ELZABURU Blog - Industrial and Intellectual Property

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Get set for MWC 2023 Barcelona!

The challenges, risks and opportunities for exhibitors and for patent, trademark and design owners are back with the upcoming MWC in Barcelona at the end of February 2023.

With its usual punctuality, the Barcelona Mercantile Court, together with the European Union Trademark and Design Courts in Alicante, has just published its new “Protocol for Duty Service and Rapid Action” for the Mobile World Congress 2023.

Procedural remedies to protect IP

You will recall that this Protocol represents the starting signal for mobile phone companies to finalize their strategies in view of the possibility (for some companies) or the risk (for others) that interim measures may be adopted in order to prevent mobile devices and other computer and communication media (tablets, laptops, wearables, etc.) that infringe patent, trademark or design rights from being exhibited.

Depending on each company’s position, the strategy involves appropriate use of the three procedural means for which the Protocol establishes priority and preferential processing: preliminary enquiries (to check whether the infringing devices are being exhibited), interim measures with or without a hearing (to seek to halt the exhibiting of the devices) and protective writs (to avert the risk of surprise measures from rightholders).

Taking stock of MWC22 and strategies for the upcoming edition

According to the Results Report published by the Barcelona Mercantile Court, the previous edition of the MWC in 2022 yielded a somewhat deceptive end result: six protective writs and only two verification of facts procedures.

It is important to keep in mind that this previous edition was held when still affected by the pandemic and with attendance essentially via telematic means rather than in person.

This year, however, there is every indication that the MWC will return to its extremely high attendance levels (over 100,000 attendees, 2,499 exhibitors) and the stakes will be high again for industrial property.

Maria Cadarso, Associate at ELZABURU

The drawbacks of AI with regard to copyright.

The recent $9 billion class-action lawsuit brought against Github, Microsoft, OpenAI and Open AI Codex is evidence of a problem that has been looming for artificial intelligence: its development can infringe copyright and it must be handled with care.

The lawsuit challenges the legality of the use of GitHub repositories to train GitHub Copilot, a service that autocompletes programming code using artificial intelligence. The lawsuit, brought by Matthew Butterick, argues that 11 open-source licenses and copyright have been violated.

How do Artificial Intelligence systems work?

Training AI systems requires feeding them with huge databases (such as those found on GitHub) to develop the large language models (LLMs) that power the technology.

In this case, it is a large database of open-source code. This code, used to train AI, can be copyleft, with viral licenses, or with permissive licenses, which are less open. In any case, they require respect for the author’s rights.

This may oblige the user of open-source code to give notice of its use, to attribute its origin to the author and to adhere to the terms of the license, which, among other things, may require keeping the code open for extended or modified versions of it or for code in which it may be an integrated part.

Copyright-infringing content

This does not occur with the GitHub Pilot service, which would not only violate such rights and terms but would also promote copyright infringement among its users, given that they are not aware that the pieces of code that autocomplete their own belong to someone else. Thus, they may even be producing commercial code without true freedom to use the code provided by GitHub Copilot for that purpose.

The AI systems of other companies such as Google or Facebook are being developed in the same way. And they are not only using programming code as fuel for this technology, but also other types of texts protected by copyright, such as literary works, journalistic texts, music, etc.

Many experts are therefore questioning whether the use of such works to feed the development of this technology is valid and what measures need to be taken to ensure that it is. Of course, human inspiration comes from sources and not simply from nowhere, and it is legitimate for AI to do the same, but what measures must be taken to ensure that AI does not generate copyright-infringing content after reading those sources?

At the very least, this will oblige companies that use GitHub Copilot and other similar tools to carry out intensive code audits. Otherwise, among other things, they run the risk of all their work not being commercially exploitable.


Alberto López Cazalilla, lawyer at ELZABURU 

Invalidity and Revocation Actions in Spain are Now Administrative Procedures.

Following the entry into force of a new regulation on revocation and invalidity actions in Spain on 14 January 2023, the Spanish Patent and Trademark Office (SPTO) will now be the authority competent for handling and ruling on invalidity and revocations actions concerning trademark and tradename registrations.

This change to a non-judicial procedure, which stems from the implementation of Directive 2015/2436 on the approximation of the laws of the Member States relating to trademarks, means that as of 14 January, this type of invalidity and revocation action cannot be brought before the civil courts, unless it is brought in the context of an infringement action, by way of a counterclaim.

Another new feature is that the SPTO’s final decisions in administrative proceedings shall be appealable before the civil courts, not only those ruling on the new invalidity and revocation actions but also those decisions by the SPTO ruling on proceedings involving industrial property rights, both applications and oppositions, whether in relation to trademarks, tradenames, designs or patents.

This reform is expected to lead to a simplification of the actions and procedures, as well as a reduction in the cost of the proceedings.

Should you have any questions or require further information, you may address your enquiry to your usual contact person at the firm or send an e-mail to the address elzaburu@elzaburu.es.




Under what circumstances can invalidity proceedings be undertaken?

They may be brought on relative grounds or on absolute grounds.

The relative grounds that can be invoked to seek invalidity are essentially the same as those that can be invoked in opposition proceedings, in particular the earlier rights recognised by law.

