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Monday, 27 November 2017
Thursday, 23 November 2017
Venezuela: Recommended to pay official fees for trademark in good time before the due date
In Venezuela, as a consequence of the
Partial Reform of the Stamp Duties Act (Article 6 of Decree No. 1398) in 2015,
there has been a significant increase in the official fees for procedures for
registered rights.
The Reform has also complicated the handling of
payment of fees for registration, renewal and recordals of changes of
ownership, changes of address and licences in the area of trademarks.
Experience has shown us that in Venezuela steps
must be taken as far in advance of the due date as possible, given that
payments of fees must be transferred to the account of the Autonomous
Intellectual Property Service (SAPI) and once the transfer has been completed,
the transfer receipt must be officially stamped. It is not uncommon to
encounter extraordinary bureaucratic obstacles, which lead to delays.
Furthermore, the U.S. Government recently
imposed economic sanctions on Venezuela, which also have an impact in the field
of trademarks. The Office of Foreign Assets Control (OFAC) is monitoring
transactions made in dollars to accounts in Venezuela, which can lead to
considerable delays in the completion of payments. These obstacles can have
significant consequences for trademark rights. If we consider, for example, the
renewal procedure, in relation to which there are no provisions under
Venezuelan legislation for a grace period beyond the expiry date, the payment
of the official fee (which for one trademark in a single class currently
amounts to 3.000 USD) must be duly confirmed by the SAPI prior to the expiry
date of the trademark, otherwise it will be declared abandoned.
It is therefore advisable to keep in mind that
in Venezuela, with respect to those procedures requiring payment of a fee
affected by Article 6 of Decree No. 1398, it is necessary to act well in
advance of the deadline.
Author: Cristina
Arroyo
Visit our
website: http://www.elzaburu.es/en
Friday, 3 November 2017
Indonesia becomes the 100th Member of the Madrid Protocol
Indonesia joins the Madrid System having submitted some of
the most common declarations permitted under the Madrid Protocol. The
Indonesian Trademark Office will be able to extend the time limit for refusal
of the trademark to 18 months, by virtue of Article 5.2 b) of the Protocol, and
will be able to charge an individual fee for applications, subsequent
designations and renewals affecting Indonesia, pursuant to the provisions of
Article 8.7. The Indonesian government has also made the declaration provided for
under Rule 20bis(6) of the Common Regulations, indicating that recordals of
licenses on the International Register shall have no effect in Indonesia. For
recordals of licenses to have effect, it will be necessary to file the
appropriate recordal application with the Indonesian Office.
There are certain particularities in legal and
administrative practice in Indonesia regarding the prosecution of trademarks.
For example, national applications must be accompanied by a Bona Fide
Statement. For the time being, the Madrid System does not appear to have
developed any formula for adapting this requirement laid down at national level
to the international level. Other member countries of the Madrid System have
addressed this requirement by formulating an ad hoc document or including an
express declaration on the international application form. It remains to be
seen how the Indonesian authorities will adapt those specifications of
goods/services that have been deemed acceptable by the home office or WIPO to
the sui generis practice in Indonesia. Such issues will arise in day-to-day
practice and it will be necessary to work closely with our network of local
agents to adapt to the new situation and guarantee the best possible strategy
for trademark owners with interests in Indonesia.
Author: Cristina Arroyo
Visit our website: http://www.elzaburu.es/en
Monday, 23 October 2017
Philippines – New Declaration of Actual use for maintenance of trademark rights
In the
Philippines there has been an important legislative change concerning the
maintenance of trademark rights. The change involves a new Declaration of
Actual Use (“DAU”), as established by the Intellectual Property Office of the
Philippines (IPO) in Circular No. 17-010 (2017 Trademark Regulation), in effect
since 1 August 2017.
It would
seem that this change derives from the need to adapt Philippine trademark
legislation in line with the provisions of the Madrid Protocol, although there
may also be other reasons such as a desire to restrict exclusive rights from
being obtained in defensive marks or perhaps even to introduce a new official
fee. However, our task here is not to analyse the reasons for the changes but
to explain them as simply as possible.
