ELZABURU Blog - Industrial and Intellectual Property

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Changes to the system for protection of industrial designs in China

edificio, guirnaldas, china

Designs in China (where they are called “design patents”) are protected under the Patent Law of the People’s Republic of China. This legal text entered into force in 1985 and was reformed in 1992, 2000 and 2008.

On 1 June 2021 a fourth reform will enter into force, with important amendments regarding designs. Indeed, it was necessary to update some aspects of industrial design protection in China in order to, among other purposes, bring them into line with the industrial design protection systems of the world’s main IP Offices. It will thus facilitate protection for foreign designs in China, as well as enhancing protection for the designs of Chinese applicants in other countries and at other IP Offices.

farolillos, china, luces

 

This reform should also be regarded as part of China’s preparations to join the Hague System for protection of international designs, given that following the accession of the EUIPO, South Korea, USA and Japan, China is the only one of the countries of the IP5 (which includes the world’s five largest IP Offices) that is not yet a member.

It is also important not to overlook the global importance of China in terms of the number of design applications filed. Over the past few years, the CNIPA has been the Patent Office that has received by far the largest number of design applications. For example, in both 2018 and 2019 there were more than 700,000 design applications in China, which accounted for more than 50% of all design applications worldwide.

The main changes that will affect designs in China can be summarised as follows:

1. Extension of the legal lifetime of designs to 15 years

Article 42(1) of the Patent Law extends the legal lifetime from 10 to 15 years, always calculated from the filing date of the design application in China.

This extension of the term of protection of designs in China is due to the Hague Agreement, which requires that the period of protection granted by contracting States for national designs must be a minimum of 15 years.

2. Possibility of design protection for parts of a product

Article 2(4) of the Patent Law has been amended to include in the definition of “design” the possibility that it refers to “the whole or part” of a product.

This amendment allows the scope of protection of designs to be expanded to include partial designs or designs of a part of a product.

This new provision will, for example, enable more secure protection for the design of a part of a product, without the need to protect the design of the whole product. Currently it is necessary to depict the whole product with solid lines. However, after the reform it will be possible to show with solid lines only the part that is to be protected and with broken lines those parts of the product for which protection is not sought.

Moreover, this new possibility of protection for partial designs or for designs of a part of a product is expected to encourage the filing of new design applications, thereby enhancing protection against possible infringers. Indeed, following the reform it will only be necessary that the protected part (for example, the sole of a shoe or the handle of a tool) has been copied, and not the whole product, in order to be able to take action against possible infringements.

This provision will help to bring practice in China into line with that of the other IP5 countries, given that in all of those countries it is currently possible to protect parts of a product.

3. Possibility of claiming domestic priority for designs

Article 29(2) of the Patent Law introduces the possibility of claiming the domestic priority of an earlier design application in China, within a term of 6 months, in order to permit the filing of an improved subsequent design application.

Under the current system, if an applicant files a design application in China and the design undergoes improvements or modifications, it is necessary to file a new design application. If the improved design differs in relatively minor aspects, the new application for the design would be vulnerable due to the existence of the first application.

With the introduction of the possibility of claiming the domestic priority of designs in China, such adverse situations are avoided, given that once the design is created, the applicant can file an initial design application to obtain an earlier filing date and then improve the design in the 6 months following the filing of the initial application, claiming the priority of the same.

In summary, the reform of the system for protection of industrial designs in China is an important step forward that will help to encourage innovation and improve legal certainty in the field of design. Other potential changes, such as extending the possibility of multiple design applications, or establishing a substantive examination or searches for earlier designs during prosecution, have not been included. Perhaps we will see these changes in a future reform.

Author: Pedro Saturio

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The Barcelona Mobile World Congress is back, with Courts’ Protocol!

Barcelona’s commitment to celebrate the MWC 2021 seems happily firm. Today, May 6, the Protocol of the Commercial Court of Barcelona and the Trademark Court of the European Union of Alicante has been made public to ensure swift action on precautionary measures and preliminary proceedings for infringement of industrial and intellectual property rights.

