Tag Archives: Industrial property

What is an IP strategy and why is it important?

There is a growing interest among CEOs in Spain in adding an IP strategy to their agenda, an element that has a direct impact on the profit and loss account and which is also closely linked to investments in innovation and marketing.

A well-designed and well-executed IP strategy facilitates the transformation of resources such as inventions, innovations, ideas, know-how and data into intangible assets, that is, patents, trademarks, industrial designs and copyright, thereby boosting and adding value to a company’s business portfolio.

Digital transformation, virtual communication and new technologies allow us to open up the creative process to all areas of the company, not just to the departments usually responsible for these matters.

Why is it so important for a company to implement such a strategy?

There are many legal and strategic reasons for doing so, although the key factors are determined by the sector and the degree of global competitiveness of the company.

By way of example, we may highlight the following factors, which have an important strategic influence:

  • These new intangible resources or assets help to foster a culture of permanent innovation within the company.
  • Competitors can be prevented from taking advantage of our progress and/or undermining our competitive advantage by means of different legal instruments for protection, such as, obtaining patents or industrial designs, implementing trade secret plans, protecting proprietary software, domain names, copyright, trademarks, etc.
  • We can benefit from the strength and legitimacy of intangible assets in new markets when the company has plans for international expansion.
  • A company’s branding strategy serves to build up and shape its brand and position its goods and services in the marketplace.
  • Discouraging professional or amateur counterfeiters from copying our products.
  • These assets may be transferred, licensed, sold and valued, increasing the company’s stock value, and helping to establish a stronger position in the financial markets.
  • They can be capitalised on the balance sheet and amortised, and may also offer fiscal advantages.
  • The cost of hiring experts to carry out the processes of transforming ideas into intangible assets can be recorded as deductible expenses by companies.
  • Without intangible innovations, companies cannot access national and European subsidies.

All of the above factors lead to the idea that an IP strategy could be an interesting prospect for a company. I encourage you to take up the challenge.

Author:Pilar Soriano

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

Forward or backward step in court specialisation in Spain?

National Judicial Council (Source: Wikipedia)

Spain’s National Judicial Council, in its Decision of 18 October published today, has extended court specialisation in industrial property to new courts.

It may be recalled that, since Patent Act No. 24/2015 came into force in April 2017,  the issue of jurisdiction in proceedings regarding trademarks, designs and patents had been left in the hands of certain Mercantile Courts in Madrid, Barcelona and Valencia. This concentration of proceedings in three single jurisdictions was cheered by advocates of judicial hyper-specialisation but has also prompted reservations or even jealousy, of sorts, on the part of other courts that were excluded from the allocation of jurisdiction. The reaction of the latter did not take long.

The Decision of the National Judicial Council assigns exclusive powers to rule on industrial property proceedings to, in addition to the courts of Madrid, Barcelona and Valencia, already holding such powers, the following:

ANDALUSIA Granada Mercantile Court 1
GALICIA A Coruña Mercantile Court 1
CANARY ISLANDS Las Palmas Mercantile Court 1
BASQUE COUNTRY Bilbao Mercantile Court 2
 

The new jurisdiction framework will come into force on 1 January 2019 and, in the meantime, it would be no surprise to see some disquiet concerning this development.

One curious aspect worth noting is that the National Judicial Council decided against the designation of specialised courts in other Autonomous Communities that had requested this. It is still to be seen if this extension of the jurisdiction reinforces or, on the contrary, weakens court specialisation in industrial property proceedings. This would not be due to the different strengths or limitations shown by one or another court, but due to the convenience of concentrating matters in the fewest amount of courts possible, in an effort to foster specialisation.

Author: Antonio Castán

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Fashion Law: Counterfeiting in the fashion sector (VII)

ELZABURU has had the pleasure of working together with the publisher Thomson-Reuters Aranzadi on Fashion Law, a pioneering work in Spain on the subject of fashion law, which was presented on 16 April.

In these short weekly summaries, the professionals at ELZABURU who participated in the work offer us a brief outline of their contributions:

Counterfeiting in the fashion sector

For some years now we have been witness to the ongoing integration of national economies (Spain’s included) into a single global economy. The many opportunities this opens up to producers, companies, and consumers often go hand in hand with the market’s flexibility being turned to the advantage of international criminal gangs to place illicit goods in far-away destinations.

The broad extent of crimes against intellectual property in Spain is due, in no small part, to the mild penalties these activities have traditionally elicited and to a widespread lack of awareness both by society as a whole and even by judicial authorities.

Like other production and consumption sectors, the fashion industry too has not been spared the scourge of counterfeiting.

One fashion counterfeiting statistic of great concern is that in 2015, 46 % of all goods detained by Customs in the EU were fashion-related items, more specifically, athletic shoes, handbags, purses, watches, and clothing.

In 2016 Spanish police forces seized nearly 800,000 fashion-related articles in Spain, namely, footwear, jewellery, watches, leather goods, accessories, perfumery, cosmetics, and textile goods.

Online selling has opened up to the fashion industry both a new distribution channel and a way to attract consumers, but counterfeiters have put the anonymity offered by the web, the vast numbers of potential buyers, and the multinational nature of the Internet to good use in running their criminal businesses.

A quick Internet search on “fake bags” plus the name of any luxury brand returns hundreds of thousands of hits.

This attests to the vast tendrils of counterfeiting that have broadly infiltrated fashion e-commerce, certainly posing a challenge to law enforcement and to protecting the rights of brand-owners, who bear the actual brunt of the economic impact in the form of, for instance, reduced earnings, fewer jobs, and damage to brand image and reputation.

Still, it is not all bad news in this sector. A series of reforms to the law in Spain have ushered in significant changes in the definition of offences against intellectual property that will have a positive effect on the fight against counterfeiting.

