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Is it possible to register the trademark COVID-19?

¿Se puede registrar la marca COVID-19?

These times during the lockdown have certainly given us the opportunity to ponder over matters that perhaps might not have occurred to us under normal circumstances.

For an IP professional such as myself, one such curiosity has undoubtedly been the number of people who have had the idea to try to take advantage of the “brand of the moment”: COVID-19.

Is it possible to register the trademark COVID-19?  

If we check on the numbers by consulting the Spanish Patent and Trademark Office’s database, we may see that between 12 March and 5 May, there were no fewer than 16 applications for trademarks or tradenames consisting of or containing the term COVID-19 (all filed, incidentally, in the name of natural or legal persons domiciled in Spain).

Contrary to some reports published in the media, it should be pointed out that none of these applications have yet been granted.

This means that as things currently stand, not a single person in this country can claim to have secured registered rights in the term COVID-19 or any other expression containing that term for which they have sought official protection.

Of these applications, nine have not yet undergone initial examination by the Office, while the prosecution of the rest of the applications has been suspended by the Office’s examiners based on the bar to registration laid down in Article 5.1 f) of the Trademark Act (Act No. 17/2001 of 7 December 2001), which prohibits the registration as trademarks of signs which “are contrary to law, public policy, or accepted principles of morality”.

In this regard, it is worth mentioning that in each case, the official actions suspending the prosecution of these seven applications contain, in relation to the application of the aforementioned provision, the following observation: “It is held that the sign applied for comes under the bar to registration laid down in Art. 5.1 f) of the Trademark Act (Act No. 17/2001 of 7 December 2001), given that the sign applied for is in breach of accepted principles of morality, since it could be offensive for a broad section of society insofar as it attempts to make commercial gain, by including in the sign the identifying part of the name of a virus which is causing great suffering in our country and across the world”.

We will have to wait to see what stance the Spanish trademark authority adopts in relation to the registrability of the term COVID-19, although in those cases where the applicants specify that the purpose of their application is the preservation of public health, the possibility that they may obtain a favourable decision cannot be ruled out.

In any case, there are other side issues which may be of more interest to the average citizen than to legal professionals, such as: Is “COVID-19” really a sign that can be commercially exploited with reasonable expectations with regard to profitability? How can goods and services be marketed in such a way that “COVID-19” becomes an attractive sign that moves the public to consume those goods or acquire those services? Furthermore, if any of those applicants were to secure registration, to what extent could they prevent third parties from using the term COVID-19 for commercial purposes in relation to goods or services identical or similar to those for which the registration was obtained?

Only time will tell when it comes to gaining answers to these questions, but it is certainly curious that a term with such horrible connotations has already been the subject of applications for registration in relation to goods such as jewellery, toys or footwear, or legal services, to cite just a few examples.

What is beyond doubt is that, even in such difficult times as those experienced during a terrible pandemic, it is clear to people in Spain that the main instrument for guaranteeing and protecting the viability of a commercial project, whatever the nature of that project may be, is to obtain a trademark registration.

 

Author: Luis Beneyto

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Amazon not liable for trademark infringement in storing goods offered and sold by third parties

Amazon no infringe marcas ajenas al almacenar productos ofrecidos y vendidos por terceros, según el TJUE

In December 2017, the Court of Justice of the European Union ruled that from the standpoint of the rules on competition, the bar imposed by the company Coty Germany on the members of its selective distribution network, prohibiting them from offering its luxury perfumes on the Amazon e-commerce platform, was lawful.

Amazon not liable for trademark infringement in storing goods offered and sold by third parties  

On 2 April of this year, the CJEU ruled on a new matter referred for a preliminary ruling (case C-567/18) concerning the sale of Coty’s perfumes through the aforementioned platform. However, on this occasion, Coty had brought its complaint directly against Amazon, and the decision went against its interests.

Coty Germany had brought an action against Amazon before the German courts, arguing that Amazon was infringing its trademark rights by storing Davidoff brand perfumes in which its trademark rights were not exhausted. The storage in question formed part of the service provided by Amazon to third-party sellers that were offering goods for sale in the “Amazon Marketplace” section of Amazon’s website in Germany.