Up to now,
to preserve trademark rights in the Philippines it has been necessary to attest
to use by submitting a DAU and evidence of the use. Under the new Trademarks Act, it has been required to attest to use at different points in the lifetime of the mark:
- By the third anniversary of the filing date of the trademark application,
- Between the fifth and sixth anniversary of the date of registration of the mark, and
- Between the fifth and sixth anniversary of the date of renewal of the mark
The
requirement to submit the DAU affects Philippine national marks, international
marks designating the Philippines and subsequent designations of the
Philippines for international marks. If a mark has been protected through the
international registration system, while the term is also one year, it is
calculated from the date of renewal of the international mark.
Circular
No. 17-010 is certainly complex, as it appears to indicate that the requirement
to submit the new DAU will be applied with retroactive effect to marks that
have been renewed since 1 January 2017, and at the same time it appears to
state that this requirement must be met for all marks within one year from its
renewal date.
In
practice, for each trademark that is to be kept in force in the Philippines, a
DAU will have to be submitted within the established term of one year from the
renewal date and that same formality will have to be carried out again at each
10-year cycle during the lifetime of the registration.
In the more
immediate term, those owners of trademarks which were due for renewal from 1
January 2017 will have to satisfy the requirement of submitting the DAU before
the end of the one year term from the date on which the registration was set to
expire. Those owners that have renewed their marks in the course of 2017 and
wish to keep them in force, will have to keep in mind that they must comply
with this requirement within the time limit.
This
retroactive effect will not really exist in relation to international marks
because the Philippines acceded to the Madrid Protocol on 25 July 2012.
Therefore, the first international marks designating the Philippines will not
be due for renewal until 2022. In this regard, Article 14.5 of the Madrid
Protocol establishes that with respect to international registrations made
under the Protocol prior to the accession thereto of the State in question,
subsequent designations of protection in that State are not possible, and
therefore there would not be any subsequent designations of trademarks in the
Philippines that would be affected retroactively by this new requirement. In
the case of international marks, it is a change to bear in mind in the longer
term.
Visit our website: http://www.elzaburu.es/en
Author: Cristina Arroyo
Visit our website: http://www.elzaburu.es/en
Tuesday, 12 September 2017
Thailand joins the Madrid System
Thailand has recently deposited its instrument of accession to the Madrid Protocol and it has become the 99th member of the Madrid System concerning the International Registration of Marks.
With
the accession of Thailand, fewer and fewer Southeast Asian countries remain
outside the international trademark registration system. This new accession
will make the internationalization of trademark rights easier for rightholders
through simplified protection strategies in a highly popular jurisdiction.
Over the past few years, Thailand has been working on
harmonizing its local registration system and preparing to join the
International System. For example, they have adapted their local classification
of goods and services "item by item" in line with a more homogeneous application of the Nice Classification. However, in
Thailand there are legal and administrative peculiarities, such as, for
example, the requirement to associate trademarks belonging to the same
proprietor.
We shall see how the Department of Intellectual Property (DPI) handles the new scenario
regarding international registration of trademarks.
Thursday, 29 June 2017
Reverberations of INTA
Most importantly, the Barcelona INTA Meeting was also the first time our country has had the chance to host one of the largest and most far-reaching events in the intellectual property sector. What more could anyone ask?. All that remains is for us to express to the INTA Board our appreciation for the confidence it has placed in Spain; to one of our country's most emblematic cities, Barcelona, for its sunshine, its joie de vivre, its people, and its cosmopolitan vibes; and, last but not least, to all those who have been placing their confidence in the dependability, professional excellence, and forward thinking of the ELZABURU Firm.
