Geographical indications for non-agricultural products, next scheme of protection in the European Union?

Two days ago, the European Commission launched a green paper public consultation on a possible extension of geographical indication (GI) protection in the European Union to non-agricultural products.

These products, up to now overlooked, are of great importance to a number of different economically relevant sectors at both the national and Community levels (e.g., shoe-making, watch-making, and crafts in particular, the prototypical candidates for this possible new scheme of protection and the main products protected by geographical indications in countries like India and certain Latin American nations).

This new GI scheme would likely be inspired by the European Union's current GI scheme for agricultural products and foodstuffs, although it might have certain nuances of its own, or at least some differences in practical terms.

The possible new EU GI scheme is something that has been talked about frequently in recent years. I have held some conversations on the subject with the EU delegation at the WIPO WG. They seemed not to be very sure of whether it would finally happen, and it can be expected to take some time, but since there are many interest groups pushing for it and it holds out political and economic interest for the EU to negotiate bilateral agreements, I assume that it will come about sooner or later.

The Green Paper consists of two parts. One part asks about the current means of protection provided at the national and EU levels and the potential benefits which could be achieved by improved GI protection in the EU, and the second refers to more technical questions to seek the views of interested parties on possible options for EU-level GI protection for non-agri foodstuffs.

Publication on the EU Commission's website has opened a deadline ending for submitting contributions on 28 October 2014.

Author: Miguel Ángel Medina

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Court of Justice of the European Union helps infringement claims by owners of unregistered designs

The judgment issued by the Court of Justice of the European Union in Case C-345/13 on 19 June 2014 clarifies two important aspects bearing on proceedings claiming infringement of unregistered Community designs, namely, consideration of the individual character requirement and the burden of proving that a design has individual character.

The court ruled on two questions referred by Ireland's Supreme Court in the context of a dispute between the British company Karen Millen Fashions ("KMF"), which had designed a striped blouse, and the Irish retail chain Dunnes Stores ("Dunnes"), which had sold a similar blouse. In proceedings instituted by KMF claiming infringement of their unregistered design, Dunnes admitted having copied the design but contested the design's validity, claiming that it lacked individual character.

The first question the Supreme Court of Ireland referred to the Court of Justice was whether, for the purpose of determining individual character, an unregistered design was to be compared to previously disclosed individual designs or whether, as Dunnes had maintained, the design could be compared to a combination of separate features extant in various earlier designs.

In its answer to this question the CJEU applied the same reasoning set out in the General Court's judgment of 22 June 2010 in Case T-153/08, advocating a literal reading of Article 6.1 of the Regulation on Community Designs, which speaks of the overall impression produced by "any design" which has been previously disclosed. The Court therefore construed the wording of this provision to mean that comparison must be conducted in relation to "specific, individualized, defined, and identified" designs from among all earlier designs.

Still, Article 25.1 of the TRIPS Agreement expressly provides for the possibility of comparison with combinations of known design features. The Court, however, regarded this as an option that has not been taken up by the Community.

The second question concerned the burden of proof as it relates to the individual character of unregistered designs, which Dunnes claimed should fall on the design holder. By contrast, the Court held that Article 85.2 of the Regulation establishes a presumption of validity for unregistered designs, to be interpreted as having the purpose of helping to achieve the objectives of simplicity and expeditiousness underpinning the idea of protection of unregistered designs as expressed in the recitals to the Registration.

For this reason the Court concluded that in the context of proceedings claiming infringement of an unregistered design, the right holder may not be required to prove that the design fulfils the requirement for individual character but need only indicate which features, in his view, confer individual character on the design.

This judgment will definitely be helpful for claiming infringement of unregistered designs, and it shares out the burden of proving the validity of designs in a manner consistent with that for other types of industrial property.

In short, the Court's interpretation of the Community Design Registration is favourable to the interests of companies – among them, clothing companies – which use unregistered Community designs to protect their creations.

Author: Carlos Morán

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Colour marks: New rulings by the CJEU bearing on registrability

On 7 February 2002 Deutscher Sparkassen – und Giroverband eV filed German trademark application no. 30211120, reproduced below. 

The trademark consisted of a colour, red, specifically HKS 13, and it was granted registration on 11 July 2007 for specified financial services for a commercial bank in Class 36.

Contesting the grant of the said mark, Oberbank and Banco Santander applied for a declaration of invalidity. The German court ultimately decided to stay the proceedings and refer three questions to the Court of Justice of the European Union (CJEU) for preliminary rulings, issued in the CJEU's judgment of 19 June 2014 (C-217/13 and C-218/13).

1. By its first question the referring court asked the CJEU what degree of recognition must there be in the trade circles concerned for a trademark to be regarded as having acquired distinctive character. Specifically, it asked whether a consumer survey showing that the mark had achieved a degree of recognition of at least 70 % is required.