The complaint was dismissed and, with Coty having lodged an appeal against the decision on a point of law, the German Federal Court of Justice (Bundesgerichtshof) referred a question to the CJEU for a preliminary ruling, seeking clarification as to whether said storage constituted use of the trademark within the meaning of Article 9 of the Regulation on the European Union Trade Mark. Specifically, it questioned whether it came under the example of use mentioned in Article 9(3)(b) of Regulation No. 2017/1001, which provides for prohibiting third parties from “offering the goods, putting them on the market, or stocking them for those purposes”.

In its ruling on the matter, the Court of Justice first of all pointed to its case law holding that on e-commerce platforms third-party trademarks are used by the sellers of the goods and not by the operators of those platforms (judgment of 12 July 2011, L’Oreal, C-324/09).

With respect to the storage service Amazon provides to third parties who sell goods on its platform, the Court stated that according to the information provided by the referring court, those goods were not offered or put on the market by Amazon itself but by the third-party sellers. It further stated that it follows from this circumstance that Amazon does not use the trademarks in its own commercial communication. Therefore, Article 9 of the Regulation is not applicable to Amazon.

Lastly, the CJEU stated that the above does not preclude the examination of the platform operator’s conduct with respect to the trademarks of third parties from the standpoint of other rules of law, specifically Article 14(1) of Directive 2000/31 on certain legal aspects of information society services or Article 11 of Directive 2004/48 on the enforcement of intellectual property rights. However, since this matter had not been raised by the referring court in this case, the Court of Justice refrained from conducting such an examination, notwithstanding Coty’s petition in this regard.

In summary, the Court of Justice rejects that Amazon may be held directly liable for trademark infringements committed by sellers that use its online sales platform, not even when it stores the infringing goods. Nevertheless, it does not rule out the possibility that the owners of infringed trademarks could request measures against Amazon through application of the rules in the aforementioned directives. In this regard, we must consider the precedent of the aforementioned judgment of 12 July 2011, in which this issue was examined in relation to the eBay platform.

 

Author: Carlos Morán

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Counterfeit medicines: a serious threat amid the COVID-19 pandemic

Medicamentos falsificados: una amenaza grave en plena crisis por el covid-19

The European Union Intellectual Property Office (EUIPO) and the Organisation for Economic Co-operation and Development (OECD) have published a report on the trade of counterfeit pharmaceutical products worldwide.

Said report, based on the analysis carried out in 2019 but focussing on the pharmaceutical sector, confirmed that the imports of counterfeit and pirated products rose to 509,000 million dollars in 2016, accounting for around 3.3% of global trade.

Counterfeit medicines: a serious threat amid the COVID-19 pandemic  

In 2016, the international trade in counterfeit pharmaceuticals reached 4,400 million dollars, accounting for 0.84% of the world trade in pharmaceutical products.

Counterfeits imply not only possible economic damages for this sector, but also significant health threats, since fake medicines are often not properly formulated and may contain dangerous ingredients.

This report, covering the period from 2014 to 2016, proves that the counterfeits seized included medicines for serious diseases, such as malaria, HIV/AIDS and cancer. These also included antibiotics, lifestyle-related treatments, anaesthetics, diabetes treatment drugs and central nervous system medications.

India remains the main provenance economy of counterfeit pharmaceuticals, being the origin of 53% of the total seized value of counterfeit pharmaceutical products and medicines worldwide in 2016. India was closely followed by China (30%) and the United Arab Emirates (4%).

Among the countries most affected by the trade of counterfeit pharmaceutical products are the United States, the United Kingdom, France, Austria, Germany and Switzerland. In the specific case of pharmaceutical products sent to the European Union, India continues to be the main provenance economy, being the origin of 47% of the total value of pharmaceutical products and medicines seized by EU customs authorities, followed by China with 37%.

In the period from 2014 to 2016, mail, postal services and courier services were the main modes of transport for pharmaceutical products and fake medicines exported to EU economies, both in terms of their value and their volume.