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| View all gallery |
Wednesday, 24 May 2017
The European Union calls for a “Deluxe” decision
Through a decision dated 22 January 2014 EUIPO’s
Second Board of Appeal confirmed the refusal of the application for the
trademark
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| EU Trademark No. 011253044 (Refused) |
which had been filed for a broad range of goods and
services in classes 9, 35, 39, 40, 41, 42 and 45.
The reason for the refusal is that EUIPO found that
the mark was devoid of distinctive character and that it merely informed
consumers of the quality of all the goods and services at issue, without
exception. The Office thus adopted a general reasoning in respect of all of
them.
This decision was annulled by the General Court (case T-222/14 (in Spanish) which,
after considering whether the Office had examined in sufficient depth the
distinctive character of the sign at issue in relation to all the goods and
services for which the application had been filed, held there to be a flaw in
the reasoning of the Board of Appeal.
The appeal to the Court of Justice (case C-437/15P) therefore centered
on the question of whether EUIPO should assess the capacity of a sign to
identify a given business origin with
respect to each and every one of the goods or services, or whether, on the
other hand, a global analysis of the goods or services will suffice if the
Office finds them to have some relevant characteristic in common.
As we are all aware, EUIPO is under an obligation to
state the reasons for its decisions, in order that the interested parties may
know why their trademark is being refused access to the register and also that
the courts of the EU may be in a position to oversee the legality of the
decision.
When a trademark application is filed, the Office
should indeed carry out an assessment of the capacity of the sign in question
to distinguish the goods and services it covers. This will entail, in
principle, an analysis of each and every one of those goods and services.
However, an exception to this rule arises when the goods and services are
interlinked in a sufficiently direct and specific way, to the point where they
may be grouped in homogeneous categories. In that event the Office may confine
its assessment to each of those categories.
The General Court relied on the order of 18 March 2010
(in case C-282/09P) to distinguish different categories into which the goods
and services of the rejected mark could be grouped (cinema, advertising,
storage and transport of goods, etc.), maintaining that they were very
different in their nature, characteristics and purpose and that the Office
should therefore at least have analyzed each of the homogeneous categories
within the application.
EUIPO’s position, in contrast, was that
if all the goods and services have a characteristic in common, which in the
present case would be that they are all of superior quality, they may be
regarded as forming a single category and, therefore, a general statement of
reasons will suffice. The systematic repetition of the basic ground for the
refusal, which is that the sign is devoid of distinctive character in respect
of each and every one of the goods and services, may thus be avoided.
The Court of Justice annulled the judgment of the
General Court, holding that the latter should have:
1. Checked whether the mark applied for, which comprises
a word and a figurative element, could be perceived, directly and immediately,
as a claim of superior quality or a laudatory message, rather than as an
indication of the business origin of the goods and services. In the
affirmative, the refusal of the application would be fully justified without
the need for an examination of the sign in relation to all of the goods and
services.
2. Checked whether the word element of the sign,
“deluxe”, indeed conveyed the idea of superior quality or whether it could have
a different meaning. In the latter event the mark could have a sufficient
degree of distinctive character in respect of some of the goods or services. In
that case an assessment of each of them would be required and different
conclusions could be reached.
The Court of Justice held that the General Court had
failed to appreciate that, despite their differences, all the goods and
services at issue could have a common characteristic relevant to the analysis
of the absolute prohibitions on registration which could justify their being
grouped in a single homogeneous category and the consequent use of general
reasoning in relation to them all.
The case has been referred back to the General
Court and we shall therefore have to wait for a final decision on the
substance.
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Author: Soledad Bernal
Visit our website: http://www.elzaburu.es/en
Friday, 19 May 2017
Trademarks in Spain: a step by step by guide
Spanish chapter
Reproduced with permission from Global Legal Group (published in May 2017)
Wednesday, 17 May 2017
Getting to grips with functional marks
The
Court of Justice of the European Union (CJEU) issued a judgment on 11 May 2017
(Case C-421/15P) in relation to the interpretation of the prohibition on
registration as a trademark of “signs which consist exclusively of the shape
of goods which is necessary to obtain a technical result” laid down in Art.
