application, which will be granted only if the invention as claimed is deemed to fulfil the requirements of novelty, inventive step (non-obviousness), and industrial applicability. Unfortunately, this latter granting procedure has never taken hold, and today just 8 % of applications follow the route involving examination of the application. This shifts the burden of having to cancel patents that should never have been granted onto society, competitors, and the courts.

This is probably the main change in the draft bill, and from enactment substantive examination of patent applications will be mandatory, so that patents will only be granted where the invention claimed fulfils the legal patentability requirements.

Still, it is by no means the only change included in the new draft bill, which would put in place quite a few new provisions intended to have far-reaching effects on patent law by streamlining the system, simplifying requirements, doing away with formalities, and avoiding involuntary loss of rights.

Some of the most important of these changes are:

1. Simplifying the requirements for according a filing date by allowing first filings to be made in any language, though subsequently filing a Spanish translation would be compulsory.
2. Bringing forward the prior art search to the filing stage, hence the search fee will have to be paid at the time of filing.
3. Explicitly declaring medical uses or new therapeutic applications of known substances to be patentable.
4. Shifting the opposition stage to after grant.
5. Implementing new administrative procedures for revoking patents and for limiting them at the request of the patent holder, who will be entitled to limit the scope of the claims at any time during the legal lifetime of a patent.

Patents are not the only rights to be slated for significant changes: amendments are also being proposed for utility models, a mainstay of small and medium sized enterprises (SMEs) in Spain.

The novelty requirement for utility models is to be brought into line with the novelty requirement for patents, thereby removing a source of uncertainty in existing law. Conversely, the degree of inventive step will not be changed and will continue to be lower than required for patents. At the same time, the range of inventions that can be protected as utility models will be enlarged to include chemical substances, biotechnology inventions and pharmaceutical compositions excluded.

These changes could make utility models into an interesting option as, for instance, a means of obtaining rapid protection while a patent is being prosecuted more slowly.

And lastly turning to fees, the draft bill also provides for a 50-% reduction in the filing, search, and examination fees for certain inventors and SMEs, to make it easier for them to protect their inventions.

In short, the changes are intended to bring the patent system up to date and should be a step forward in providing protection for innovation in Spain.

Author: Francisco J. Saez

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A toast with sangria to the new EU regulation on geographical indications of aromatised wine products

By Katherine Price
(Vía Wikimedia)

On 20 March 2014 EU Regulation 251/2014 on geographical indications of aromatised wine products was published in the Official Journal of the European Union. The new regulation is to take the place of Council Regulation (EEC) 1601/91, although it is not until 28 March 2015 that the former will actually be applied, with the exception of certain transitional measures, and the latter will be repealed. Regulation 251/2014 provides greater protection for geographical indications of this kind, on a par with that already enjoyed by others regulated at the Community level (those relating to agricultural produce and foodstuffs, spirits and wines).

Aromatized wine products are divided into three categories: aromatised wines, aromatised wine-based drinks and aromatised wine-product cocktails.

The sphere of protection of aromatised wine products is extended with respect, for example, to names which evoke these geographical indications and it is also stipulated that the GIs protected under the regulation shall not become generic.

The use of expressions such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘flavour’, or the like is prohibited, as is the use of terms similar to any of the regulated sales denominations in the designation, presentation or labeling of alcoholic beverages which fail to comply with the requirements of the regulation. At the same time, rules for the use of those sales denominations and indications of provenance and for the registration of geographical indications in respect of goods of this kind are laid down, while the scope of protection and verification requirements are defined.

Turning to more specific details, it is to be noted that the word “Clarea” may only be used as a sales denomination for products made in Spain and that "Sangría"/"Sangria" is reserved for those made in Spain or Portugal.  When the product is made elsewhere, those words may be used only to supplement the sales denomination ‘aromatised wine- based drink’ and on condition that they are accompanied by the words ‘produced in …’ followed by the name of the Member State of production or of a more restricted region.

Author: Miguel Angel Medina

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Good news for forgetful applicants in Spain

Spanish Patent and Trademark Office
By Ricardo Ricote
(Via Flickr)

Article 33.3 of the Spanish Patent Act is very clear. If you do not request the search report in the 15 months following the patent application, it will be deemed to be withdrawn.

