ELZABURU Blog - Industrial and Intellectual Property

Category Archives: Elzaburu

Forthcoming publication of the EU’s Digital Services Act

Inminente publicación de la "DIGITAL SERVICES ACT" de la UE

Online platforms (such as search engines, social media and e-commerce platforms) play an increasingly important role in our everyday lives. However, the current EU rules on digital services have to a large extent remained unaltered since the adoption of the Directive on electronic commerce in the year 2000, with great discrepancies in the way this Directive has been implemented across the EU.

Forthcoming publication of the EU’s Digital Services Act  

The Commission announced the revision of the internal market rules for digital services in its 2019 communication “Shaping Europe’s digital future”. Two public consultations were carried out, which had the following structure and ended on 8 September 2020:

  1. Assessment of the Directive on electronic commerce and clarification of the liability regime for digital services; and
  2. Possible introduction of an ex ante regulatory instrument for controlling the practices of large online platforms with significant network effects acting as gate-keepers.

The European added value assessment of the Digital Services Act was presented in October 2020, with the approval of the European Parliament resolution of 20 October 2020 on the Digital Services Act and fundamental rights issues posed.

The forthcoming next step will be the publication of the Digital Services Act, on 9 December 2020. Special attention must be paid to its final text, in particular with regard to the possible creation of national authorities competent to deal with illegal content. What does seem clear is that freedom of expression may not be asserted to sell counterfeit goods online.

 

Author: Juan José Caselles

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Some thoughts on mandatory use of a registered trademark

I would like to share my thoughts here on the issue of mandatory use of a registered trademark, in the light of the content of some recent decisions handed down by the constituent courts of the Court of Justice of the European Union.

red car fenderIn the Court of Justice’s judgment of 22 October 2020 (C-720/18) concerning the use of Ferrari’s Testarossa (figurative) trademark, I was struck by the citing of a Convention (of whose existence I was frankly unaware) signed back in 1892 between Switzerland and Germany. In this Convention, which is still in force according to the judgment, it is established that the legal disadvantages which, under the laws of the contracting parties, occur when a trademark has not been used within a certain period of time are precluded if use has taken place in the territory of the other party (Art. 5.1).

 

Based on this circumstance, use of a German trademark in Switzerland shall be valid for the purpose of attesting to use of a German national trademark which, therefore, cannot be revoked, even if it has not been used within the territory of Germany. The paradox that arises is that, as pointed out in the judgment, in the event that the same German trademark were used as a basis for opposing a new European Union trademark application, the opposition would fail if the applicant were to ask for proof of use of the German trademark, given that the use has not been made in the territory of the European Union.

Infinite Eight Champagne Extra Brut 2004Another judgment on which I would like to comment is the one handed down by the General Court on 23 September 2020 (T-601/19) ruling on the case relating to opposition proceedings involving the European Union trademark application “in·fi·ni·tu·de” and the earlier Spanish trademark “infinite”, both covering wines. In said proceedings, the opponent was required to attest to use of its trademark. To this end, various documents were submitted showing that the trademark “infinite” had been used in relation to exports of wines to Canada, Puerto Rico and the United States.

Having accepted the use of the trademark “infinite”, the Court assessed whether there was a likelihood of confusion between the trademarks in dispute. In this regard, the Court took as its starting point that the relevant territory was Spain and the relevant public was the general public, whose level of attention was average. The truth is that there are nuances to both aspects, given that, since the trademark is Spanish, it would indeed seem to be correct that the relevant territory is Spain. However, if we consider the matter in detail, it must be acknowledged that the goods are sold and consumed outside the EU. Therefore, based on the reality in the marketplace, the likelihood of confusion, at least from the perspective of the general public, would arise in those countries, as said “general public” would be Canadian or US consumers.

Logically, that relevant public is not valid for the purpose of analysing a conflict between trademarks arising in the European Union. In such cases where use is demonstrated on the basis of exports of the goods to third countries, it would seem more logical to think that the relevant public should consist of the professionals who carry out the import or export of the goods, in which case the pertinent analysis should be carried out by assessing the level of attention of those professionals.