7.1 e) ii) of the Regulation on the European Union trade mark.
In
2002 and 2003 the Japanese company Yoshida Metal Industry secured the
registration of two figurative European Union trade marks, for certain items of
cutlery in class 8 and kitchen utensils and containers in class 21, consisting
of the two-dimensional representation of a series of black dots:
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| (EUTM No. 001371244) |
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| EUTM No. 001372580 |
The marks were used in practice on the handle of
the knives sold by Yoshida and represented a series of concave dots or dents on
the handle of the cutlery which performed a non-slip function when cutting (and
which were also protected by various patents):
In
2007, the companies Pi-Design AG, Bodum France SAS and Bodum Logistics A/S
applied at the EUIPO for the marks to be declared invalid on the basis of
Article 7.1 e) ii), given that the signs consisted exclusively of the shape of
a product which is necessary to obtain a technical result.
The
EUIPO accepted the applications for a declaration of invalidity and cancelled
the registrations of the trade marks.
The CJEU has now dismissed the appeal lodged by Yoshida, upholding the invalidity
of the trade marks.
The
judgment accepts and confirms, on the one hand, the arguments previously
asserted by the General Court in its judgment of 6 March 2014 (C-337/12
P y C-340/12 P) (see a comment in this blog), establishing that the prohibition on
registration laid down in Art. 7.1 e) ii) must apply both to two-dimensional
and three-dimensional trade marks and declaring that said prohibition on
registration was in the public interest, insofar as companies cannot use trade
mark law to extend indefinitely the protection of technical solutions. Moreover,
it states that for a correct application of the provision it is necessary to
identify the essential characteristics of the trade mark, carrying out a
case-by-case assessment.
Moreover,
it is important to mention the CJEU’s current interpretation of Art. 7.1 e)
ii), holding that registration as a trademark should only be refused where “all
of the essential characteristics of the sign are functional”, that is, the
Court considers that in the disputed trade marks, the specific configuration of
the black dots is a significant functional element, which means that they
cannot be registered as trademarks and, consequently, they must be declared
invalid. In this regard, the Court specifies that the prohibition on
registration laid down in Art. 7.1 e) ii) may be overcome and the sign may be
registered as a trademark where it includes other relevant non-functional
components (such as, for example, decorative or fanciful elements).
The Court has undertaken
a strict interpretation of Art. 7.1 e) ii) with regard to registration of this
type of mark consisting of the shape of a product, to thus prevent companies
achieving a monopoly on the technical solutions or functional characteristics
of the product. The judgment is also interesting in terms of the detailed definition
of all of the mandatory requirements for this type of mark to qualify for
registration as a trademark.
Monday, 3 April 2017
The patent act has died. Long live the Patent Act!
The 1986 Spanish Patent Act has died of natural causes in Madrid, aged 31. Its successor, Law 24/2015, saw the light of day on Saturday 1 April, after a 21-month gestation period, thanks to the publication of its Implementing Regulation in the Official State Journal right on the deadline that had been established to that end. The SPTO’s enormous effort to take the Regulation forward paid off in extremis, guaranteeing safe delivery.
We are now up against a new grant procedure, a new judicial system, new challenges and strategies, as well as new unknowns. This is something that we lawyers have been well accustomed to since 1986 –precisely when the Act to which we are now bidding a nostalgic farewell came into force-, when the profound transformation of Spanish industrial and intellectual property legislation got underway.
We are now up against a new grant procedure, a new judicial system, new challenges and strategies, as well as new unknowns. This is something that we lawyers have been well accustomed to since 1986 –precisely when the Act to which we are now bidding a nostalgic farewell came into force-, when the profound transformation of Spanish industrial and intellectual property legislation got underway.
In times of change, let us recall what the current Nobel Prize in Literature winner, Bob Dylan, had sung in his classic “Forever Young”: “may you have a strong foundation when the winds of changes shift”. Long live the new Patent Act and good luck to everyone.