The absolute grounds on which an invalidity action may be based are as follows:  


  • Signs which are devoid of distinctive character, generic, descriptive, customary designations, misleading or contrary to law, public policy or accepted principles of morality;
  • Signs consisting exclusively of the shape or other characteristic which results from the nature of the goods themselves or which is necesssary to obtain a tecnical result or which gives substantial value to the goods (precisely because they are creations which would more appropriately come under other categories of industrial property, such as designs, industrial models or patents);
  • Signs which infringe designations of origin, geographical indications, traditional terms for wine, traditional specialities guaranteed and plant varieties, which are protected under EU legislation or international agreements to which Spain is a party;
  • Signs which reproduce or imitate State emblems, official signs and hallmarks indicating control and emblems of intergovernmental organizations;
  • Signs which have been filed in bad faith. Among the factors taken into account in assessing whether this requirement is met are identity or similarity with earlier signs, possible knowledge of an earlier sign, prior relationship with the owner of the earlier sign, absence of any intention to use the mark, etc.


The application for invalidity may be directed against all of the goods and services covered by the contested registration or against part of the goods and services.


When can invalidity proceedings be brought?

At any time, bearing in mind that the possibility of filing an application for invalidity on relative grounds expires five years from the time when the applicant for invalidity became aware of and acquiesced in the use of the sign it is seeking to have invalidated.

Invalidity actions on absolute grounds, on the other hand, are not subject to any time bar and can therefore be brought at any time after registration of the mark.


Under what circumstances can invalidity proceedings not be brought?

There is no basis for invalidity proceedings on relative grounds if:

  • The party that wishes to bring invalidity proceedings has acquiesced in the use of the mark for a period of five successive years while being aware of such use, unless the application was filed in bad faith;
  • The party that wishes to bring invalidity proceedings expressly consented to the registration of the mark;


As for invalidity proceedings on absolute grounds, they may not be brought if:

  • The sign was devoid of distinctive character, descriptive, generic or a customary designation on the filing date of the application but acquired distinctive character in respect of the goods and services for which it is registered prior to the date of filing of the application for invalidity.


Who can bring such invalidity proceedings?

In general terms, an application for invality may be filed by:


  • Any natural or legally constituted legal person that considers itself to be aggrieved and has the capacity in its own name to sue or be sued, including, in certain cases and depending on the rights being invoked, certain groups or bodies representing manufacturers, producers, suppliers of services or traders, as well as consumer or user associations.
  • The owners of earlier rights recognised by law, as well as duly authorized licensees.

The proceedings may be based on one or more earlier rights, provided that they are owned by the same party.


What does it entail when a trademark is declared invalid by the SPTO?

Except in those cases or circumstances expressly provided for by law, the trademark or tradename is deemed never to have had any legal effect, i.e., as if it had never existed.



Under what circumstances can administrative revocation of a Spanish trademark or tradename be sought?

The grounds on which revocation of a trademark may be applied for are as follows:


  • Where, within a period of five years from the date of its registration, the trademark or tradename has not been put to genuine use in Spain in respect of the goods or services for which it is registered, or where such use has been suspended for a continuous period of five years;
  • Where the trademark or tradename has become, as a consequence of acts or inactivity on the part of its owner, the customary designation for the goods or services that it covers;
  • Where the use of the trademark by its owner or an authorized third party is liable to mislead consumers, particularly as to the nature, quality or geographical origin of the goods or services.

The declaration of revocation may be total or partial, affecting all or part of the goods or services covered by the trademark.


Is it possible to commence or resume use of a trademark to avoid revocation on grounds of non-use?

Yes, provided that such commencement or resumption of use does not take place within the three-month period immediately prior to the filing of the application for revocation, with the trademark owner being aware that the application for revocation might be filed.

Are there grounds justifying non-use of a trademark?

Yes, circumstances beyond the control of the owner, such as import restrictions or other official requirements imposed on the goods or services for which it is registered, will be recognised as proper reasons for non-use.

When does the declaration of revocation of a trademark take effect?

By default, revocation will have effect dating back to the filing date of the application for revocation. However, at the request of one of the parties, an earlier date on which one of the aforementioned grounds for revocation occurred may be set in the decision on the application for revocation.


Cristina Velasco, Lawyer at ELZABURU 

The Start-up Law, a lever to support innovation.

The long-awaited Law No. 28/2022 on Fostering the Ecosystem for Start-up Companies, better known as the Start-up Law, has been published on 21 December and came into force with its publication in the BOE the following day. This regulation has the following main objectives:


  • Encouraging the creation and growth of innovative and fast-growing technology-based companies (start-up companies or “start-ups”).
  • Attracting talent and investment by creating a favourable environment.
  • Attracting specialized investors or “business angels”.
  • Promoting the development of hubs for attracting companies and investors in peripheral cities and in rural areas.
  • Promoting investment in innovation, boosting available public support resources and strengthening public-private partnerships.


It is important to point out that in order to be able to benefit from the new features introduced by this law, it will be compulsory, as an essential pre-condition, to obtain the start-up company certification issued by the National Innovation Enterprise (ENISA).