FRIGIDAIREThe last of the judgments on which I wish to comment is the judgment issued by the General Court on 28 October 2020 (T-583/19). This case concerns the trademark FRIGIDAIRE, which was partially revoked by the EUIPO, since sufficient use was not demonstrated for certain goods (washing machines, dishwashers, etc.).

The owner had filed proof of use of the trademark in respect of those electrical appliances, submitting, among other evidence, material referring to sales of such goods for use on US military bases in Belgium and Germany. The General Court held that in such cases there is no use in the territory of the European Union given that the areas occupied by such military bases do not form part of that territory and, therefore, since there is no use of the trademark FRIGIDAIRE in the European Union, it should be revoked in respect of those goods.

As may be seen, the cases concerned in the cited judgments are somewhat unusual and they are a further indication that, when applying trademark law, any assessment made must be based on the individual circumstances of the specific case.

Author: Jesús Gómez Montero. Former Partner of ELZABURU and Member of the Advisory Board of the Alberto Elzaburu Foundation

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Trinidad and Tobago: Another country in the Americas joins the Madrid System for the International Registration of Trademarks

Trinidad y Tobago, mapa y bandera

The latest recently announced addition to the Madrid System is Trinidad and Tobago. One curious detail about this Caribbean island nation is that the name of its capital has clear Spanish roots: Port of Spain.

As of 12 October 2020, Trinidad and Tobago forms part of the long list of countries that belong to the system for the international registration of trademarks. Specifically, it is number 123 on the list.

On that date, 12 October, the country’s authorities deposited its instrument of accession to the Madrid Protocol, which will enter into force on 12 January 2021, if the coronavirus pandemic allows the country to have everything ready for then.

In principle, some legislative aspects in the country are already harmonised. For example, there is a multiclass registration system in force, as well as the eleventh edition of the Nice Classification. The protection period of trademarks is 10 years from the filing date. However, this country has one special feature in this regard, given that when trademarks claim a priority, the protection period is calculated from the priority date and not from the filing of the trademark in Trinidad and Tobago.

For certain sectors of the economy, such as, for example, hydrocarbons, refineries and petrochemicals, or steelmaking, the Madrid Protocol offers a new option for protecting your trademarks in Trinidad and Tobago.

Author: Cristina Arroyo

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Ultimate victory for MESSI over MASSI

Victoria definitiva de MESSI sobre MASSI

When it seemed that Lionel Messi had finally ceased to be newsworthy after an eventful summer, on 17 September 2020, the Court of Justice of the European Union (CJ) handed down its judgment in cases C-449/18 y C-474/18 on the appeals lodged by the EUIPO and J.M.- E.V. e hijos S.R.L. against the judgment of the General Court (GC).

As a recapitulation of what we already commented at the time, in 2011 the F.C. Barcelona player Lionel Messi filed European Union trademark application no. 010181154, with the following design, at the EUIPO to cover goods in classes 9, 25 and 28:

Logo Messi

As a consequence of said application, the owner of the earlier European Union trademarks nos. 3436607 and 414086 MASSI (word), registered in classes 25 and 9 and 28 respectively, filed opposition on the grounds that there was a likelihood of confusion and/or association (Article 8.1 EUTMR) between the trademark filed by Leo Messi and the earlier MASSI marks.

The EUIPO issued its decision, accepting in full the opposition filed by the owner of the MASSI marks and thus refusing Leo Messi’s application, on the basis that there was a likelihood of confusion between the marks in dispute. As a result, in 2014 Lionel Messi lodged an appeal against the refusal, but the EUIPO dismissed the appeal.

The applicant decided to contest the decision and, in September 2014, he lodged an appeal with the GC on grounds that the marks MESSI and MASSI were perfectly able to coexist on the Register, as the EUIPO had not taken into account the importance of the conceptual aspects when analysing the matter.

The GC accepted the appeal on 28 April 2018, granting the European Union trademark in question, a decision that was appealed both by the EUIPO and J.M.- E.V. e hijos S.R.L.

