Author Archives: Elzaburu

Jamaica joins Madrid Protocol

Thursday, 13 January 2022 16:06

Por Elzaburu

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The number of countries that have joined the Madrid System has risen considerably in recent years. The number of countries from the Americas joining the Protocol is particularly significant, giving rise to new protection opportunities for trademark owners with interests in that part of the world.

Jamaica is the latest country to announce that it is joining the Madrid Protocol, which is set to enter into force on 27 March 2022.

North American influence (mainly USA and Canada) in commercial relations is particularly strong in Jamaica. And while it is not a big market for brands internationally and consumption of foreign goods is modest, it is undoubtedly an important international tourism hub where Spanish hotel companies have a considerable presence. It is also a big producer and exporter of sugar cane, spices and fruit, coffee, tobacco and cannabis (a growing market in the pharmaceutical and therapeutic sector) and, of course, reggae music, since Jamaica is the birthplace and home of reggae.

Author: Cristina Arroyo

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Draft bill opens the door to legal deposit of video games

Friday, 31 December 2021 12:54

Por Elzaburu

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We live in a society that is constantly changing and evolving and, with this in mind, on 29 December 2021 the Council of Ministers of the Spanish Government approved the draft bill amending the Legal Deposit Act (Act No. 23/2011 of 29 June 2011) to provide for more effective preservation of the country’s publications and optimise the management of preservation centres.

First of all, it is important to mention that legal deposit is the legal obligation that provides for the compilation of copies of publications of all kinds, whether in physical format or online, at the preservation centres of Spain’s Autonomous Communities and the National Library. These administrative bodies are responsible for preserving Spain’s bibliographical and documentary heritage as well as its digital heritage, online publications, websites and electronic books and magazines.

The draft bill includes the following changes: firstly, publishers will be able to directly deposit copies in digital format, in addition to or in place of printed copies, provided that they are books, press publications and/or magazines. The purpose of this change is to facilitate the preservation of and access to documents, avoiding the need to convert these copies to digital format in the future.

Moreover, it adds the legal deposit of publications produced on demand, which was not included previously, and it recognises as preservation centres the Filmoteca Española (Spanish National Film Archive) and the Filmotecas (Film Archives) of Spain’s Autonomous Communities, whose objectives are to recover, research, preserve and disseminate Spain’s cinematographic heritage.

New categories for legal deposit are included, such as video games, commercial catalogues of bookshops, publishers and auction houses, as well as bookmarks, among others. With regard to video games, it should be pointed out that this is a significant change, given that under the previous legislation they were included in the category of audiovisual documents, whereas now they will have their own category with a view to ensuring the deposit of all publications of this kind.

Lastly, the changes include the removal of the requirement to deposit microforms, which have become obsolete, as well as all types of advertising publications, which are of no interest for purposes of heritage preservation, as stated in the draft bill. Moreover, pursuant to Constitutional Court doctrine, the draft bill eliminates the function of Higher Inspectorate, which had been the responsibility of Spain’s National Library.

The draft bill also incorporates the changes resulting from Royal Decree No. 635/2015 of 10 July 2015 regulating the legal deposit of online publications, which facilitates the preservation of the country’s digital heritage.

Finally, it is worth noting that this bill was drawn up in collaboration with the Autonomous Communities, the Federation of Publishers’ Guilds of Spain, the Spanish Video Game Association and the Spanish Centre for Reprographic Rights, with the aim of adapting to changes in the publishing sector, as well as providing for more effective preservation of the country’s publications and optimisation of the management of preservation centres.

Authors: Mabel Klimt and Paula Bellés

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US trademark legislation and the USPTO fight to prevent the proliferation of fraudulent trademark filings

Friday, 17 December 2021 12:34

Por Elzaburu

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Since 2019, the United States Patent and Trademark Office (USPTO) requires the intervention of a local attorney in the handling of trademark cases and the provision of an e-mail address for the owner, as a requirement for the filing of trademarks at the Office. Moreover, the Office reserves the right to randomly ask for additional proof of use of registered trademarks.

The next step along these lines was on 27 December 2021, when the “Trademark Modernization Act (TMA)”, passed a year ago, came into effect. This will arguably be one of the most important milestones in US trademark practice in recent years.

The TMA amends the Trademark Act in two main respects, introducing new procedures that simplify the cancellation of trademarks subject to insufficient use and changing certain aspects of existing procedures.

With regard to the newly created procedures, we shall focus on the two main proceedings, as they could have a considerable impact on the current situation at the Office, given that they are intended, in the words of US colleagues, to “clean up the register”: “Ex Parte Expungement and Re Examination Proceedings”.

The purpose of both proceedings is to contribute to the proper functioning of the Office, “make room” for the registration of trademarks of parties who legitimately use their trademarks and block access to the register for trademarks that are not used or are subject to insufficient use.

Both proceedings constitute a quicker, easier and cheaper alternative to the existing procedure (extremely onerous in the US) for cancellation of trademarks. In a jurisdiction with a long-established tradition and culture of defending trademarks, we could therefore see a new dynamic in trademark protection strategies.