This entity will assess whether the company meets all of the requirements: it must be newly or recently created, be independent, have its registered office or permanent establishment in Spain, have at least 60% of its workforce in Spain, be innovative, and it must not be a listed company, not have distributed dividends and not have a turnover of more than ten million euros.

Given the need for a regulation adapted to the intrinsic characteristics of these companies, the bill introduces a series of new features in the fiscal, corporate, civil and labour fields, which will be analyzed from three perspectives: that of the start-up itself, that of workers and that of investors.

Start-ups will enjoy significant tax and legal benefits


As we mentioned in the introduction, the company must apply for start-up company certification. Once the application has been made, ENISA will have a maximum term of three months to issue the corresponding certification, and if no decision is made within that period, the outcome will be deemed positive by reason of administrative silence. [1]


Once ENISA issues the certification, the start-up company will have the right to apply the following incentives:

Firstly, a reduction in the corporate tax rate from the current 25% to 15%, for a maximum of four years from the first year in which the taxable income is positive and provided that start-up status is maintained, bearing in mind that after five (or seven) years the start-up will no longer be eligible for the benefits of the law.

Secondly, the general meeting of the start-up may authorize the acquisition of its own shares or treasury stock up to a maximum of 20% of the capital for the sole purpose of implementing a remuneration plan.

Thirdly, all capital companies are subject to dissolution for losses that reduce their net worth to less than half of the share capital. A change established by the bill is that start-up companies will be exempt from those grounds for dissolution until three years have elapsed since the company’s incorporation.

Interesting incentives for workers to attract talent


With the aim of attracting talent and providing for an attractive and appropriate remuneration policy, taxation of the stock option regime has been improved. The tax exemption, which was 12,000 euros, has been raised to 50,000 euros per year. In fact, an important new feature of the new law is that it will only be taxable when the stock is sold or the company goes public, or otherwise, ten years from receipt of the shares or holdings.

Moreover, with the aim of attracting foreign talent, this bill improves access to the special tax scheme on personal income tax for workers posted to Spanish territory: the number of tax periods prior to the posting to Spain during which the taxpayer must meet the requirement of not having been a tax resident in Spain is reduced from ten to five years.

Furthermore, workers included in the Special Social Security Scheme for Self-Employed Workers (RETA) who have effective control of a start-up company while also working as employees for another employer will have a 100% rebate on the RETA contribution for three years.


Improvements in deductions for domestic and foreign investors


The deduction for investment in new or recently created companies is increased, raising the deduction rate from 30% to 50% of the amounts paid for subscription of shares or holdings and increasing the maximum base from 60,000 to 100,000 euros per year.

In addition, the period for applying this deduction to the subscription of shares or holdings is increased from three to five years from the company’s incorporation, and up to seven years for certain categories of start-up companies, such as biotechnology, energy or industrial companies.

Tax relief for successful management of venture capital firms


On the other hand, if the investment in a start-up is made through an investment fund, there will be a team of people in charge of managing the fund. It is very common for them to be remunerated with a success fee (carried interest), notwithstanding other types of fees.

In line with regulation in other European countries, the tax classification of the remuneration obtained for successful management is regulated. In this regard, carried interest will be considered earned income, although with 50% exempt from taxation, with the aim of bringing taxation into line with that of other European countries.

In conclusion, the approval of this bill represents a decisive step forward in a sector that has been calling for a specific regulation for years, especially considering that Spain is the fourth European country in terms of the number of start-ups, with 11,100 companies employing 140,000 people, according to the PwC report ‘La contribución socioeconómica de South Summit en España’ (the socio-economic contribution of South Summit in Spain).



By Alberto López Cazalilla, Lawyer at ELZABURU


[1] Serial entrepreneurs, those who have set up several companies of this kind, can only benefit from the law up to a maximum of four times.


Belize: New entry into the Madrid System.


In the extreme northeast of Central America is Belize, a small country belonging to the Commonwealth that maintains English as its official language.

Belize has just announced that it will be part of the Madrid System as of February 24, 2023. This small Central American country will become the 129th country of the System to which other countries of the American continent already belong, such as the United States, Canada, Brazil, Chile, Mexico, Colombia, Jamaica, Samoa, Trinidad & Tobago, Antigua & Barbuda, Cuba, and the former Netherlands Antilles.

A Caribbean country, with an economy that comes mainly from agriculture (sugar and bananas) and a growing tourism thanks to its paradisiacal enclave, although not totally exempt from a certain amount of conflict precisely because of its strategic location. It has an important mineral and oil production.

A palapa at sunrise on the end of a pier in Placencia, Belize.

Be that as it may, it is a relevant jurisdiction for our Spanish clients who usually include it in their trademark protection plans.

There are some questions that revolve around its incorporation into the Madrid System. The first issue to consider is the language. The second is the harmonization of local use/non-use declaration requirements required by national law. Presumably, it will continue to be necessary to comply with local formalities despite opting for an international protection route. In any case, let’s give time for the entry into force to become official and with practice we will see how events unfold, as always happens.


Cristina Arroyo,  Head of the Foreign Trademark Department at ELZABURU 



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