More on the "cyber jurisdiction"

The umpteenth revision to the regulations on trademark conflicts issued by a social network and some recent cases call to mind a question I have been mulling over for a long time, one in fact that was addressed by an outstanding presentation by Andy Ramos at the First Madrid Law Conference.

Those of us who deal in intellectual and industrial property matters have traditionally grounded ourselves in national and Community legislation and international treaties, where appropriate supplemented by the applicable rules of procedure.

Even so, for some years now, it has been necessary to top off our knowledge of these aspects with the rules for dealing with disputes arising from improper trademark use, personality rights, copyright, etc. set by each social network.

Each network sets its own rules, and what are purportedly the social network's terms of use take on the effect of a body of legal and procedural rules that have to be followed (as far as possible) when trying to settle the growing number of disputes involving our clients. A cursory review indicates that as things stand today, one way or another some 80 % of our activities involve the Internet and social networks.

Let me say that I have nothing against rules that fall outside the authority of the State, and we all are aware that there have been a number of instances of successful self-regulatory systems. Looking at the UDRP rules governing disputes between trademarks and domain names shows that the overwhelming majority of cases are settled by panelists under the auspices of institutions not under the authority of any State, one notable example being the WIPO Arbitration and Mediation Center on account of the large number of cases dealt with and the quality of its services.

However, problems may arise where the rules have not grown out of consensus but rather have been dictated by the social network's owner and administrator. These problems are compounded where the rules have been made based more on a U.S. than on a European approach to law (indeed, cases of disputes on Chinese social networks have already arisen, a foretaste of things to come). Matters become more complicated still where each social network has its own separate rules. And to make matters worse, "policy", that is, how the rules are interpreted, depends on the individual views held by the management of each social network.

Not long ago I was involved in a dispute between two parties based in northwestern Spain over copyright on a social network. The parties overseeing the conflict started out by citing the Digital Millennium Copyright Act, fair use, and other recondite rules, to our client's bafflement. As might be expected, references to Spain's Copyright Act and Community Directives were conspicuous by their absence.

A more serious example involved the State Prosecutor's Office in a case in which the image rights of a minor had been infringed, but it proved to be impossible to enforce any of the measures sought outside the borders of Spain, even though the images had spread around the world.

There are many more examples of cases like these that crop up daily. Establishing a suitable legal framework of uniformity for these situations will require considerable deliberation.

There has been talk of a principle of territoriality, whereby "business in my territory is done under the laws of my territory", but this is only a partial solution given the non-territorial nature of social networks already mentioned above.

The authorities of the European Union are seeking to exert an influence on disputes arising on social networks by harmonizing European rules.

There is still a long road ahead of us, but there are also some examples of successful approaches showing that harmonized regulation can significantly decrease the number of disputes. Territorial regulations could then be restricted to those disputes that are strictly local in nature.

Author: Javier Fernández-Lasquetty

Visit our website: http://www.elzaburu.es/

Freedom of expression, verbal abuse, human rights

"For freedom, as for honour, one can and one should risk one's life."

Don Quijote de la Mancha

Miguel de Cervantes

The judgment by the European Court of Human Rights (ECHR) in the matter of Delfi AS vs Estonia (Case 64569/09) has caused a bit of a stir.

At its core is another conflict between freedom of expression and the right to honour involving the mass media – essentially digital media – and its empowerment/obligation to curb defamatory content.

The case stems from a matter in which the owners of a web news portal, Delfi, were held civilly liable by the Estonian courts, which ruled that a person's right to honour had been infringed by defamatory comments made in a comments section provided by the owners of the portal for each news item.

Delfi had comment regulating measures in place on its website (an automatic filter to block comments containing certain words and a rapid notice and take-down system to remove defamatory messages). It therefore maintained that the judgment by the Estonian Supreme Court infringed its right to freedom of expression, and it appealed to the ECHR.

In its first instance decision the ECHR had ruled that holding Delfi liable was a justified and proportionate restriction of freedom of expression and therefore that the judgment in Estonia did not contravene the Charter of Fundamental Rights of the European Union. Delfi then appealed to the Grand Chamber of the ECHR.

The Grand Chamber upheld the earlier decision on very similar, though not identical grounds. For one thing, unlike the earlier decision, the Grand Chamber's judgment was not unanimous.

The legal findings of the decision address both the issue of lawfulness of the interference and the issue of freedom of expression and restrictions on that freedom.

Lawfulness entails that a provision of law "should be accessible to the person concerned and foreseeable as to its effects". Since it is the consequences that cause a person to regulate his conduct, they must necessarily be foreseeable.

Delfi claimed that there was no domestic law stipulating that an intermediary should be regarded as a publisher. The company claimed that the applicable law to be relied on was European law, which expressly prohibited the imposition of liability on intermediaries pursuant to the E-Commerce Directive No. 2000/31/EC.

Realizing that the underlying issue basically hinged on whether Delfi was regarded as being merely an intermediary, the Grand Chamber pointed out that it was not its task to take the place of the domestic courts in aspects relating to the interpretation and application of domestic legislation but only to determine whether the measures adopted and the effects they entail were in conformity with the European Convention on Human Rights.