Among the factors que encouraging the sale of counterfeit pharmaceutical products and medicines are its profitability, sometimes with a profit margin of 7.900%; the low risk of detection, as customs officials do not always have access to simple field tests that would help them to triage suspect products; the low risk of prosecution, since most counterfeits are only detected when they reach retailers or patients and it is frequently difficult to trace them back through complex supply chains, or to prove where criminal activity occurred; and weak penalties, with average incarceration periods of 6 years for trademark infringement worldwide.

In relation to the impact of counterfeit medicines, the report shows the serious harm the use of falsified medicines can cause.

The World Health Organization, one of the sources consulted, indicated that that fake, substandard anti-malarial medication might be responsible for the death of 116.000 persons in sub-Saharan Africa.

Counterfeit medicines not only affect private individuals, but also have a direct impact on legitimate producers of pharmaceuticals, these suffering consequences such as loss of revenue, damages caused to their brands and increased costs of security measures.

Governments and industry have been working hand-in-hand to combat counterfeit, substandard and falsified pharmaceuticals. As an example, it should be highlighted that the MEDICRIME Convention, which entered into force in 2016, was developed by the Council of Europe and provides countries with a model legal framework for dealing with falsified medicines and other types of pharmaceutical crime that threaten public health.

This treaty calls for multilateral collaboration across nations, disciplines and sectors, and lays the ground for co-operation with and between international bodies such as INTERPOL, Europol, UNODC, the WCO and WHO, in order to put a stop to this international threat to public health.

In essence, society as a whole always has the compelling, absolute and unavoidable need to fight against the counterfeiting of medicines. Regrettably, the current world crisis resulting from COVID-19 will unveil proof of the serious damages caused by the sale of falsified pharmaceutical products and of the urgent need to end this type of practices at global level.

 

Author: Alberto Gallo

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The complaint brought by Globomedia against Alex Pina, creator and scriptwriter of “Money Heist”, is dismissed

La casa de Papel

Globomedia, the company that has produced series such as “El Internado” or “Vis a Vis”, filed a complaint against Alex Pina and his company La Raspa Producciones S.L.U., on the grounds that he had breached the contract for the provision of services and assignment of intellectual property rights signed by both parties in creating “Money Heist” and not assigning the rights in this to Globomedia.

 

La casa de Papel

 

On 13 November 2019, Madrid Mercantile Court No. 3 acquitted Alex Pina, the creator of this series whose fourth season recently premiered on Netflix, while ordering Globomedia to pay the costs after issuing its decision in the ordinary proceedings following the complaint filed by Globomedia. In its complaint, Globomedia claimed that Alex Pina had breached the contract for the provision of services and assignment of intellectual property rights signed by both parties.

The professional relationship between both parties dates back to 1998. From this year, Mr. Pina provided services to Globomedia as a scriptwriter and, since 2007, several contracts were signed between the parties for the development and preparation of audiovisual projects, with Mr. Pina being responsible, as executive producer, for the coordination and production work with regard to these projects since 2014.

Globomedia sought compensation for damages amounting to 871,641.76 euros as it deemed that the contract concluded in 2016, for the “provision of services in relation to the creation, design, writing, content management, development and execution production of audiovisual projects in the field of television, films or other fields, and for the assignment of intellectual property rights in the works and creations resulting from the provision of such services”, had been breached by the scriptwriter since, according to the plaintiff, this contract established a “priority or preference regime” había sido incumplido por parte del guionista, pues según el accionante, en el mismo se establecía un “régimen de prioridad o preferencia” in favour of Globomedia over all Mr. Pina’s creations, yet Mr. Pina created the script of “Money Heist” without the plaintiff’s knowledge during the life of the contract.

It should be highlighted that, unlike other previous contracts, this contract signed on 21 April 2016 did not include Mr. Pina’s undertaking to personally perform the coordination and production tasks, but allowed La Raspa Producciones, S.L.U. to outsource the provision of the services to any person as it deemed necessary. As stated in the decision, the actual contract “likewise allows the service provider to provide its services simultaneously to other clients precisely in the field of television”.