However in a breakthrough decision the Madrid High Court has now ordered the Spanish PTO to resume prosecution of a patent application which protects an innovative test for detecting the presence of certain viruses in the body. The applicant argued that Article 76.3 of the Administrative Procedure Act, which governs all applications to government offices, should prevail as it was passed by Parliament four years after the 1986 Patent Act. The Administrative Procedure Act treats the citizen much more benevolently, allowing him to remedy the defect even though the time limit for doing so has expired. In fact, he can remedy it at any time up to and including the day the public office notifies him of the expiration of the time limit. In the case of the search report, this will be the day on which the withdrawal of the application is published in the Official Gazette of the SPTO. The applicant may request the search report and pay the fee that same day.

This judgment (no. 77/2014 of 29 January 2014 in appeal no. 458/2011) breaks with the practice of the Spanish PTO. It has enormous implications as the same reasoning is applicable to any occasion on which an applicant for a patent, trademark or industrial design fails to comply with a step in the procedure, for instance if he forgets to pay the annuity fee.  

Author:Colm Ahern

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Shapes of goods to obtain a technical result: Registrable as trademarks?

The CJEU has recently (on 6 March 2014) issued a judgment in joined Cases C-337/12P to C-340/12P on interpretation of Article 7.1.e. CTMR and the requirements to be assessed in the case of trademarks that may comprise the shape of goods necessary to obtain a technical result.

Yoshida is a Japanese company that secured registration for two Community trademarks for certain types of cutlery in Class 8 and kitchen utensils in Class 21.

CTM 001371244

CTM 001372580

 

In practice the trademarks covered knife handles with concave dents for knives sold by Yoshida, as shown below.

Image downloaded from www.yoshikin.co.jp

  

The patterns of concave dents, also protected by several patents, served the purpose of helping to prevent the knives from slipping out of the user's hand when slicing.

Three companies, Pi-Design, Bodum France SAS, and Bodum Logistics A/S, filed applications with the OHIM for declarations of invalidity of the Community trademark registrations on grounds that they lacked distinctive character and were in breach of Article 7.1.e. CTMR, that is, that the trademarks consisted of the shape of goods necessary to obtain a technical result. After various appeals the matter reached the CJEU, and in its decision the Court first points out that the absolute grounds for refusal laid down in Article 7.1 CTMR are to be interpreted in the light of the public interest and that no company was entitled to a monopoly on technical solutions or product's functional characteristics.

The Court then points out that for proper application of Article 7.1.e CTMR the essential characteristics of the trademark need to be properly identified. Identification of the said essential characteristics requires a case-by-case assessment, taking into account the overall impression produced by the sign on consumers along with the various types of elements making up the sign, while having in mind that there is no hierarchy systematically applicable to the said elements. Furthermore, Article 7.1.e CTMR applies to both two-dimensional and three-dimensional trademarks.

The Court has also ruled that besides the above, it is also appropriate to take into account such other additional aspects as the filing date of the trademark application, to establish whether the grounds for invalidity had effect on that date, and additionally how the trademark has been used in practice since the filing date and whether there are earlier patents in existence. In not doing so the General Court erred in law.

Since the preceding aspects had not been taken into account, the CJEU referred the matter back to the General Court for judgment.

Author:Marta Rodríguez

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Success with consumers may do in the KORNSPITZ brand for bread rolls

In its judgment of 6 March 2014 in Case C-409/12, the Court of Justice of the European Union ruled on the conditions to be fulfilled for a declaration of revocation of a trademark due to loss of distinctive character.

In the case in question, the Austrian trademark KORNSPITZ had become the commonly used name for a type of bread roll among consumers but not among bakers, who baked the rolls and sold them to the public from a mix supplied by the trademark owner.

The Court followed the ruling already made in its judgment of 29 April 2004 in Case C-371/02 (Björnekulla Fruktindustrier) in a similar matter, though involving pickled gherkins instead of bread rolls. In the opinion of the Court, the consumers' or end users' perception of the goods is a decisive factor in assessing whether a trademark has become commonplace. It therefore concluded that a trademark may be cancelled on grounds of lost distinctiveness where it has become the common name for a product among consumers but not among sellers of that product.

The Court then considered the conditions in which a trademark owner's conduct may be deemed to be "inactivity" within the meaning of Article 12.2.b) of Trademark Directive 2008/95, more specifically, whether the trademark owner's failure to take action to encourage sellers of the product to inform customers that the name is a registered trademark can be regarded as "inactivity".