In this context the ECHR noted that Delfi, as one of the largest news portals in Estonia, should have been familiar with domestic legislation and case law and that the possibility of liability for the circumstances described was not unforeseeable.

The meaning and pronunciation of a Community trademark in a language that is not an official EU language may also count

The factors to be taken into account when assessing the likelihood of confusion between two trademarks are ordinarily clear, for instance, the degree of similarity between the marks and between the goods/services covered. It is also clear that when the similarity between trademarks is being evaluated, three factors, aural similarity, visual similarity, and conceptual similarity, are to be taken as a three-fold basis for the assessment.

These, in short, make up the factors which all IP professionals are familiar with and which are applied when examining the likelihood of confusion. But what about trademarks written in a language that is not an official language of the European Union? Should the assessment also take into account the meanings of the words and even how they are pronounced in their language? What interpretation should be given to Article 9(1)(b) CommunityTrade Mark Regulation?

These questions were referred by the Brussels Court of Appeal to the CJUE for a preliminary ruling in Case C-147/14. The Court's ruling was just recently published.

The Court's answer leaves no doubt whatsoever: whether or not the meaning and pronunciation of words written in a non-EU language should be taken into account depends on whether the relevant public has a basic knowledge of the language in question.

In the case at hand, the trademarks considered contained Arabic words written in both the Latin and Arabic scripts and were visually quite similar. By contrast, if compared in Arabic, the trademarks displayed major phonetic and visual differences, in that the meanings and pronunciations were substantially unlike.

At the same time, the goods sold under these Community trademarks were food products that were essentially Arabic in origin, so the relevant public necessarily consisted of Muslim consumers with a basic knowledge of written Arabic.

In view of all the foregoing, the CJUE came to the logical conclusion that "Article 9(1)(b) of Council Regulation (EC) no. 207/2009 of 26 February 2009 on the Community trade mark must be interpreted as meaning that, in order to assess the likelihood of confusion that may exist between a Community trade mark and a sign which cover identical or similar goods and which both contain a dominant Arabic word in Latin and Arabic script, those words being visually similar, in circumstances where the relevant public for the Community trade mark and for the sign at issue has a basic knowledge of written Arabic, the meaning and pronunciation of those words must be taken into account".

This conclusion is closely in keeping with the social and economic situation in the European Union, a market that encompasses consumers of all nationalities and ethnic groups. It is certainly the decision that makes the most sense in the context of a literal construction of the provision concerned.

Author: Joaquín Rovira

Visit our website: http://www.elzaburu.es/

World Anticounterfeiting Day

This coming 2 June is World Anticounterfeiting Day in a number of countries around the world. To mark the occasion, for the fifth consecutive year the Spanish Patent and Trademark Office and the National Brand Owners' Association are holding, in cooperation with the Finance Ministry and the various national Police Forces, a special day to raise awareness and sensitize the citizenry about the adverse repercussions caused by the manufacture and sale of counterfeit goods.

This year's event will take place in the city of Vigo. The choice of city is far from arbitrary but rather is the upshot of a police anticounterfeiting and antipiracy operation carried out at Vigo's "A Piedra" market in October 2014. And that's not all. Vigo and its market, famous for selling counterfeit goods, merited a mention on the US Trade Representative's international blacklist in February 2014, which specifically noted the city's status as a port of call for many cruise lines and the market's operation "under the supervision and control of the municipal government".

The choice of Vigo as the city in Spain to hold World Anticounterfeiting Day, then, could not be more apt. One would hope that holding World Anticounterfeiting Day there will indeed help open the eyes of local government officials to the need to combat this type of criminal activity more effectively to take their city off this shameful blacklist.

Author: Juan José Caselles and Transi Ruiz

Visit our website: http://www.elzaburu.es/

New world for appellations of origin: Lisbon renaissance in Geneva

The Diplomatic Conference convened to adopt a new Act of the Lisbon Agreement met at the headquarters of the World Intellectual Property Organization (WIPO) on 11 to 21 May 2015 and reached agreement to adopt the Geneva Act.

In preparation for the Diplomatic Conference, the ad hoc Working Group met 10 times from 2009 to 2014 to discuss and draw up the draft text that has yielded this new Act and the Regulations under the new Act.

One of the primary objectives of the new Act is to make the existing Lisbon Agreement on Appellations of Origin and their International Registration, which currently has only 28 Contracting Parties, more attractive for accession by new members.

Some of the main changes will permit accession to the Act by intergovernmental organizations and the international registration of both appellations of origin and geographical indications (up to now the Agreement provided only for the registration of appellations of origin) under a system that is of course in conformity with the TRIPS Agreement while also grounded in many respects in regulations concerning these modalities adopted by the European Union. The Geneva Act also includes Articles dealing with the (broad) scope of protection for geographical indications and appellations of origin in the Contracting Parties and with the subject of official fees (rather unusual in European Union regulations in this area).

