Author Archives: Elzaburu

New amendment to Regulation implementing the Trademark Act fires starting pistol for proof of use in Spain

Courtesy of Mohamed Hassan at Pixabay

The amended Regulation implementing  the Spanish Trademark Act (Act No. 17/2001) has been published has been published the 30th April and enters into force the 1st May 2019.

With the approval of this amendment, the starting pistol has been fired for applicants of trademarks, in the context of opposition proceedings, to be able to require the opponent to furnish proof of use of the registrations on which the opposition is based, provided that the registrations are subject to the use requirement. Thus, if the opponent fails to furnish proof of use of the mark invoked as the basis for opposition or show that there are proper reasons for non-use, the opposition will be dismissed with respect to that mark.

This is an important change to the Spanish trademark system, arising from the transposition of Directive (EU) 2015/2436 to approximate the laws of the Member States relating to trademarks.

However, pursuant to the First Transitional Provision, this amendment will not affect trademark and tradename proceedings commenced before this amendment to the Regulation comes into force. Only applications filed as of 1 May will be subject to the new system of proof of use in opposition proceedings.

As already anticipated, the entry into force of the new system for administrative invalidity and revocation proceedings has been postponed until 14 January 2023.

Author: Luis Baz
Visit our website: http://www.elzaburu.es/en

Canada – How to simplify your trademark system to improve efficiency

Since 2015 the Canadian government has been preparing for its accession to the Madrid System for the international registration of trademarks and has, to this end, adopted decisions and developed internal legal mechanisms to adapt to international trademark system standards. It has signed up to three core international treaties in the area of trademarks: the Protocol relating to the Madrid Agreement concerning the International Registration of Trademarks, the Singapore Treaty on the Law of Trademarks and the Nice Agreement concerning the International Classification of Goods and Services.

On this premise, the Canadians have passed a new national trademark law, which is set to come into force on 17 June 2019.

The new law introduces important changes, which will undoubtedly simplify the procedures for trademark protection considerably in what until now has been a highly complex jurisdiction and which will, to some extent, move away from the common law systems and towards a more European legal framework.

The most significant change is the elimination of the requirements concerning use or intent to use in trademark applications, and the derogation of the requirement to submit a declaration of use to secure the registration of a trademark. Thus, in June of this year, Canada will move over to a first to file trademark system and abandon its traditional common law first to use” system.

Below are some of the key features that will form part of trademark practice in Canada from 17 June 2019:

  • The international trademark registration system will be an option for the internationalisation of trademark rights.
  • Trademark applications filed from 17 June will not have to invoke any filing basis that would give rise to dependency and they will be registered without the need to declare use beforehand.
  • However, it will be mandatory to specify goods and services in accordance with the Nice Classification, which will increase the costs of protection, due to the implementation of a class system.
  • The duration of trademarks is significantly reduced, since the current duration of 15 years will change to 10 years, in line with most trademark legislation and the Madrid Protocol.
  • From the entry into force of the new law, there will be two important consequences for the next renewal of a trademark: its duration will be 10 years and its list of goods and services will have to be brought into line with the Nice Classification.
  • While the declaration of use will no longer be a sine qua nonrequirement for the registration of a trademark, it will be possible to request proof of use when enforcing and defending rights, for example, in the course of cancellation or opposition proceedings.

It appears that Canadian lawmakers have opted for a very practical transition during the change, seemingly wishing to avoid an awkward coexistence of two systems (the old system and the new system) and the difficulties involved in the administration of transitional periods.

Moreover, Canada joins the group of 120 member countries of the Madrid System for the international registration of trademarks. A nice number for a long-awaited accession that will make the internationalisation of trademark rights easier for Canadians and, hopefully, also provide an incentive to explore our European markets.

Author: Cristina Arroyo
Visit our website: http://www.elzaburu.es/en

Personal data – Safeguards for Brexit

If your company has a supplier, parent company, subsidiary or partner located in the United Kingdom, it most probably means that you are transferring personal data to the UK. It is therefore highly advisable to know what can be done in the event that Brexit ultimately goes ahead, in order to be able to continue transferring that information and benefitting from those business relationships without breaching data protection regulations or being exposed to the resulting severe penalties.

Once the United Kingdom has left the European Union, communications of personal data to the UK will be considered international data transfers, since it will become a third country (non-EU and non-EEA).

The General Data Protection Regulation (GDPR) is the world’s most stringent legislation in the area of privacy. It therefore follows that if the data is sent to a country outside the European Economic Area (EEA), the level of security and safeguards will be lower. Thus, the general rule is that such data flows shall not be permitted unless the following criteria are fulfilled:

  • The country of destination for the data has an “Adequacy Decision”: The European Commission, having studied the country’s privacy legislation, considers that it provides sufficient guarantees in keeping with European standards, as was recently the case with Japan in the ruling adopted on 24 January. However, while the United Kingdom has adapted its national legislation in line with the European data protection regulation (GDPR), the European Data Protection Board or EDPB (which replaced the Article 29 Working Party) has already pointed out that at the present time, the UK does not have an adequacy decision, and the fact is that the process of adopting the decision could take up precious time during which data flows to the United Kingdom cannot be stopped.
  • Appropriate safeguards have been adopted: even if the destination country does not have an adequacy decision, the transfer of data can be enabled if appropriate safeguards are provided, the most important of which are the following:
    • Standard clauses: contractual provisions that oblige the recipient of the data to adopt measures and safeguards that provide for a level of protection comparable to the European level.
    • Binding corporate rules: better known as BCR, they are a set of legally binding policies or codes of conduct developed and implemented by a group of enterprises in order to provide sufficient guarantees for the secure transfer of data within the group. This mechanism is exclusively for groups of enterprises, and the rules must be submitted to the pertinent supervisory authority for review and, where appropriate, approval.
  • Codes of conduct and certification mechanisms: these mechanisms are a new feature introduced by the GDPR. The codes of conduct are self-regulatory sectoral rules. The approach is similar to that of BCR, but applied to a business sector rather than to a group of enterprises. Moreover, the GDPR provides for the possibility to create certification mechanisms in the area of data protection (such as seals or marks) as a means of demonstrating compliance with the applicable legislation. The EDPB is currently working on a series of directives to harmonise these conditions.
  • One of the legally established derogations applies: the GDPR does leave some room for manoeuvre, establishing that even if the destination of the international data transfer is not deemed secure and adequate safeguards are not provided for data communication, it may be permitted in the event that it comes under any of the established exceptions. The EDPB has already cautioned that, since these are exceptions, they must be interpreted restrictively, and only be used occasionally to ensure that the exception does not become the rule.

Thus, even if the United Kingdom did not manage to conclude an agreement before its departure from the European Union, or if the agreement did not contain any provisions on data protection, this would not necessarily imply cutting off the flow of personal data from the EU, although the flow of data would depend on the decision that the European Union decides to adopt, and on the preparedness or quick response of companies in the rest of Europe that have business relationships with the United Kingdom.

  Authors: Fernando Díaz y Ruth Benito
Visit our website: http://www.elzaburu.es/en

Assessment of MWC Barcelona 2019

The Commercial Court of Barcelona and the European Union Trade Mark Courts of Alicante have published their report summarising the application of the duty service and fast-action protocol for the Mobile World Congress held last week in Barcelona (MWC 2019). The information provided in this report will be no surprise for those, such as ELZABURU, having experienced first-hand the procedural peripeteia at this Congress.

  1. The courts have handled and resolved 50 matters in total, representing a 42% increase when compared to those dealt with in 2018.
  1. 38 protective letters were submitted to avoid adopting preliminary injuctions inaudita altera parte, 36 of these in Barcelona with regard to patents and 2 in Alicante in relation to European Union trade marks and designs. They were all processed and resolved within 24 hours.
  1. In order to verify the presence of goods suspect of patent infringement during the trade fair, the court attended 5 petitions for verification of facts procedures, these being processed and granted within a period of 48 hours. 2 of these petitions were notified and carried out by means of seizing samples at the actual inauguration of the Congress.
  1. On the subject of preliminary injunctions inaudita altera parte, the court of Barcelona attended 5 petitions filed and granted within a period of 48 hours before the start of the Congress. The measures were performed while the Congress was underway, with onsite seizure of samples. Curiously, in one of the cases the interested party was able to file a brief of opposition within two days, with the court accepting the opposition and immediately lifting the measures.
  1. ELZABURU followed the MWC 2019 there and then, being involved in 6 legal proceedings, preparing the defence strategy for another 2 cases that took different courses, while attending the Congress onsite to face any incident that could have occurred.

In addition, the actions of the courts of Barcelona and Alicante were exemplary when assessed regarding the judicial response and the efficiency of the mechanisms established in the Protocol. All remaining is to think of MWC 2020!

Author: Enrique Armijo

Visit our website: http://www.elzaburu.es/en

 

The new Spanish Trade Secret Act is here! (II)

Trade secrets are considered an object of property, allowing for their transfer and licensing, under a similar regime to that of patents, which already provides for the transfer of know-how. Likewise, it establishes the regime for cases of co-ownership of trade secrets; that agreed between the parties would prevail in these cases, should this fail the corresponding provision of the Act would apply or, otherwise, the provisions regarding common property of the Civil Code. Once again, the legal regime is similar to that for patents.

Finally, this section of the Act would make the party transferring secrets it does not own liable for the damages caused to the acquiring party, provided that the former acted in bad faith.

With regard to the actions in defence of trade secrets, this right is placed on an equal foot with the rest of intellectual property rights, once again in line with the catalogue of actions allowed for patents, such as cessation, removal and compensation. The diminished liability of the bona fide third party, referred to above, becomes a reality here as the substitution of these actions for the payment of a monetary compensation is allowed in some cases. In addition, the Act provides for the exercise of precautionary measures and measures of enquiry to supplement the defence actions, following the procedures set out both in the Patent Act and the Civil Procedure Act.

One of the most significant developments included is the demand for confidentiality regarding trade secrets in legal proceedings, therefore avoiding placing this valuable information at risk by establishing preservation measures and penalties for their infringement.

The new Act is an opportunity for all companies, opening up the possibility to protect as trade secrets information that previously lacked clear protection. It is precisely for this reason that it becomes necessary to implement a trade secret protection plan to achieve the protection afforded by the Act. Otherwise, trade secret owners would not be in a position to bring all the actions this new Act makes available to them. Similarly, companies must be particularly diligent with the information they receive and use whenever this is considered secret since, as stated above, they could be liable for infringements, even when acting as third parties in good faith.

  The first part of this article is available here

Authors: Javier Fernández-Lasquetty , Cristina Espín and Martín Bello

Visit our website: http://www.elzaburu.es/en

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