The CJEU first pointed out that to determine that distinctive character has been acquired through use, it is necessary to carry out an examination by reference to the actual situation and make an overall assessment of the evidence showing that the trademark is able to identify the goods or services concerned as originating from a particular undertaking. The following, inter alia, may be taken into account for this purpose: market share, intensity of use, geographical scope of use, duration of use, etc. Where the competent authority has particular difficulty in assessing distinctive character, it may order a consumer survey, and it will be for that competent authority to determine what percentage is to be regarded as being sufficiently representative. However, the results of such a consumer survey cannot be the only decisive criterion for assessing distinctive character.

2. The second question was whether in the context of invalidity proceedings it is necessary to examine whether the mark had acquired distinctive character before the date of filing of the application. In the instant case the proprietor had maintained that distinctive character had been acquired before the date of registration but after the date of filing of the application.

The CJEU replied to this question by pointing out that the proprietor needed to have proven that the mark had acquired distinctive character before the date of filing of the application unless national law of the country concerned provided for a later date. This does not preclude the competent authority from taking into account evidence which, though subsequent to the date of filing of the application, enables conclusions to be drawn as to the situation as it was before that date.

3. The third question asked who has to prove that the trademark had acquired distinctive character before the filing date of the application in order to prevent a declaration of invalidity.

The CJEU replied that the burden of proof is to be borne by the proprietor of the mark, not by the applicant for invalidity. Thus, if the proprietor of the trademark fails to show that distinctive character had been acquired before the date of filing, the mark is to be declared invalid.

Author: Marta Rodríguez

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New OHIM criteria on additional evidence submitted late

On 2 June, the OHIM amended the Guidelines relating to opposition proceedings to reflect a change in case law resulting from two Court of Justice judgments delivered in the second half of 2013. The specific sections that have been amended are part C, Sections 1 (procedural matters) and 6 (proof of use). From that date the OHIM began applying the new criteria in all cases in which a decision has not yet been issued.

The judgments in question were that issued on 18 July 2013, in case C-621/11P, «Fishbone» and that issued on 26 September 2013, in case C-610/11P, «Centrotherm», both of which ruled that proof of use submitted after the corresponding term given by the Office to the opponent (i.e. the deadline for submission of proof of use pursuant to rule 22 of the Implementing Regulation) should be considered admissible if certain conditions are met.

The two conditions are:

1. - During the time-limit given to the opponent to submit proof of use, some evidence was submitted and this evidence was to a certain extent relevant.
2. - The opponent is not employing clear delaying tactics to extend the proceedings, or acting with manifest negligence.

Both judgments serve to clarify and substantiate previous judgments delivered by the Court of Justice, such as that of 13 March 2007, OHIM/Kaul (C-29/05 P), which stated that “where OHIM is called upon to give judgment in the context of opposition proceedings, taking such facts or evidence into account is particularly likely to be justified where OHIM considers, first, that the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account” (paragraph 44 of the said judgment).

The OHIM’s discretionary powers to take into account evidence submitted late are extended except in cases in which, as the case law indicates, no relevant evidence is submitted within the time limit, or there is negligence or abusive delaying tactics. Under no circumstances is the OHIM obliged to take into account the said evidence. Rather, it can now exercise its discretionary powers and assess whether the evidence can be considered admissible under these conditions. If the evidence is not accepted due to late filing, the Office must set out the reasons for its decision.

In addition to opposition proceedings, the new practice is also applicable to revocation and invalidation proceedings (in fact, the Centrotherm case was based on an application for revocation).

One aspect that could still be improved is, without a doubt, the need to guarantee the other party’s means of defence, which is an area in which the OHIM does not appear to have yet taken the initiative. In this regard, the Office has simply added the following phrase to point 4.5.1 of the Guidelines: “if necessary, a second round of observations will be granted”.

It is not easy to imagine a proceeding in which one party submits proof after the end of the given term and the other party is not granted the right to submit its observations, having to wait for the OHIM’s decision. It is true that the absence of a right to reply does not mean that the proof is accepted as sufficient (judgment of 7 June 2005, T-303/03, ‘Salvita’, paragraph 79), which is reassuring, but we urge the OHIM to place on record in the Guidelines that a right of reply will indeed be given in the case of proof submitted late. There will be plenty such cases, and the issue appears an important one.

Author: Ramón Cañizares

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New customs agreement between the EU and China: What does it mean for trademark owners?

Silk Market Beijing
(by gruntzooki via Flickr)

China and the EU have signed a landmark mutual recognition agreement on customs cooperation. Its main goal is making the customs procedures easier, cheaper and faster for trusted traders. Two other initiatives which complement this agreement have also been signed, namely a new Strategic Framework for Customs Cooperation and a new EU-China Action Plan on Intellectual Property Rights.