By means of the Expungement proceeding, any party (even the Office itself) may request a ruling on the non-use of a mark in commerce. In this proceeding a ruling is sought on the complete absence of use in commerce with respect to a registered trademark, for all or part of the goods and/or services covered. A successful petition in Expungement proceedings would entail that the mark has never been used in connection with all or part of the goods or services. Such a petition may be filed with respect to a mark between 3 and 10 years following the date of registration. However, up to 27 December 2023, it is possible to do so for any mark that has been registered for 3 years or more. This exceptional grace period could be interpreted as a kind of incentive to cancel marks or to encourage registrants to adapt their registrations in keeping with their actual use.

Under the new Re Examination proceeding, a third party (also the Office itself) may request cancellation of some or all of the goods and/or services of a mark on the basis that the mark was not in use on the filing date of the application or before the deadline for filing the statement of use, where applicable.

It is important to remember that the US trademark system is based on the “First to use” principle and that, depending on the filing basis claimed in the trademark application, proof of use will be required before or after filing. Therefore, the relevant time period for this purpose will depend on the use claim made in each particular case.

There can be no doubt that trademark protection in the US will call for a greater effort from owners when formulating their plans for protection, a truthful and realistic view of the intended use of their marks, very precise specifications of goods and services, and solid and sufficient proof of use.

Thus, from 27 December 2021, trademark owners will not only have to face the test of sworn statements of use, but there will also be a risk of cancellation of marks at the request of third parties or the Office itself.

The TMA also introduces changes with respect to existing proceedings:

In proceedings for cancellation of trademarks before the Trademark Trial and Appeal Board (TTAB), cancellation may be requested on the new ground that a registered trademark has never been used in commerce. This ground for cancellation will be available at any time after the first three years from the date of registration.

While it will not be implemented until 1 December 2022, with regard to office actions issued by the Office, the shortening of response periods for office actions introduced by the TMA is particularly relevant. The period for responding to an office action will be three months rather than the more generous 6-month period currently available.

Finally, we would also highlight the introduction of a two-month term for third parties to file a “Letter of Protest” (observations or request for evidence) in relation to a ground for refusing registration of a mark, in examination proceedings.

These are undoubtedly important changes aimed at helping to clear invalid trademark registrations from the register and ensure the smooth functioning of the US market and which, in some cases, will affect the strategies designed by owners for the defence and protection of trademarks and also for their maintenance, in a key jurisdiction for the portfolios of trademark owners all over the world.

Author: Cristina Arroyo

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FRUTARIA decision: General Court considers proof of use where trademark was assigned during relevant period

Monday, 29 November 2021 17:56

Por Elzaburu

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On 13 October 2021the General Court issued its judgment in Schneider v European Union Intellectual Property Office (EUIPO) (Case T-12/20), recalling relevant aspects of the proof of use of a trademark subject to a revocation action. This includes findings concerning the validity of the evidence provided by a former proprietor when the trademark has been subject to an assignment, use as a trademark, distinctiveness and use for a sub-category of goods.

Background

On 22 May 2007 Frutaria SAT 9413 filed an application for registration of the figurative trademark FRUTARIA with the EUIPO in connection with goods and services in Classes 29, 31, 35 and 39. Registration of this trademark was granted on 27 April 2010 under EU trademark No 5922885. This trademark was subject to an assignment and was transferred on 14 April 2016 to Frutaria Comercial de Frutas y Hortalizas SL.

On 17 May 2017 Markus Schneider filed an application for revocation of the EU trademark FRUTARIA. Accordingly, the trademark holder was obliged to prove use of the trademark in connection with all the relevant goods and services for the period between 19 May 2012 and 18 May 2017 – the first part of the relevant period was thus prior to the assignment, while the second part was after.

The trademark holder submitted to the EUIPO several items of evidence for the purpose of establishing use of the contested trademark. The Cancellation Division partially upheld the application for revocation, but rejected it in respect of certain goods and services in Classes 29, 31 and 35.

Schneider appealed the decision. In a decision dated 8 October 2019, the First Board of Appeal partially upheld the appeal, maintaining the registration of the trademark for certain goods and services in Classes 29, 31 and 35.

Schneider appealed to the General Court, relying on a single plea in law alleging:

lack of use of the contested trademark by the proprietor;
lack of use as a trademark for the goods and services concerned;
failure to use the mark in its registered form; and
insufficient use of the mark for the goods and services at issue.

The General Court considered that the assessment of the First Board of Appeal was right and dismissed the action in its entirety.

Decision

The General Court recalled that the transfer of a trademark cannot lead to its new proprietor being deprived of the opportunity to adduce proof of genuine use in the course of the relevant period during which it was not the proprietor of the mark: although Article 15(2) of Regulation 207/2009 states that use of a trademark by a third party with the proprietor’s consent amounts to use by its proprietor, in this case, use of the trademar was made directly by the company which owned the trademark at the time in question.

