ELZABURU Blog - Industrial and Intellectual Property

Author Archives: Elzaburu

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

The new Trade Secret Act 1/2019 has been published today. This new legislation opens a new protection opportunity for companies which most of their valuable information will now enjoy legal recognition equivalent to that of other intellectual property rights. As a result, we shall now analyse some of the most relevant developments included in this regulation.

First of all, this Act sets out a definition of trade secrets in a very broad manner, allowing for this concept to cover all types of information. The subject matter of protection includes any information or know-how that fulfils three requirements:

(i) it is secret;

(ii) it has business value; and

(iii) reasonable measures have been taken to maintain its secrecy.

Thus, practically any kind of know-how generated by a company may be considered a trade secret.

Secondly, the act specifies the types of activities considered to be lawful or unlawful, taking into account the activities trade secret management entails: acquisition, use and disclosure. In this way, said actions may be lawful or unlawful depending on the circumstances described in the Act.

On the one hand, acquisition, and therefore use and disclosure, shall be deemed lawful when resulting from

(i) independent discovery;

(ii) reverse engineering;

(iii) the exercise of workers’ rights; and

(iv) any other action conforming to fair commercial practices.

On the other hand, these same actions (acquisition, use and disclosure of trade secrets) may also be considered unlawful.

This would arise in the event that the trade secret was acquired without the authorisation of the owner, that is, in the case of unlawful acquisition. This manner of acquiring information will affect other conducts since, if its acquisition was unlawful, so will its use and disclosure be.

Furthermore, if the know-how is obtained in a lawful manner, but it is used or disclosed in breach of any contractual or similar obligation, these acts will be considered infringements of trade secrets.

One important development in this new Act is liability for infringement, given that it establishes  objective liability for third parties who have not committed the aforementioned unlawful activities. Thus, the party liable for an infringement will be a party which acquires, uses or discloses the trade secret while being aware, or which should reasonably have been aware, that it was acquired from a party that uses or discloses it unlawfully. This objective liability also extends to those producing, offering or marketing goods that incorporate trade secrets used unlawfully.

The Act goes even further, also establishing a liability regime which could be qualified as being “ultra-objective”, according to which even a bona fide third party is considered liable, although liability is diminished when compared with the cases described above.

Therefore, the Act calls for the utmost diligence from companies when receiving or passing on trade secrets, ensuring that no information acquired unlawfully is handled so as to avoid incurring any penalty.

  The second part of this article is available here  

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

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

Myanmar: first to file trademark system

Source: Wikipedia

On 31 January 2019, the new Trademark Law was enacted in the Republic of the Union of Myanmar (hereinafter, “Myanmar”). The framework of the new Law is based on a first-to-file system for registration of trademarks and, therefore, the first to secure registration will be the first to obtain trademark rights in the country.

Myanmar has not had a specific trademark law until now. Instead, trademark owners could take precautionary measures to protect themselves against potential infringement and for purposes of evidence of rights. The measures generally consisted of recording a Declaration of Ownership (DTO) in an official register, which was followed by the publication of a Cautionary Notice in a local newspaper. It was recommended to adopt precautionary measures approximately every 3 years.

The new Law has not yet entered into force and further steps are pending on a legislative, organizational, administrative and structural level, including the establishment of the Intellectual Property Office. Therefore, it is not yet possible to file trademark applications and it is not clear how long it will be until the Office is operational. No official fees have been set nor is it known if the registration system will multiclass or a one class system. There are still important issues to be clarified.

Nevertheless, in view of this new opportunity provided by the new Law, trademark owners with interests in Myanmar ought to begin reviewing their portfolios and taking the appropriate strategic decisions with regard to the protection of their marks, with a view to trying to obtain a filing date as soon as the Intellectual Property Office is up and running.

It is important to keep in mind that according to our sources, it is highly likely that there will be NO Sunrise Period and that previous recordals of DTOs will not be taken into account. Consequently, trademark owners who have previously adopted precautionary measures and have DTOs on record, will not be able to benefit from the earlier protection obtained, and in order to protect their marks, they will have to file new trademark applications at the Myanmar IPO under the new Law.

As for trademark owners who have never obtained protection for their marks in Myanmar and now wish to do so, they should begin taking the pertinent decisions and making enquiries regarding the necessary preparations.

It is very important to bear in mind that Myanmar does not have any consular representation in Spain and that documents such as, for example, powers of attorney and authorizations required for steps to be taken at the new Intellectual Property Office, will have to be authenticated by the consular representation of Myanmar in another country, which may entail considerable delays. As far as Spain is concerned, the nearest Myanmar consular representation is in Paris, France.

In case it may be of interest to you, we are attaching a link to information: “Myanmar: Upcoming opening, in January 2020, of a “Soft Opening” period for owners of trademarks recorded at the Office of Registration of Deeds”.

Author: Cristina Arroyo

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

New IP Court in China

On 26 October 2018, the Standing Committee of China’s National People’s Congress issued a decision to establish a new IP Court of Appeal at the national level within the Supreme People’s Court, operational from 1 January 2019.

The so-called SPC IP Court (Intellectual Property Court of the Supreme People’s Court) located in Beijing handles, principally but not exclusively, appeals in patent and technology cases.

TheSPC IP Court’s jurisdiction encompasses two types of patent cases:

  • appeals against judgments declaring infringement or non-infringement issued by courts of first instance nationwide, including the three specialized IP courts in Beijing, Shanghai and Guangzhou, the 16 intermediate courts with specialized IP sections and other intermediate courts with jurisdiction over patent cases; and
  • appeals against administrative judgments issued by the Beijing IP Court on patent validity or rejection of patent applications.