The main example of recent changes to the law is the long-awaited scaling of penalties to the severity of the conduct carried out by infringers (importing, wholesaling, street vending, etc.), which opens up the possibility of dealing with offences against industrial property more fairly and more proportionately.

Author: Tránsito Ruiz 

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

Blog entries in the series Fashion Law:

1.Trademark protection in the fashion sector (23.04.2018)

2.Design protection in the fashion sector (30.04.2018)

3.Patent protection in the fashion sector (07.05.2018)

4.Protection of fashion through copyright (21.05.2018)

5. Image rights in the fashion sector (28.05.2018)

6.Fashion Law. Data Fashion (04.06.2018)

7.Counterfeiting in the fashion sector (11.06.2018)

8.Exhaustion of rights in the fashion sector (18.06.2018)

9.Corporate reputation in the fashion sector (25.06.2018)

10. Protection of the commercial imagen of a fashion brand (04.07.2018)

11. Websites, Apps & Social Networks (13.07.2018)

12. Valuation of intangible assets (17.07.2018)

13. Licensing (06.09.2018)

OECD Alert to Governments in report entitled “Governance Frameworks to Counter Illicit Trade”

On March 1, 2018, the OECD published the report “Governance Frameworks to Counter Illicit Trade”.

In this report, the OECD has introduced a new phase in its efforts to help countries fight against piracy and to protect the market, consumers and businesses. The reasons for these increased efforts are, among others, inconsistent penalties, lack of control over small shipments and a lack of information and coordination across borders and in free trade areas.

This means that criminal networks traffic billions of dollars’ worth of fake goods each year. The OECD report shows that, on average, 2.5% of internationally trade goods are counterfeit, rising to almost 7% for IT and communications products.

The victims of these fraudulent practices are not just trademark or patent holders, but also consumers and governments themselves. In the words of Marcos Bonturi, Director of Public Governance at the OECD: “trade in fake and prohibited products can be dangerous for consumers and costly for companies and governments. This affects industries in all OECD countries and increasingly from emerging markets as well. Tackling policy gaps can start to increase the risks and lower rewards of illicit trade for criminals.”

The OECD study shows how criminal networks avoid detention and enforcement “thanks to” miscommunication and a lack of cross-border coordination.

The report also explores how the use of postal and courier services and online sales is increasing, making it easier to trade in illicit small shipments.

This is a major warning to Governments on the need to cooperate with one another in the fight against the international trade in counterfeit goods.

  Author: Juan J. Caselles and Alberto Gallo

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European Commission recommends new measures against illegal content online

The dissemination of illegal content online damages citizens’ confidence in the Internet and could pose security threats. Although progress has been made in Europe as regards citizens’ protection online, platforms need to double their efforts to remove illegal content from the Internet more swiftly and effectively. Voluntary measures taken by the sector, as encouraged by the Commission, have already paid off: the EU Internet Forum to eliminate terrorist content from the Internet; the Code of Conduct on countering illegal online hate speech; and the Memoranda of Understanding on the sale of counterfeit goods. Nevertheless, there is still room for more effective action.

Background:

In its Communication of September 2017 on tackling illegal content online, the European Commission promised to monitor progress and assess whether additional measures were needed in order to ensure the swift and proactive detection and removal of illegal content online, including possible legislative measures to complement the existing regulatory framework.

Development: The Commission Recommendation of 1 March 2018

Before determining whether it will be necessary to take legislative action, the Commission has just published its Recommendation of 1 March 2018 on measures  to effectively tackle illegal content online. It consists of a set of operational measures, accompanied by the necessary safeguards, to be taken by companies and Member States. The recommended measures apply to all forms of illegal content, i.e., terrorist content, incitement to hatred and violence, child sexual abuse material, counterfeit products and copyright infringement.

Basically, procedures have been reinforced in order to more effectively remove illegal content by means of the following operational measures:

  1. Clearer “notice and action” procedures. Companies must establish simple, transparent rules for reporting illegal content, including fast-track procedures for “trusted flaggers”. In order to prevent lawful content from accidentally being removed, content providers will be notified of removal decisions and will be able to challenge decisions.
  2. More effective tools and proactive technology. Companies will have to design clear notification systems for users. They will need to have proactive tools to detect and take down illegal content, particularly in the case of terrorist content and content that requires no assessment of the relevant context in order for it to be deemed illegal, such as child sexual abuse material or counterfeit goods.
  3. More solid safeguards to guarantee fundamental rights. In order to ensure that there are solid grounds for removing content, companies must put in place effective and appropriate safeguards, including a human review step, at all times respecting fundamental rights, freedom of expression and data protection laws.
  4. Paying special attention to small businesses. The sector must, by means of voluntary agreements, cooperate and share experiences, best practices and technological solutions, particularly regarding automated detection tools. This shared responsibility will be particularly beneficial to small platforms, which have fewer resources and less technical know-how.
  5. Closer cooperation with the authorities. Where there is evidence which points to a serious offence or suspicions that there is illegal content which poses a threat to human life or security, companies must immediately notify the Security Forces. The Member States are invited to establish the pertinent legal obligations.

Next Steps:

The Commission will follow up on the measures that are adopted in compliance with this Recommendation, determining whether supplementary measures, including legislative action, are required.

In close cooperation with the interested parties, the Commission will continue its analysis with the launch of a public consultation (feedback period ends on 30 March 2018). It will also ask the Member States and companies to provide the pertinent information on terrorist content (within a period of 3 months) and on other illegal content (within 6 months).

We will therefore have to be prepared to cooperate with the Commission in relation to illegal content in the field of copyright and industrial property.

Author: Juan J. Caselles

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

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