As regards genuine use of a trademark where the trademark is used in accordance with its essential function, the court emphasised that the fact that a word element is used as a company’s trade name does not preclude its use as a trademark to designate goods or services. Moreover, it considered that the supporting evidence submitted to the EUIPO (images of the boxes generally used for transporting fresh fruit and vegetables) can be used as additional elements for confirming genuine use of the trademark.

The court dismissed Schneider’s comments on the failure to use the trademark as it was registered: while there were notable differences between the trademark as registered and the trademark as used during the relevant period, those differences were not capable of significantly altering the distinctiveness of the mark. This conclusion was based on the finding that the element ‘frutaria’ was still the dominant and most distinctive element of the signs (as depicted below), and that the amendments were to be considered ancillary, as they would be perceived merely as a modernisation of the sign.

Lastly, the court found that the fact that the proof of use filed with the EUIPO was furnished only for the sale of products to a single customer did not make it possible a priori to rule out its genuineness. Accordingly, it accepted that the one-off sale of dried plums to a single customer was sufficient to establish genuine use for the category of “dried fruits” in Class 29.

Comment

This judgment sheds light on the consideration that must be given to the proof of use that a trademark holder can submit in a revocation action when the trademark has been assigned during the relevant period established by Articles 15(1) and 51(1) of Regulation 207/2009. It also provides valuable guidance on the court’s criteria as to the requirement of use of a trademark as registered, notwithstanding the modernisation and alteration of non-essential elements, and on the suitability of small sales for establishing genuine use in connection with certain categories of goods.

This article first appeared on WTR Daily, part of World Trademark Review, in October, 2021. For further information, please go to www.worldtrademarkreview.com

Author: Sara Navarro Joven

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Royal Decree-Law No. 24/2021, a legislation to open up opportunities for digital content

Thursday, 18 November 2021 12:29

Por Elzaburu

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On 2 November the Spanish Government approved Royal Decree-Law No. 24/2021, transposing, among others, Directive 2019/790 on copyright in the Digital Single Market (CDSM Directive).

The purpose behind this legislation is to open up opportunities for digital content to compete in a digital single market.

The following, among others, are some of the most notable changes:

The exception or limitation for illustration for teaching and scientific research has been expanded. In this regard, Article 68 recognizes that the requisite authorization from right holders shall not be necessary for use of their works for teaching purposes through digital means, provided that such use is made by the teaching staff of a formal educational establishment, by the staff of universities and research bodies, in a secure electronic environment (for example, a virtual classroom) and accompanied by an indication of the source, including the author’s name, where possible. Moreover, these acts shall be deemed to occur in the territory of Spain, even if the recipients are not in Spain.
Another of the most important changes is the obligation on the part of online content-sharing service providers to adopt appropriate measures to ensure protection for works. They shall be liable for unauthorized acts of communication to the public, unless they show:
- that they have made best efforts to obtain an authorization and ensure the unavailability of the works.
- that they have acted expeditiously, upon receipt of notice from the right holders, to remove the works or other subject matter, and prevent future uploads.
The right to fair and proportionate remuneration is recognized for authors and performers in relation to agreements for exploitation of their works, to redress the imbalances that exist. To this end, an obligation of transparency is established for the parties to whom authorizations have been granted or exploitation rights have been transferred, who must provide up to date information once a year on the exploitation of the work and the revenue generated and the remuneration due.

Other important amendments of the Intellectual Property Act introduced by the Royal Decree-Law include:

With regard to cases where, following conclusion of an agreement for transfer of rights, the remuneration initially agreed is disproportionately low compared to the total revenue derived from the work, an amendment is introduced to Article 47 of the Intellectual Property Act in relation to unfair remuneration, whereby the agreement may be revised.
A right of revocation is introduced in Article 48bis, whereby the author is granted the right to revoke the authorization or transfer of rights, or terminate the exclusivity of the contract, if the work is not being exploited.
The new wording of Article 58, which stipulates that by means of a publishing agreement, in which the author transfers the right of reproduction and distribution to the publisher, the publisher acquires the right to a share of the fair compensation provided for in Article 25.
The amendment of Article 32.2, eliminating the so-called “Canon AEDE” (mandatory and non-waivable collective management levy). This levy affected content search engines and aggregators, which had to pay the levy in favour of Spanish newspaper publishers. The new provision does not establish any formal arrangement regarding management of this right and right holders may negotiate authorizations individually or through a collective rights management organization.
Finally, through the inclusion of a new Article 129bis, press publishers and news agencies are afforded an exclusive right of reproduction and making available to the public with respect to the online use of their press publications by information society service providers.

Authors: Mabel Klimt, Javier Fernández-Lasquetty, Claudia Fernández y Clara Collado

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Author Archives: Elzaburu

Jamaica joins Madrid Protocol

Draft bill opens the door to legal deposit of video games

US trademark legislation and the USPTO fight to prevent the proliferation of fraudulent trademark filings

FRUTARIA decision: General Court considers proof of use where trademark was assigned during relevant period

Royal Decree-Law No. 24/2021, a legislation to open up opportunities for digital content

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