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

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Friday 3 November 2017

Indonesia becomes the 100th Member of the Madrid Protocol

On 2 January 2018, the Madrid Protocol will take effect in Indonesia. Following Thailand’s accession to the Protocol some weeks ago, this is a natural and expected development.

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

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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
Circular No. 17-010 establishes an additional DAU to those already required under the existing legislation, which must be filed within one year from 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.

Author: Cristina Arroyo

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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.

Author: Cristina Arroyo

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Thursday 29 June 2017

Reverberations of INTA

It is extremely difficult to describe in just a few short lines the number and kind of the many different echoes of the Barcelona INTA Meeting resounding within the ELZABURU Firm, which celebrated its 150th anniversary less than two years ago. This was the first time ELZABURU has had the pleasure and the responsibility of organising a social event at INTA and thus also the first time all of us, who are part of the Firm, have endeavoured to bring together, host, and entertain so many friends, colleagues, and associates in our midst. That may be why we tried to offer them all something different, something special, something unforgettable this past 20th of May. We strust we succeeded.

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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Author: Luis Beneyto

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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

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. 

Author: Soledad Bernal

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Friday 19 May 2017

Trademarks in Spain: a step by step by guide

ELZABURU partners Luis Baz and Fernando Ilardia offer a complete and easy to follow guide about trademark registration in Spain: how to apply for your trademark, refusals, oppositions and so on

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:
(EUTM No. 001371244)

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.

Author: Ana Pérez-Prat

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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. 

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

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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.

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Monday 27 March 2017

Lawyers from 28 countries analyse the legal challenges faced by start-ups

The 3rd IBA Silicon Beach Conference - All Along the Spectrum – From Start-Up to IPO/Exit and Beyond was held in Santa Monica, California from 1 to 3 February 2017. We at ELZABURU’s entrepreneurship and start-ups area (Legal & Business Department) had the chance to attend this international gathering as the only representatives from Spain.   

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.

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