The CJ has ruled on this, confirming the GC’s findings of 2018, establishing as follows:

  1. In case C-449/18 P (EUIPO), it is ruled that the GC duly took into consideration the perception of the marks MESSI and MASSI by the entire relevant public, when analysing the likelihood of confusion, and not only part of this as argued by the EUIPO. In the opinion of the CJ, this is due to an erroneous interpretation by the appellant of the judgment issued by the GC.
  2. With regard to case C-474/18 P (J.M.- E.V. e hijos S.R.L.), the Court of Justice points out that, in the same way as the reputation of the earlier mark, the possible renown of the person applying to register his name as a trademark is one of the relevant factors to be taken into account when assessing the likelihood of confusion, insofar as that renown may influence the perception of the mark by the relevant public (CJEU ruling of 24 June 2010, Becker/Harman International Industries, C-51/09 P, EU:C:2010:368, paragraph 37). This means that the GC rightly found that the renown of Lionel Messi constituted a relevant factor to establish a difference between the terms “messi” and “massi” on the conceptual front.
  3. Similarly, with regard to the appellant’s allegation that the GC based its ruling on facts and evidence submitted for the first time before the GC, the CJ states that the renown enjoyed by Lionel Messi already formed part of the subject-matter of the proceedings before the EUIPO.

Moreover, the CJ goes on to add that the GC rightly stated that, since the renown of the Messi surname – in reference to the world famous football player and public figure – was well known, it could be known by anyone or it could be found out easily through sources that are readily accessible. These sources were available to the EUIPO when it issued its decision and should have been considered by the EUIPO when it analysed the similarity of the marks MESSI and MASSI from the conceptual standpoint.

  1. Finally, the CJ finds that the appellant interpreted the Ruiz Picasso and others/OHIM (C-361/04 P) judgment erroneously, as its brief of appeal maintained that the GC stated that, under certain circumstances, the conceptual differences can offset the visual and phonetic similarities between the signs in question.

In this regard, the CJ reminds us that a global assessment of the likelihood of confusion implies that the conceptual differences between two signs can offset the visual and phonetic similarities between them, provided that at least one of these signs has a clear and specific meaning from the relevant public’s point of view, in such a way that it can be perceived immediately by said public. Therefore, since the relevant public would perceive the marks in conflict (MESSI and MASSI) as two conceptually different signs, the application of the Ruiz Picasso and others/OHIM (C-361/04 P) judgment was correct.

The message put forward by the CJ in this case – which we believe to be correct – is clear as, independently of the visual and phonetic similarities between two marks, there may not be a likelihood of confusion if there is a marked differentiation on the conceptual front and, thus, Article 8.1 b) would not be applicable.

In this case, said marked difference on the conceptual front is based on the renown of the Argentinian star player’s surname among the relevant public, a well-known fact that should be considered in order to permit the later mark to be granted registration despite the existence of earlier MASSI marks. It seems clear that if Messi’s surname were not well known, the marks MESSI and MASSI would be unable to coexist and, therefore, the subject trademark application should have been refused.

The question we should address now is whether the CJ’s arguments are applicable to cases in which the applicant’s mark is not a personality, but rather a mark that is already widely known and recognised by the relevant public as a result of its use in the marketplace. In other words, could the reputation of a mark be considered a well-known fact by the EUIPO, where the distinctiveness acquired by the mark under application must be considered a relevant factor when analysing the likelihood of confusion with respect to earlier marks?

It remains to be seen what direction EUIPO practice will take in this regard.

Author: Manuel Mínguez

Published previously in Economist & Jurist [in Spanish]

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Antonio Tavira, new President of ELZABURU

Antonio Tavira junto al nuevo logo de ELZABURU

ELZABURU embarks on a new chapter, ready to maintain its leading position in the field of IP

Antonio Tavira has been appointed President of ELZABURU, a position that he will hold in addition to that of Managing Partner, which he has held since 2009. The position became vacant following the passing of Alberto Elzaburu in April of this year.