The Court answered that question in the affirmative, which quite clearly places a heavy burden on trademark owners.

Lastly, the Austrian court that referred the issue for a preliminary ruling also asked whether revocation of a trademark on grounds that it has become the common name for a product necessarily presupposes that it must be ascertained whether there are other names for that same product besides the registered trademark.

The Court ruled the existence of other names to be irrelevant in that in no case would that alter the fact that the trademark had become the commonly used name for the product, the condition for revocation laid down in the Directive.

Author: Carlos Morán

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End of the road for counterfeiting goods in transit in the EU

European Parliament
By Cédric Puisney
(via Wikipedia)

On 25 February 2014 the European Parliament gave its approval to the Proposal for a Directive of the Parliament and of the Council to approximate the laws of the Member States relating to trade marks (recast).

The interesting new provisions contained in the proposal include certain measures which numerous organizations and enterprises across a broad range of sectors have long been calling for, in that they are intended to put an end to the freedom of transit of counterfeit goods through the customs territory of the EU even when those goods are destined for a country outside the Union. The measures approved in this regard are, specifically, the following:

1. The holder of the trademark right may prevent goods coming from third countries and bearing a counterfeit trademark from entering EU territory.

2. The holder of the right may take appropriate legal steps and actions against counterfeit goods. These include the right to request national customs authorities to implement measures to detain and destroy such goods under the new customs Regulation (EU) No. 608/2013.

3. The holder of the right may also prevent the entry into the EU of small consignments of counterfeit goods, particularly in the context of sales over the Internet. 

A small consignment is defined in Regulation (EU) No. 608/2013 as a postal or express courier consignment containing three units at most or having a gross weight of less than 2 kg.

Parliament proposes that in these cases the individuals or entities who ordered the goods should be notified of the reason why the measures have been taken and similarly be informed of their legal rights vis-à-vis the consignor.

The provisions thus approved in connection with small consignments follow on from the recent judgment of the Court of Justice in case C-98/13, published on 6 February 2014, in which it was held that, even where the sale of goods for own use had taken place through a website in a non-member country, the holder of the intellectual property right could not be deprived of the protection afforded by the customs regulation and the consequent power to prevent those goods from entering the European market, without there being any need first to ascertain whether the goods had previously been the subject of an offer for sale or advertising targeting European consumers.

In conclusion, the European Parliament has taken a great step forward in the fight against counterfeiting on all fronts and not just inside its territory.

Autor: Transi Ruiz

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Is proof of damages required in Spain if patentee opts for equivalent royalty?

Article 13 of the Enforcement Directive 2004/48/CE rather confusingly seems to equate equivalent royalty with damages, whereas in many continental legal systems it might fit more easily into the category of unjust enrichment i.e. the infringer has obtained something to which he has no legitimate right. 

The reference to damages, which has been transposed in Article 66 of the Patents Act has caused particular problems in Spain where case law has traditionally held that damages must be “real and effective” and strictly limited to those that are proven. Should the patentee then have to prove damages if he opts for equivalent royalty which, after all, has nothing to do with any actual damage he has suffered? This has led to some rather confusing and contradictory case law and the development of the doctrine of “ex re ipsa” which seeks to somehow fit equivalent royalty into the traditional picture by saying that there is no need to prove the existence of damage if by the nature of the thing under analysis (res), the existence of damage is clear (from the thing itself). However it would have been much better to acknowledge that as equivalent royalty cannot really be equated with the continental law concept of damages, as then the question of proving damages does not even arise.

This is exactly what the Madrid Appeal Court has done in Judgment no. 25/2014 of 24 January 2014 in appeal no. 578/2012. The ruling sets out that the purpose of equivalent royalty is not to compensate a loss suffered by the patentee, but rather the illegitimate invasion of his exclusive right. The Court does not say that it is necessary to show that the existence of a loss is self-evident (ex re ipsa) but rather that there is no need to prove or even consider any such loss. This comes as good news to patentees who up to now ran the risk that a court might find that the loss was not as self evident as they claimed e.g. when the patentee himself is not exploiting the patent in Spain and has made no preparations to do so either directly or through the granting of licenses. Even better, the Court gives clear guidance on what type of equivalent license terms can be sought including an up front payment, a fixed minimum monthly royalty and variable royalty based on sales. This is good news for patent litigators in Spain where judges traditionally tend to be guarded in their damages awards.

Author:Colm Ahern

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