N.B. For a more detailed explanation of Law 24/2015, please check here our posts published in 2015 and 2016.
Author: Antonio Castán
Visit our website: http://www.elzaburu.es/en
Wednesday, 29 March 2017
How will Brexit affect the rights of EUTM holders?
The practical implications of Brexit as far as the
rights of EU trademark holders are concerned will likely only be felt
around 3 years following the United Kingdom’s formal notice of withdrawal from
the EU; they nevertheless compel EU trademark holders to take certain measures
to ensure that the changes that will follow in the wake of Brexit do not
adversely affect the protection of their trademarks.
It will likely be at least 3 years before the UK actually breaks
off from the EU, based on the various phases established for a Member State’s
departure. Indeed, having made the
decision to leave the EU, the UK -under Art. 50 of the Treaty on EuropeanUnion- has just formally notified the European Council of its withdrawal. It now has a period of two years in which to
conduct the negotiations that will enable it to establish the new legislative
framework, which will be voted on by the Member States and also, apparently, by
the British Parliament. The new
situation will therefore depend on the outcome of the negotiations between the
UK and the EU and on the mechanisms that are ultimately put in place.
For now, therefore, the
familiar landscape of trademarks in the EU remains unchanged: there are
still national trademarks, international registrations under the Madrid System,
of which the UK is a member, and European Union trademarks covering the 28 EU
Member States, including the UK.
The UK Intellectual Property Office has announced that it intends
to maintain ties with the EU, and so it will likely establish a process whereby
EU trademarks are converted into UK national trademarks, or the rights
conferred by EU trademarks are automatically recognised.
The EU trademark’s filing date will likely be retained as the
priority date, as in the case of the conversion of EU trademarks into national
registrations provided for in Art. 112 EUTMR where, following refusal of an
application to register an EU trademark due to opposition based on one or
several national trademarks, the applicant decides to apply for protection of
the trademark in the countries in which no obstacles have been
encountered. This conversion is carried
out by paying a conversion fee, equivalent to an application fee, and by
submitting the application to the local examination system as if it were a new
national trademark, except for the fact that it retains the filing and priority
date of the EU trademark. If the
conversion were requested for an EU trademark registration and not a mere
application, the national trademark could be granted without further ado. It all depends on the terms of the
negotiations and domestic policy decisions adopted by the UK.
For the time being, EU trademarks are still fully effective in the
UK, and only once the estimated 3-year period has elapsed will companies
have to decide whether their interest in the British market is strong enough to
warrant filing a new UK trademark application, extending an international
registration to the UK or requesting the conversion of their EU trademark
registration into a UK national trademark registration.
Nevertheless, we can, at this stage, anticipate cases in which companies will have
to take measures to avoid losing their trademark rights, both in the UK and
on a European level, as a result of Brexit.
For
instance, EU trademarks that were granted over 5 years ago and have only
recently been converted into UK national trademarks could be vulnerable to
revocation actions for non-use in the UK if they have not been used in that
territory. It cannot be ruled out,
however, that the 5-year grace period will start to run as of the date on which
the conversion was requested or granted.
Similarly, once the UK no longer forms part of the EU, the holders
of EU trademarks granted over 5 years ago and only used in the UK could find
that their trademark rights have no effect when it comes to filing opposition
against a new EU trademark application, since they will be unable to validly
demonstrate use of their trademark in the EU.
They may even lose those rights if they are targeted by a revocation
action for non-use before the EUIPO.
Consequently, businesses
must now start to reassess their trademark protection strategy in light of the
country in which they are putting their trademarks to genuine use.
Furthermore, in order to be in a position to block the
registration of EU trademarks, UK companies will have to register their marks
as EU trademarks, or do so in an EU Member State, since their national
registrations will not be able to serve as a basis for opposition against an EU
trademark application.
EU companies that are not from the UK will have to weigh up
how important the UK market is for them.
