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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Open Access to Scientific Research Information in the EU

The European Commission has announced its plans to improve access to scientific information produced in Europe in order to increase innovation capacity and benefit citizens by giving them quicker access and opportunity to build upon publicly-funded research. The EC will start with making open access to the scientific publications a general principle of Horizon 2020, the EU's Research & Innovation funding programme for 2014-2020. Those would either be made immediately accessible online (‘Gold’ open access) and be eligible for up-front reimbursement of publications costs, or no later than six months (twelve months for articles in the fields of social sciences and humanities) after publication (‘Green’ open access). The EC said that without quick access to up-to-date scientific literature, it takes small and medium-sized enterprises up to two years longer to bring innovative products to the market and only 25% of researchers share their data openly. 

This project will give Europe a better return on its €87 billion annual investment in R&D and the aim of the EC is that by 2016 open access would be available to 60% of European publicly-funded research articles. It furthermore urges Member States to take a similar approach and the UK was the first one to do that, preceding the Commission’s announcement with one day (16^th July 2012), by deciding to remove the pay walls of taxpayer-funded research through a “gold” model, introduce walk-in rights via public libraries and extend access licensing of universities.

Author: Gergana Dimitrova

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European patent owners’ scope for procedural action under Regulation (EC) 44/2001 strengthened

We have learned from our good friend Aurelio López-Tarruella that in a judgment given on 12 July 2012, in reply to a request for a preliminary ruling submitted by the Dutch courts within the framework of an action for infringement of a European patent by various parties (Case C-616/10), the European Court of Justice has clarified the  scope of articles 6.1, 22.4 and 31 of Regulation No. 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters.

Two aspects of the judgment warrant special mention:

First, the ECJ allows that the special rule of jurisdiction laid down in article 6.1 of Regulation No. 44/2001 may prevail over the general rule based on the defendant’s domicile. For the ECJ the fact that actions for infringement of a European patent should, according to article 64 of the EPC, be dealt with by national law does not prevent the national court from deeming the different claims brought before it to be connected and thus permitting article 6.1 of the Regulation to kick in.

Second, the ECJ confirms that in the context of a European patent infringement action where the defendants have argued, by way of defence against the award of interim relief, that the patent is invalid, article 22.4 of Regulation No. 44/2001 (relating to jurisdiction as to the substance) shall not preclude the application of article 31 of that same Regulation (relating to jurisdiction over provisional or protective measures). The court states that the two provisions refer to different situations and have separate fields of application. Even so, the ECJ allows that the court seised of the application for interim measures may refuse such relief if it considers that there is a reasonable possibility of the patent ultimately being declared invalid by the competent court. 

Author: Enrique Armijo Chávarri

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European Parliament and Council at loggerheads over unitary European patent. Next chapter: September 2012

On 10 July 2012 there was lively debate on the Legal Affairs Committee of the European Parliament over the suggestion made by the Council on 29 June that articles 6 to 8 of the “Proposal for a Regulation of the European Parliament and of the Council implementing enhanced cooperation in the area of the creation of unitary patent protection” be deleted. The implementation of that suggestion would entail denying the European Court of Justice the capacity to interpret uniformly the core of patent law, specifically, the right to prevent the direct or indirect use of the invention and the limits of patent protection. The majority of the MEPs came out strongly against the deletion, maintaining that it would constitute a breach of ordinary legislative procedure, and it was thus decided that the matter should be referred back to the Commission and the Legal Service of the Parliament. More news is expected in September.

Following the mess resulting from Opinion 1/09 of the Court of Justice in March 2011, on 26 May 2011 the Commission proposed that the work be restructured in the form of three legal instruments within a single package to be adopted by the 25 Member States participating in the enhanced cooperation procedure, Spain and Italy having opted out, those instruments being a regulation on the creation of unitary patent protection, another regulation confined to translation requirements, and an international agreement for the creation of a unified litigation system with a unified patent court.

On 5 December 2011 the European Parliament and the Council struck a political deal which left just one question in the air, namely, that of where the new court should be located. As the Council had announced that a solution could be forthcoming towards the end of June 2012, Parliament decided to wait and to put the political deal to the vote at first reading in the plenary session to be held on 4 July. On 29 June the Council announced that a “Belgian style” agreement had indeed been reached and that the seat of the court would thus be in Paris while there would be specialized chambers in London and Munich, but that this would entail the deletion of articles 6 to 8 of the basic Regulation. British, German and French professionals had long been calling for the removal of those provisions, on the ground that the Court of Justice is not a specialized body and that its intervention will only give rise to greater cost and delay in the handling of infringement and nullity actions, and their views were echoed in a report by the UK Parliament published on 3 May 2012.

On 2 July the European Parliament decided not to put the package to the vote on 4 July and instead to convene the Legal Affairs Committee for 10 July. We now know the outcome of the meeting of that committee, although we cannot yet gauge its implications. To liken the situation to that of players in the time-honoured board game known as the Game of the Goose, we might have stumbled into the maze on square 42 and therefore have to go back to square 30 or, worse still, have fallen into the well on square 31. In the first scenario months will have been lost; in the second we may have to wait another three years for someone to come along and rescue the project. It is, at all events, every day more evident that, after forty years of negotiations, on this front we are witnessing a watering down of the European construction process and a waning of the belief that industrial property is one of the key elements for the consolidation of the internal market.

Author: Manuel Desantes

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