The “trusted traders”, also known as “Authorized Economic Operators”, have been present under EU customs regulations since 2008 and enjoy simplified customs procedures if they manage to prove that they are safe, reliable and compliant with security standards. In other words, the trusted traders go through fewer and quicker customs checks when entering or exiting the European Economic Area (EEA).

China is not the first country to sign such an agreement with the EU; there are mutual recognition agreements already signed with countries such as the US (2012) and Japan (2011), but the addition of China makes the EU certified trader system the most widely accepted in the world since there are currently around 15,000 companies listed as safe traders (for more information see the European Commission's press release here).

There is a more important point to be considered though. China has a reputation of a country where a lot of infringements of IPRs are being committed every day. However, on 1^st May 2014 a new Trademark Law has come into force (for details on the amendments, see our previous blog post here) which is supposed to strengthen the protection of trademark owners against infringements and bad faith applications. We are still to see how exactly it will be implemented in practice, but the combination between the new Trademark Law and the recently signed customs agreement, definitely means good news for trademark owners!

Our experience in China has proven that European trademark owners sometimes have more problems with trademark squatters rather than infringers. The reason behind this is simple – the widely established practice of European trademark owners to manufacture their goods in China without registering their trademarks there and later sell them on the European market. What happens then? A Chinese company simply goes to the SAIC and registers the European trademark without any problem since the Chinese trademark system is a first-to-file one. Then, they also register the trademark with the Chinese customs (GAC) and when the European owner tries to send his/her next shipping to Europe, the goods are stopped at customs for infringing a Chinese registered trademark. From here onwards, there are basically two options and neither of them is good – pay a subordinate amount of money to buy our own trademark or go to court / TRAB.

Maybe the most common route chosen by European trademark owners is to try to cancel the said registration on grounds of bad faith or non-use after the first three years from registration. In this case, the biggest problem faced by the rightful owner is to prove the use or at least some influence of the trademark on the Chinese market. However, this is quite difficult if not impossible, because manufacture only for export is not usually considered as actual use of the trademark (there is no precedent in Chinese judicial system, so Chinese courts are not obliged to follow previous decisions even if there are such) and only extremely famous trademarks have been recognized by the courts when they had not been used on the Chinese market.

With the strengthening of the good faith requirement in trademark registration and use by the new Chinese Trademark Law and the mutual recognition agreement with the EU, the cases  mentioned above should decrease. Not only because of the protections offered by the Law, but also because the enhanced customs cooperation will ease the fight against squatters by recognizing the European safe traders in China and maybe motivate EU companies to register their trademarks in the country in order to be fully protected. This way, Chinese customs will be able to dedicate much more resources to the high-risk traders and fight against infringements more efficiently.

While the Chinese IP-related legislation and the actions of the authorities is improving more and more every time, we should be conscious of the dangers that still exist and align our IP strategy in accordance to them. For the common person living in China, the efforts of the Chinese authorities are almost invisible, which once again shows the scale of the infringements and the enormous amount of resources and time which have to be put into this fight. If a trademark owner is manufacturing, using or planning to use his/her trademark on the Chinese market, his rights should better be registered before starting any commercial or other activity in China. In case the owner has already entered the Chinese market, it is highly advisable to register the trademarks as soon as possible.   

Author: Geri Dimitrova,

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The CJEU endorses the "right to be forgotten" in the EU

Paul David
(via Flickr)

On 13 May 2014, the Court of Justice of the European Union (CJEU) handed down its judgment in case no. C-131/12 between Google and the Spanish Data Protection Agency (AEPD).

On 5 March 2010, Mr. Costeja González filed a complaint with the AEPD against the publisher Vanguardia Ediciones S.L., Google Spain, S.L. and Google Inc. In the complaint he requested that La Vanguardia be required to remove or alter pages so that his personal data no longer appeared, or to use certain tools made available by search engines in order to protect the data. Mr. Costeja González also requested that Google Spain or Google Inc. be required to remove or conceal the personal data relating to him so that they ceased to be included in the search results and no longer appeared in the links to La Vanguardia. All these requests were based on the fact that the embargo proceedings to which Mr. Costeja González had been subjected at the time had been fully resolved for a number of years and were now entirely irrelevant.

On 30 July 2010 the AEPD dismissed the complaint against the publisher and upheld the complaint against Google Spain, S.L. and Google Inc., requiring them to withdraw the data from their index and prevent future access thereto. Google Spain, S.L. and Google Inc. proceeded to lodge appeals against the Audiencia Nacional (Spain’s High Court) requesting that the AEPD’s judgment be vacated.

Under these circumstances, the Audiencia Nacional suspended the proceedings and referred a series of preliminary questions to the CJEU:

• The territorial application of EC Directive 95/46;
• The definition of the scope of responsibility of search engines as providers of content in relation to EC Directive 95/46;
• And the scope of the right of erasure and the right to object in relation to the right to be forgotten.