MWC Barcelona 28 de junio al 1 de julio 2021

Aspects to be considered:

  1. The MWC will be held from June 28 to July 1, 2021.
  2. The Commercial Court of Barcelona will resolve on the same day of its filing (24 hours) the admission of requests for protective letters aimed at preventing precautionary measures from being granted without a hearing against companies participating as exhibitors in the MWC.
  3. Preliminary or verification of facts proceedings based on copyrights, patents, trademarks, designs, unfair competition or advertising in connection with products exhibited at the MWC will have preferential and priority treatment and will be resolved within two days (48 hours).
  4. Requests for precautionary measures will also have preferential treatment and will be resolved within 48 hours (if they are granted without hearing the defendant) or 10 days (if they are granted with a prior hearing in the event that the exhibitor has filed a protective letter).
  5. Preliminary proceedings and precautionary measures may be directed both against acts of presentation or exhibition of products physically at the congress and against those that are carried out online and/or on any type of virtual platform provided in the congress.
  6. Preliminary injunction hearings shall preferably be held telematically.
  7. It is now time for companies, depending on their position, to set their strategies with sufficient time to ensure an adequate judicial response. ELZABURU’s proven experience in several consecutive editions of the MWC is at your disposal.

Access the Intellectual Property Fast Action Protocol Mobile World Congress 2021.

Author: Enrique Armijo-Chávarri

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Ten privacy requirements that must be met by the Digital Green Certificate

According to information published by the European Commission, the Digital Green Certificate (DGC) of vaccination is a digital proof that will help to ensure that restrictions currently in place can be lifted in a coordinated manner, thereby facilitating the free movement of citizens of the EU. This certificate will only include necessary key information, such as name, date of birth, date of issuance, relevant information about vaccines/tests/recovery and a unique identifier. In principle, the Spanish Government plans to implement it in June of this year, so that it is fully operational for the summer months.

aeropuerto, gente, maletas

Since this is a project that has generated some controversy, Ruth Benito, Of Counsel of ELZABURU and a specialist in personal data protection and privacy law, has analysed the privacy requirements that are expected when the certificate is launched:

1.- Data protection and security by design and by default

This is the primary issue for two main reasons:

  1. Contrary to common belief, focusing on privacy and security from the very beginning of any project helps to achieve better results in terms of effectiveness and public confidence in the project, minimise the risks for the public and avert the need for subsequent modifications.
  2. We are concerned that in the Proposal for a Regulation on the Digital Green Certificate (DGC) it is stated that in view of the urgency, an impact assessment has not been carried out, when such assessments are a key element in building public trust.

2.- Full transparency

EU citizens have a right to know exactly what information this certificate will contain, how it will be used and who will be involved in handling the information.

The future publication of the Regulation on the DGC (currently only a proposal) will provide considerable information in this regard, but many specific details will still have to be confirmed for each Member State, particularly concerning the companies, technology and security measures involved in each case.

3.- Non-discrimination

One issue raised in several countries is that this DGC must not be allowed to give rise to any kind of discrimination.

This certificate is being created to facilitate the safe free movement of EU citizens between EU Member States. Therefore, there must be a guarantee that it will only be used for this purpose and not for other matters that could imply some kind of discrimination, even on the part of the holder of the certificate, such as, for example, to gain an advantage in job selection processes.

One might question whether the DGC already inherently entails some degree of discrimination, given that those who have not yet been able to get vaccinated and have not been infected with the virus will have to pay for tests to have the results reflected in the certificate or be able to furnish some other form of proof in order to be able to travel.

4.- Actual usefulness and effectiveness

The information reflected in the DGC must always be up to date, but it must also be appropriate for the intended purpose. It would seem that this is an issue that has yet to be fully resolved, given that there is as yet no scientific evidence that those who are immunised, either because they have had the virus or because they have been vaccinated, cannot transmit the virus, that is, that they cannot infect others.

Moreover, it is also still too early to know how long this immunity will last. Therefore, it seems that the information is not as reliable as would be desirable for its intended purpose, which could be considered to go against the principle of data accuracy. We believe that further progress needs to be made on this issue and that scientific opinion and evidence will be taken into account in order to make the necessary adjustments in the system to ensure its maximum effectiveness with appropriate use of our personal data.

5.- Minimise data

Both the information used in the DGC system and the data ultimately reflected in the application or on the paper document when travelling, must be the minimum information necessary for the intended purpose.

We do not yet know exactly what information will be displayed when the passport is used, but it is something that needs to be analysed in detail. For example, it might be sufficient to have a kind of “fit for travel/unfit for travel” indication, if it were not necessary to know the person’s situation (whether the person is vaccinated, has had the virus or has a negative test result), or it might be necessary to know the specific situation that makes the person eligible for travel but not necessary, for the purpose of granting access to the territory, to know which specific vaccine was administered or what type of test was conducted, etc.