For their part, the defendants denied having created the script for “La Casa de Papel” behind Globomedia’s back, arguing that the contract was concluded between GLOBOMEDIA and LA RASPA PRODUCCIONES, S.L.U. and, thus, alluding to the scriptwriter’s lack of standing to be sued. Furthermore, they claimed there was no exclusivity agreement in favour of the plaintiff.

Therefore, the judge dismissed Globomedia’s claims, concluding from the literal and systematic interpretation of the contract that Mr. Pina “[…] had no obligation to submit to Globomedia the possibility for this to take any project he may devise or create within the field of television for the duration of the contract concluded on 21 April 2016, thus being entitled to submit these to third party clients, independently from whether they were created by the scriptwriter or by third parties […]”.

 

Author: Inés de Casas

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CJEU ruling: Is it possible to seek compensation for damages in respect of infringement of a trademark that has never been used?

licor st germain

On 26 March, prior to the changes made to its operational arrangements due to the COVID-19 crisis, the Court of Justice of the European Union issued an interesting judgment (in case C-622/18) with regard to claiming compensation for damages in respect of infringement of a trademark when the trademark has been revoked on grounds of non-use.

The judgment was in response to a request for a preliminary ruling made by the French Court of Cassation in relation to an action for infringement of the French trademark SAINT GERMAIN covering alcoholic beverages, brought by the owner of the mark against companies that were producing and distributing a liqueur under the name “St-Germain”. In parallel proceedings, the mark had been revoked on grounds of non-use, but the complainant maintained its damages claim for the earlier period not covered by the revocation.

 

licor st germain

 

Under French law, the effects of the declaration of revocation are regulated in the following terms: “the rights of a trademark proprietor who, without proper reason, has not made genuine use of those rights in respect of the goods and services referred to in the registration during an uninterrupted period of five years, shall be revoked. Revocation shall take effect on the date of expiry of the five-year period laid down in the first paragraph of this article. It shall have absolute effect”.

The question therefore arises as to whether the owner of a trademark who has never used it and whose rights in the same have been revoked on expiry of the legally established five-year period, may claim that the essential function of his or her trademark has been affected and, consequently, seek compensation for damage sustained as a result of the use by a third party of an identical or similar sign during the five-year period following registration of the mark.

In its ruling, the CJEU points out that the Harmonisation Directive states that the Member States should remain free to determine the effects of revocation. Consequently, a national law which establishes the dies a quo from the date of expiry of the five-year period without use, is not contrary to EU law. If this is the case, there is nothing to prevent the filing of an action for infringement of trademark rights with the corresponding claim for damages, if permitted under national legislation. However, one significant detail should be noted in this regard.

With regard to the award of damages, the Court points out that Directive 2004/48 stipulates that the compensation must be “appropriate to the actual prejudice suffered by [the proprietor of the trademark] as a result of the infringement”. Although the fact that a trademark has not been used does not, in itself, preclude compensation for acts constituting trademark infringement, it remains an important factor to be taken into account in determining the existence and, as the case may be, the extent of the damage sustained by the owner and, therefore, the amount of damages that the owner may claim.

As for the consequences of this judgment in Spain, it should be noted that the effects of the revocation of trademarks are regulated as follows under Article 60 of the Spanish Trademark Act: “A registered trademark shall be deemed not to have had, as from the date of the application for revocation or the counterclaim, the effects specified in this Act, to the extent that the owner’s rights have been revoked. An earlier date, on which one of the grounds for revocation occurred, may be set in the decision on the application or claim for revocation at the request of one of the parties”. This provision of Spanish law essentially reproduces the provisions of Article 62 of Regulation (EU) 2017/1001, and therefore the situation for European Union trademarks is the same.

Therefore, if requested by the party seeking revocation, in Spain it is also possible for the declaration of revocation to be made effective retroactively from the date of expiry of the five-year period of non-use of the mark. Nevertheless, the owner of the mark could claim compensation for damage sustained if the infringement of his or her trademark occurred in a period not covered by the effects of the revocation. However, it remains to be seen what amount of compensation will be determined by the Spanish courts in such cases.

 

Author: Carlos Morán

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