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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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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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 countdown to entry into force of the Agreement now begins. This will also imply application of the two Regulations adopted in December of last year (Regulation (EU) No. 1257/2012 ofthe European Parliament and of the Council of 17 December 2012 implementingenhanced cooperation in the area of the creation of unitary patent protection and Council Regulation (EU) No. 1260/2012 of 17 December 2012 implementingenhanced cooperation in the area of the creation of unitary patent protectionwith regard to the applicable translation arrangements).

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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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.

Author: Miguel Ángel Medina

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

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

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

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

Author: Patricia Mariscal

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Unitary Patent latest news

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

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

Author: Enrique Armijo Chávarri

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

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

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

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

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

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

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