6.- Make sure that project partners provide appropriate guarantees

The national authorities will have to assess whether the providers of technology, infrastructure, data storage, etc. offer sufficient guarantees to ensure that the handling of that personal data, which is sensitive information, is conducted in accordance with appropriate security measures and that there is no undue interference in the rights of EU citizens. In any case, we would assume that as far as Spain is concerned, the selected company or companies will have to comply with the measures necessary under the National Security Framework.

7.- Interoperability

As set out in the Proposal for the EU Regulation, uniform conditions for the issuance, verification and acceptance of certificates in all EU countries are needed. Otherwise, it would not really facilitate the free movement of EU citizens within the EU.

8.- Universal and free of charge

The Proposal for a Regulation also rightly provides that the DGC must be universal and free of charge, which doesn’t mean that it has to permit us to travel free of charge and throughout the world (if only!) but that all citizens of the EU should be able to access the certificate at no cost.

Making it free of charge is really a means of ensuring that the DGC is universally accessible. However, it is also important to ensure that certain vulnerable groups are able to effectively benefit from the DGC, such as, for example, minors (who are, moreover, not in the age groups for vaccination), people with disabilities (accessibility) or people who are disadvantaged by the digital divide.

9.- No one should be permitted to take advantage of the data

This is not an opportunity to take advantage. Therefore, the authorities and companies involved in the DGC, aside from the intended purposes, cannot share the health information of EU citizens or benefit from them in any way, and international passenger transport operators that have to access the certificates should not generate their own databases with that information.

10.- It should be a temporary measure

It only makes sense, and thus is only justified and warranted, to have the DGC while the pandemic and/or health crisis continues. Therefore, once we have overcome that situation (hopefully sooner rather than later), both the certificate and the supporting technology must be discontinued and the health information of EU citizens that has been stored in the DGC systems must be deleted.

Previously published [in Spanish] in Confilegal by Luis Javier Sánchez.

For more information, you can listen to the interview with Ruth Benito on Capital Radio’s “Ventaja Legal” [in Spanish].

Author: Ruth Benito

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The conflict between company names and trademarks (or tradenames)

registro, marcas, diferenciacion, canica, azul, centro, círculo

Conflicts between company names and trademarks (or tradenames) are very common and there has always been considerable debate, both in doctrine and in case law, regarding the relationship and differences between the respective concepts and, specifically, regarding the scope of the exclusive rights conferred by a trademark (or tradename) registration with respect to company names that are identical or similar to such signs.

registro, marcas, diferenciacion, canica, azul, centro, círculo

 

First of all, it is necessary to identify the differences between the two concepts:

  • A company name is the designation that serves to identify companies in legal affairs (it will normally appear in the company’s documentation concerning its legal relations, such as invoices, contracts, etc.). Company names are registered at the Company Registration Office and their governing rules are set out in the Company Registration Office Regulations.
  • A trademark is the name or sign that serves to identify the goods and services of an undertaking in the marketplace and distinguish them from those of other undertakings, and a tradename is the name or sign that serves to identify an undertaking in the course of trade and distinguish it from others that carry out the same or similar activities in the marketplace. Both are registered at the Spanish Patent and Trademark Office and their registration confers on the owner an exclusive right to use them in trade.

What happens when a company name is identical or similar to a registered trademark or tradename? Does the company name constitute an infringement of the trademark or tradename?

The rules governing such a conflict are set out in the following sections of the Spanish Trademark Act [in Spanish]:

  • 14th Additional provision
  • Article 34

The 14th Additional provision of the Trademark Act establishes a bar to registration aimed at the Company Registration Office: the company registries shall refuse the company name applied for where it is the same as or might give rise to confusion with a reputed trademark or tradename.

In accordance with this provision, it is therefore clear that a new application for a company name cannot conflict with a reputed trademark or tradename. But what happens if the trademark or tradename is not reputed, or if the company name is already registered at the Company Registration Office? Can owners of trademarks or tradenames invoke their exclusive rights to seek the cancellation of the company name or prevent its use?

In these circumstances, it is necessary to rely on Article 34 of the Trademark Act, which is the provision that regulates the rights conferred by a trademark or tradename registration. Under this article, for the owner of the trademark or tradename to be able to prevent a third party from using a sign, various cumulative requirements must be fulfilled, of which, for the purposes of the subject matter at issue, I would highlight the following:

  • the use must be in the course of trade; and
  • it must be in relation to goods or services.

It follows from the above that:

  • The mere registration of a company name at the Company Registration Office does not in itself constitute an infringement of an earlier trademark or tradename registration that the owner of a trademark or tradename registration is entitled to prevent. It is necessary that the company name is used in the course of trade, that is, in the marketplace.
  • Mere use as a company name, that is, for the purpose that it is intended to serve, namely, to identify the company in legal matters, cannot constitute an infringement of an earlier trademark or tradename registration that the owner is entitled to prevent. The use of the company name must be in relation to goods and services.