Two intergovernmental organizations evinced particular interest over the course of the drafting process for the new Act, namely, the European Union (with the OHIM also present as a separate observer in its own right) and, to a lesser extent, the African Intellectual Property Organization (OAPI). As the efforts of the Working Group earned credibility with the drafting of proposed full wordings for the texts, it sparked the interest of more and more countries, and the delegations of certain world powers (the U.S., Russia, China), which initially either did not take part or were essentially passive participants, became more active, greatly enriching the deliberations, raising very interesting issues and proposals from a variety of legal, economic, and cultural perspectives.

Like the current Lisbon Agreement, registration is not limited to certain goods. Rather, appellations of origin and geographical indications can be registered for all types of goods (agricultural and non-agricultural), provided they comply with requirements.

The Geneva Act will enter into force three months after five Contracting Parties have deposited their instruments of ratification or accession.

It would be remiss to fail to mention the important role played by the delegations of organizations accorded observer status in the Working Group and at the Diplomatic Conference, chief among them CEIPI, for its rigorous academic contributions, MARQUES, oriGIn, and INTA, representing the interests of their members and the general interest of the community at large in achieving a text with the clearest possible wording so as to avert instances of legal uncertainty.

Author: Miguel Ángel Medina

Visit our website: http://www.elzaburu.es/

General Court decides the time has come to limit the scope of protection for the watch brand, SWATCH

From Wikimedia Commons

Three days ago the General Court issued its judgment (Case T-71/14) upholding the grant of the SWATCHBALL trademark filed by Panavision Europe for goods and services relating to a company involved in the manufacture and sale of photographic and movie equipment (Classes 9, 35, 41, and 42). As an added quirk, the application expressly excluded goods and services relating to timekeeping.

The famous Swiss watch-making company Swatch AG opposed the application on grounds that it was confusingly similar to their earlier trademark registrations for SWATCH and that it was an attempt to take unfair advantage of the repute of their earlier mark. They also claimed that SWATCHBALL was detrimental to the distinctive character and repute of the earlier mark.

The Court concurs that the conflicting marks are similar and accepts the well-known character and reputation of the SWATCH marks. Nevertheless, the Court has found that for registration to be barred under Article 8.5 Regulation 207/2009, the relevant public must establish a link between the two marks and that absent such a link, the distinctive character and repute of the earlier mark cannot be taken advantage of or harmed.

While the Court acknowledges that certain factors (the similarities between the marks and the reputation of the SWATCH mark) support the conclusion that a link might exist, it has held that any such link is diluted by the differing natures of the goods and services covered (especially bearing in mind Panavision's limitation); by the different distribution channels and market segments; by the non-competitive nature of the goods, which are not interchangeable; and, above all, by the existence of two separate relevant publics,  the general public in the case of SWATCH watches and a much more specialized public in the case of Panavision's goods and services.

In point of fact, the Court has found that even though the specialized public for Panavision's goods is likely to be aware of the SWATCH branded goods, the public is still unlikely to draw a link between the goods or between the SWATCHBALL and SWATCH marks.

This judgment shows that even the most famous trademarks need to make strenuous efforts to prove that the requisite link exists, since the bar to registration laid down in Article 8.5 is contingent on the existence of such a link for well-known and reputed trademarks to be able to exert their full effect.

Author: Luis Baz

Visit our website: http://www.elzaburu.es/

Furniture and Copyright. Judgment by the CJEU of 13 May 2015 in the Dimensione Case (C-516/13)

Certain judgments of the Court of Justice of the European Union are less interesting for what they say than for what they stand for. The CJEU's judgment of 13 May (C-516/13) considers a request for a preliminary ruling in a dispute between two Italian companies in Germany. Complainants were Knoll International SpA, holders of exclusive distribution rights in certain pieces of designer furniture that have their own names, the Wassily chair; the Laccio table; the Barcelona chair, stool, couch, and table; the Brno and Prague chairs; and the Cantilever chair; defendants were Dimensione Direct Sales Srl, which was behind an advertising campaign selling reproductions that imitated those pieces of furniture, specifically targeting Germany.

 The pieces were offered for sale on the defendants' website, available in German, and through advertisements placed in German magazines and newspapers.

The starting point for the judgment is what some might think of as the core of the dispute. Under German law, the furniture in question are works of art protected by copyright. No jurisdictional issues were raised with the Court. Manufacture of the furniture in Italy did not preclude action from being taken in Germany, since the advertising was aimed at the German market and the pieces were protected in Germany.

However, there is another issue, whether offering or advertising an original or a copy of a work of art infringes the distribution right where the works are protected, even if it is not established that the advertising in question gave rise to purchase of the products.

The judgment is a reminder that the CJEU has to some degree come down on the side of a broad construction of the distribution right, understanding it to encompass other acts (contractual offers, non-binding offers and advertising) which also fall under the series of acts taken with the objective of making a sale of an object.

The CJEU has thus interpreted that Article 4(1) of Directive 2001/29 does not preclude the holder of an exclusive right to distribute a protected work from preventing an offer for sale or advertisement of the original or a copy of that work, even if it is not established that that advertisement gave rise to the purchase of the protected work by an EU buyer, "insofar as that advertisement invites consumers of the Member State in which the work is protected by copyright to purchase it".

Author: Antonio Castán

Visit our website: http://www.elzaburu.es/