He has degrees in Law (Comillas University) and Business Studies (ICADE, Madrid), as well as a Master’s degree in Business Administration (IESE Business School, University of Navarra), and also holds positions in institutions and associations in the legal and IP fields, such as ASIPI, ECTA and AIPPI.

Antonio Tavira next to the ELZABURU logo  

Antonio Tavira knows ELZABURU very well. He began working at the firm in 1998, and has forged a brilliant professional career, leading the transformation from a family firm with over 150 years of history to a modern firm specializing in IP and IT law. “ELZABURU has evolved from a family firm structure to a partnership model, and this transformation was supported and driven at all times by our dear Alberto de Elzaburu, an extremely important figure in the history of industrial property in Spain and worldwide”.

The firm, which was established in 1865, has renewed its corporate image this year, adopting a new corporate identity that reflects its commitment to adapt to the new demands of a marketplace that is subject to constant technological and social change. “We have successfully transformed from the traditional image of a trademark and patent agency, expanding our services to a diverse range of fields, such as artificial intelligence, data protection and trade secrets, anti-counterfeiting, valuation of intangible assets, and management of audiovisual projects, while also implementing new technological tools”.

Thanks to this technological renewal, the firm has been well positioned to respond positively to the upheaval caused by the pandemic: “From a technological standpoint, we are at the cutting edge in legaltech with tools such as “Elzacloud”, a platform which enables our clients to interact online in the management of their portfolios and which has played a key role over these months of lockdown and teleworking. We also have our own “chatbot”, which is capable of answering many questions and helps to filter initial enquiries from visitors to our website”.

How has the situation caused by the coronavirus affected the firm and how will this financial year look in terms of results?

Fortunately, our firm was well prepared and thanks to Elzacloud and other technological tools, our more than 160 employees have been able to continue working at full capacity from the first day of the state of alarm, without any adverse impact on our services. However, we have naturally been concerned by the delicate situation faced by many of our clients in a range of different sectors: tourism, restaurants, retail, audiovisual productions, industry, etc. This economic crisis will inevitably also affect law firms, although we have continued to have intense business activity, but we will logically notice an impact on our turnover at the end of the year.

It is too early to know how the year will end with regard to results, but there can be no doubt that we will have to tighten our belts. However, our business is highly diversified in terms of clients. In fact, we work for one in three of the IBEX-35 companies and, moreover, a significant proportion of our earnings comes from international business. Therefore, we hope to be able to close a difficult year with reasonable results.

What are Elzaburu’s clients seeking in terms of trademark protection in the midst of the coronavirus pandemic?

On the one hand, we have to ensure maximum protection for our clients’ portfolios, with the economic reality in mind, which requires us to be extremely efficient with top-level professional advice. It is essential to have an in-depth knowledge of our clients, who are the core of our business.

Moreover, one of the higher demand areas over the past few months has been cybersecurity. These months of lockdown have seen an increase in online intellectual property infringements. We have therefore expanded our monitoring services with a technological platform which, by means of big data processes and machine learning, as well as agreements with Google and social networks, enables us to detect and swiftly eliminate counterfeits and improper use of trademarks and thus protect our clients’ intangible assets.

How do you see the future economic outlook given the current situation?

It is clear that financial structures have to be strengthened in order to deal with all possible contingencies that the pandemic will bring. We will all also have to adapt to a new working model in which teleworking will play a key role. Any cost reductions and savings that we are able to make will be crucial. These are difficult times, and our objective is to ensure that we have sufficient financial muscle to withstand this period of uncertainty.

Companies will have to show responsibility, in the knowledge that society needs our help. CSR will therefore play a very important role in this new world that is taking shape. Only companies that are socially responsible will be able to survive: companies which are able to show solidarity with their clients; companies which contribute to society to help overcome this crisis. We have long been aware that we all have to work together to build a more sustainable world. Recently, together with more than 1,000 other CEOs from across the world, I signed the Statement for Renewed Global Cooperation of the UN Global Compact in support of institutions to guarantee peace and eradicate inequality.

I think that difficult times lie ahead and that there will be suffering, but I am sure that if companies and institutions demonstrate social responsibility, we will be able to overcome this crisis and create a better world for all.

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