Thus, it is ultimately an improper use of the company name, given that, as noted above, that is not its intended purpose, which is to identify the company in legal matters.

In summary, the owner of a registered trademark or tradename is entitled to prohibit use of a company name provided that (in addition to other requirements for infringement, such as confusion, etc.) said company name is used: (i) in the course of trade, and (ii) in relation to goods or services. The entitlement to prohibit infringing use of a company name is also expressly provided for in Art. 34.3 (d) of the Trademark Act.

The above parameters and requirements have been confirmed in case law. Particularly well known in this area is the CJEU’s judgment in the case C-17/06 Céline of 11 September 2007, the principles of which remain valid and are applied by the Spanish courts.

Previously published in Economist & Jurist [in Spanish]

Author: María Cadarso

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Eurasian IP System: A New Trademark System in Eastern Europe

Towards the year 2015, a new IP system has emerged in Northern Europe that aims to harmonize and unify, to a certain extent, the registration of trademarks in Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia. It is the so-called “Eurasian IP System”.

The Eurasian IP System is created primarily under the framework of the “Eurasian Economic Union (EAEU)” and is based on the “Treaty of the Eurasian Economic Union”. At the moment the five cited countries are the only members, but it is very possible that others in the region will join over the time.

map, world, europe, asia  

For us Spaniards and, in general, for the Western world, the eastern markets of our continent may seem somewhat unknown, distant or very alien to our daily lives, very focused on the European Union and America. However, in the world, especially in Asia, these markets are very important. The Russian market looks mainly towards Asian horizon and this process of integration with other states in the region to boost their economies has been developing for many years.

The alliance among these five States aims to achieve a free and unique economic space in which goods, capital, services and people circulate freely within a single market and under the framework of a coordinated customs integration.

As regards the IP field, the new trademark registration system is about to materialize – it was planned for 2020 – as an opportunity for the registration and protection of trademarks, even though there are still many fringes to overcome. In addition to the logical objectives of any common market, it seems that this new system also seeks to speed up the registration of trademarks in these jurisdictions.

Making a comparison with other existent and commonly used registration systems, it would broadly be more similar to the Madrid System than to the trademark in the European Union or to the AIPO administered by L’ Organization Africaine de la Propriété Intellectuelle (OAPI). It is not a completely unitary system, but rather a system that allows obtaining a trademark registration to obtain a bundle of national registrations, but that maintains a certain unity and dependence for some procedures and aspects. Therefore, from the moment this new registration comes into force, it will constitute one more strategic formula for the protection and internationalization of trademarks.

Some characteristics of what the Eurasian Trademark System will be:

  1. The application form will be unique and will be deposited with any of the intellectual property offices to choose from among those of Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia.
  2. The substantive examination will be carried out by each intellectual property office in each country.
  3. The official language will be, of course, Russian.
  4. For a trademark to be granted, it must be granted in all countries. Despite the fact that once the trademark is granted it becomes a bundle of national registrations, it must be granted by all the offices. Otherwise, it will be necessary to transform the Eurasian registry into independent national registries.
  5. The duration of the procedure is estimated to last approximately 1 year.
  6. There will be an opposition procedure within a period of 3 months. The opposition may be submitted to the receiving office where the application was filed.
  7. It is expected that the use of the trademark in one of the countries may serve as proof of use in the other members.
  8. It is not clear enough which office will have to be the one to request the renewal of a trademark, but it is reasonable to think that it will also have to be filed with the office that received the trademark application.
  9. It is still unknown if the Eurasian Mark is expected to become part of the Madrid Protocol. Therefore, it will not be possible to make a designation of this jurisdiction via Madrid Protocol, at least in the short-medium term.
  10. At the moment, there is not a unitary or centralized Eurasian administration nor jurisdiction. Therefore, administrative or judicial issues, it seems that they must be defended before the office through which the trademark has been applied for, and judicial issues will be heard by the competent national court.

It will be very interesting to know how this new Eurasian System and the Madrid Protocol coexist in practice. The reality is that the Madrid Protocol allows to protect trademarks not only in Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia, but also in practically all of northern Europe and very much of Asia (new Asian countries are also adding) through a partially centralized procedure in the initial phases and which currently allows a more or less centralized management of portfolios for certain formalities.

Author: Cristina Arroyo

Previously published in Economist & Jurist [in Spanish]

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