First of all, the CJEU classified the activity of a search engine which consists of “finding information published or placed on the internet by third parties, indexing it automatically, storing it temporarily and, finally, making it available to internet users according to a particular order of preference” as “processing of personal data”, thus converting the operator of the search engine into the controller of that processing of personal data, and the guarantor that the requirements of EC Directive 95/46, as well as the full and effective protection of the rights of the individuals in question, be fulfilled.

Turning to the territorial application, the CJEU rejected Google’s argument that Google Search did not carry out the processing of personal data as part of its activities in Spain. The CJEU ruled that Google Spain, S.L. must be regarded as an establishment within the meaning of Directive, since it is the subsidiary of Google Inc. in Spain. When a company with a seat in a third state has an establishment in a Member State and carries out the processing of personal data for the purposes of the service of a search engine in the Member State establishment, the Directive considers that this processing is carried out ‘in the context of the activities’ of the establishment if the intention is to promote and sell its goods and services in that Member State.

With regard to the extent of the responsibility of search engines as content providers in relation to the Directive, the CJEU stated that the controller of a search engine is obliged to remove from the list of results displayed following a search made on the basis of a person’s name links to web pages published by third parties and containing information relating to that person.  The CJEU added that this obligation also exists in a case where that name or information is not erased beforehand or simultaneously from those web pages, and even when the publication is lawful. According to the CJEU, a structured overview of the information relating to the individual in question may potentially affect his private life.

The CJEU in turn identified the need to consider the user’s right to access information on the one hand, and the affected individual’s right to protect his personal data on the other. This balance depends on the nature of the information in question and the role played by the affected individual in public life.

Finally, the CJEU introduced the possibility that after a certain time the affected individual may exercise his right to be forgotten and request that the list of results obtained be removed. If it is found that the list of results is at this point in time incompatible with the Directive, the information and the links displayed therein must be removed. These results are to be deemed incompatible when they appear to be inadequate, irrelevant or no longer relevant, or excessive in relation to the purposes for which they were processed and in the light of the time that has elapsed.

This judgment affects more than 220 appeals lodged by Google against decisions issued by the AEPD that are currently pending before the Spanish Audiencia Nacional.

Authors: Cristina Espín, Alejandra Reyes

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Directive on the retention of data declared invalid by the Court of Justice

Via Wikimedia

On 8 April 2014 the Court of Justice handed down its judgment in the cases of Digital Rights Ireland against the Irish authorities and of the Austrian Constitutional Court against the Government of Carinthia and Mr Seitling, Mr Tschohl and other complainants, Cases C-293/12 and C-594/12, declaring the invalidity of the Directive on the retention of telecommunications and electronic communications data of 2006, hereinafter the “Directive”, with effect from the date on which the Directive entered into force.

What were the requirements of the Directive? What type of data was retained?

With the goal of combating terrorism and other serious offences, the Directive required telecommunications companies and internet operators to register and retain the following data from all types of telephone calls (fixed and mobile as well as unanswered calls) and e-mails during a period of between 6 and 24 months, depending on the applicable legislation in each state:

• In the case of fixed telephones, the data of the calling telephone number and destination number, the names and addresses of the persons calling and those to which the telephone numbers were registered at the time of connection, as well as the telephone service used and from where they were calling, but not the content of the conversation, which required judicial authorisation.

• In the case of mobile telephones, the identifier of the device was also required.

• In the case of internet, the dynamic and static IP addresses assigned by the internet access provider, the name and address of the user and data necessary to identify the date, time and duration of a communication.

• In the case of a pre-paid card, data regarding the date and time of the activation of the service also needed to be retained.

Reasons for the invalidity of the Directive

The Court of Justice indicates that the requirements on telecommunications operators imposed by the Directive entails a wide-ranging and particularly serious interference of the fundamental right of individuals to privacy and the protection of their personal data, given that there are no substantive and procedural limits in the Directive regulating and restricting those interferences to what is strictly necessary, thus exceeding the limits of the principle of proportionality.

In fact, the judgment states that “the Directive covers, in a generalised manner, all persons and all means of electronic communication as well as all traffic data without any differentiation, limitation or exception being made in the light of the objective of fighting against terrorism and serious crime.”

Consequently, the judgment holds that the said data taken as a whole, what we call Big Data, may provide very precise information concerning the private lives of the persons whose data has been retained, such as the habits of everyday life, permanent or temporary places of residence, the activities carried out in their daily life, when going out or on holiday, the relationships, friends, of those persons and the social environments frequented by them, in short all their life, thoughts, beliefs, feelings, location, and that of their children, current accounts, without prior information provided or consent sought to process that data, basic principles of the fundamental right to the protection of personal data.