Understanding China’s timeline of development concerning IP provides a clearer overview with regard to this latest step. In 2008, China announced its National IP Strategy, which seeks to promote and protect IP creations with the goal of centralizing patent litigations. Then in 2014, specialized IP Courts were established in the key cities of Beijing, Shanghai and Guangzhou. Four more followed in 2017 in Nanjing, Suzhou, Chengdu, and Wuhan. Establishing a national IP appeal court has been a frequent topic of debate in China since the establishment of specialized IP courts in 2014.

Under the previous legal system, patent and technology-related cases were generally handled initially by the intermediate courts or specialized IP courts and appealed to the high courts of the different provinces, which led to splits on different patent law issues due to a variety of reasons, such as, unbalanced development in different regions, lack of expertise, diverging interpretations of the laws and regulations, or local protectionism.

It is also important to consider that legal and technical issues relating to patents and technology are often complex and require the judge to have a high level of expertise. The new SPC IP Court will be composed of judges who possess appropriate experience and knowledge of handling patent cases involving technology. Accordingly, the establishment of the new SPC IP Court will improve the quality of decision-making and act as a guide for first instance courts in technology-related cases.

As a result, the new SPC IP Court will contribute towards facilitating a more practical and international business environment and, thus, it is hoped that more foreign companies will feel encouraged to litigate in China to enforce their patents.

Finally, turning to the statement by the National People’s Congress, these changes are intended to “unify the standards of IP cases, further strengthen the judicial protection of intellectual property rights, optimize the environment for scientific and technological innovation, and accelerate the implementation of the development strategy driven by innovation.”

Author: Ruth Sánchez
Visit our website: http://www.elzaburu.es/en

ELZABURU in motion

On 14 January, certain amendments to the Trademark Act, Act No. 17/2001 of 7 December 2001 entered into force. The reform was carried out by means of Royal Decree-Law No. 23/2018 of 21 December 2018, which not only transposes provisions concerning trademarks to the Spanish legal system, but also provisions in areas as far removed from IP as rail transport, package tours and related travel services.

While the Royal Decree-Law has not yet been ratified (in fact, the legally established period of 30 working days has not yet elapsed), a significant proportion of the provisions amending the Trademark Act have already entered into force. One of them refers to the definition of a trademark. Now a trademark may consist of any sign capable of being represented in any manner which makes it possible to determine the clear and precise subject matter of the protection afforded. As has been the case for the past two years under the European Union trademark system, it is now possible to register signs that were not previously eligible for registration, such as multimedia marks or motion marks.

With this in mind, Elzaburu, a specialized industrial and intellectual property law firm, has filed the first application to register a motion mark at the Spanish Patent and Trademark Office. The application has been filed for its legal tech project, a collaborative platform developed by the firm for intellectual and industrial property management. The platform, called ElzaCloud is already a reality.

Elzaburu has set the wheels in motion not only by launching the ElzaCloud legal tech platform, but also by filing, under the new legal framework, the first application for the registration of a motion mark in Spain. Welcome ElzaCloud and welcome motion marks!

Author: Luis Baz

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

Small steps in the modernization of the Madrid System: Division of international marks

On 1 February 2019 new rules are scheduled to be added to the Common Regulations under the Madrid Agreement concerning the International Registration of Marks and the Protocol Relating to that Agreement. The new rules will be accompanied by new fees.

The Madrid System already provided for the possibility to transform international registrations as a possible strategy for the continued prosecution of the part of a mark not affected by a given obstacle. However, in addition to being a complex procedure, transformation does not produce the same effects or serve the same purpose as the division of a mark, and it is not the same thing in legal terms.

Therefore, these new provisions may be very useful as an alternative procedure in cases where it may be convenient to separate a designated Contracting Party of an international mark.

The new Rule 27bis, item 7.7 of the Common Regulations will establish a provision, when it enters into force on 1 February 2019, for requesting the division of an international registration in respect of a designated Contracting Party.

The procedure for division of an international mark explained in 9 simple steps:

  1. The request for division must be filed with the Office of the designated Contracting Party in respect of which the international registration is to be divided.
  2. To this end, a new form has been established (MM22), which will be the form that must be used for this purpose.
  3. The division request is subject to the payment of 177 Swiss francs to the International Bureau of WIPO. The Offices of the Contracting Parties may in any case reserve the right to charge their own fees for this procedure.
  4. The Office in question may examine the request for division to ensure that it conforms to the locally applicable legislation. If the outcome of said examination is positive, the application will be passed to WIPO.
  5. The Office where the request for division of an international mark is filed may also include, together with the request, a statement of interim status of the mark (Rule 18bis) or a statement of grant of protection (Rule 18ter).
  6. WIPO will examine the request for division on the basis of the requirements of Rule 27bis and notify any irregularity to the Office which presented the request while also notifying the owner of the mark.
  7. The request for division will be deemed abandoned if the Office in question does not remedy the irregularity within a term of three months from the date of its notification.
  8. WIPO will record the division of the international registration in respect of a designated Contracting Party when the request for division meets the requirements of Rule 27bis. The date of recordal of the division will be the date on which WIPO received the request or, in the event of an irregularity, the date on which it was remedied.
  9. WIPO will create a divisional international registration for the goods and services specified in the request, with the Contracting Party concerned as the sole designated Contracting Party.
Author: Cristina Arroyo

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



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