In the event that those companies had a particular interest in that
market, they should move to register any EU trademarks that they hold as
national trademarks in the UK before the effect of Brexit on the existing EU
trademarks is clarified in order to avoid the possible, albeit rather unlikely,
loss of rights.
Also, all companies should now keep their UK registrations
in force, even if their seniority has been claimed in an EU registration of the
same mark, since it is uncertain whether it will be possible to recover the
validity of those rights –once they have been abandoned on a national level-
after the UK has left the EU.
It will also be necessary for any new agreements signed in
relation to EU trademarks to include clauses expressly providing that the
agreements shall continue to apply in the territories that formed part of the
EU in the event that they subsequently ceased to be members, and clauses
stipulating that not only do those agreements apply in the territory of the EU
on the date of signature of the agreement but also in future EU Member States.
These are just some of the thoughts that we can offer now,
following activation of the mechanism provided for in Art. 50 TEU. There is still a long way to go before the
applicable legislation, the terms of the agreements reached in respect of
trademarks and the measures that companies will have to take in order to secure
the best protection for their rights in the UK come to light.
Author: Catherine Bonzom
Visit our website: http://www.elzaburu.es/en
Monday, 27 March 2017
Lawyers from 28 countries analyse the legal challenges faced by start-ups
IBA (International
Bar Association) is the largest lawyer network in the world. The conference brought together
internationally renowned lawyers and expert academics, public institution
representatives, entrepreneurs and venture capitalists to analyse the legal
challenges faced by start-ups(1).
The conference offered interesting panel sessions and
dynamic roundtable discussions on current issues, latest trends and strategies for
developing, expanding, funding and exiting from a start-up company.
Of particular interest as far as IP is concerned were
the sessions on the legal implications of the development of mobile
applications, as well as those in which participants shared experiences in the
development of a start-up company’s effective IP protection strategy. Without going into a full summary of the
sessions, we would like to highlight the following debates and ideas:
1. Apps
of Things (AoT)
The development and use of digital tools and services is growing at lightning speed.
Some time ago, we attended a vehement legal debate on
this subject, which constitutes a global strategic priority and an area of
intense legislative development.
Nevertheless, the
sector referring to Apps of Things (AoT)
- apps which turn our day-to-day objects into connected, intelligent
devices capable of catering for a wide range of user needs, deriving from, and
made possible by, the concept of the Internet
of Things (IoT) – continues to be a trend, generating fresh challenges for lawyers
and developers alike, and in this market start-ups play a particularly
important role.
The extent of
personal data collection and exchange is continuing to grow significantly. People are disseminating an ever-increasing
volume of personal data on a global scale. In fact, we have recently been coming across unprecedented cases
concerning the implications of the collection of data and personal information
by new technological devices that are, by default, “permanently active” and continuously
recording, for instance, the voices of users within the private setting of
their homes. We refer here to the recent
privacy cases involving the intelligent device “Amazon Echo”, which includes
the new voice control system (“Alexa”), one of the most promising recent technological advances(2).
These incidents ensure that the debate on the meaning and scope of the right to personal data protection, the new privacy model and user security is kept alive.
These incidents ensure that the debate on the meaning and scope of the right to personal data protection, the new privacy model and user security is kept alive.
Friday, 24 March 2017
Licensing in Spain:
ELZABURU Partner Javier Fernández-Lasquetty together with lawyers Alba López and Martín Bello answer the key questions of concern to corporations and their counsel when dealing with licensing laws in Spain. Areas covered include: kinds of licences, law affecting international licensing, intellectual property issues, software licensing, royalties and other payments, currency conversion and taxes, competition law issues, indemnification, disclaimers of liability, damages and limitation of damages, termination of licensing agreements, bankruptcy, governing law and dispute resolution.
Reproduced with permission from Law Business Research Ltd. Getting the Deal Through: Licensing 2017, (published in February 2017; contributing editor: Bruno Floriani, Lapointe Rosenstein Marchand Melançon LLP) For further information please visit https://gettingthedealthrough.com/area/19/licensing/
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