ELZABURU Blog - Industrial and Intellectual Property

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Rwanda: New deadline date for renewal of trademarks filed before the entry into force of the Law of 26 October 2009

The Rwandan Trademark Law of 26 October 2009 entered into force some time ago, in December of that same year.

However, the Trademark Office has now finally clarified the date by which trademarks filed before the entry into force of the Law must be renewed, in line with new legal provisions.

There has been some confusion concerning that date, given that in principle, the Trademark Office set 26 October 2019 as the deadline for renewal of these trademarks that were pending registration when the new Law entered into force. Rwanda’s Trademark Office has now confirmed that the date by which all of the affected trademarks must be renewed is 14 December 2019.

While Rwanda is not a country that is often included in the internationalization projects of Spanish companies and trademark owners, we are working together with our local associates in order to ensure that all affected cases are resolved by the date set by the Trademark Office.

Author: Cristina Arroyo 

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

 

Fashion Law. Corporate reputation in the fashion sector (IX)

ELZABURU has had the pleasure of working together with the publisher Thomson-Reuters Aranzadi on Fashion Law, a pioneering work in Spain on the subject of fashion law, which was presented on 16 April.

In these short weekly summaries, the professionals at ELZABURU who participated in the work offer us a brief outline of their contributions:

Corporate reputation

Corporate reputation could be likened to the concept of prestige or fame and defined as the image or perception that both the general public and the fashion company’s customers, as well as the company itself, have of the company.

If we consider that the decision-making process of consumers is no longer governed by objective factors such as the quality of materials or the price of a product but by the values and experiences transmitted by brands (e.g., modernity, design, etc.), we can conclude that corporate reputation is a valuable asset for a company, which has an influence on the value and price of that company’s products in the marketplace.

The reputation of fashion companies and brands is the result of a carefully devised communication strategy, creating and maintaining value for the brand beyond the product, and recognition of the brand in the marketplace (by existing or potential consumers, competitors, the general public).

The following are generally the cornerstones of this strategy:

  • Creating and maintaining a reputation in the fashion market, by selecting a niche in the market and working on positioning.
  • Designing communication policies and developing marketing initiatives.
  • Implementation of policies for management of any potential reputation crisis.

For when such actions prove to be insufficient, fashion companies and brands need to be familiar with the regulatory framework which guarantees legal protection of their reputation and establish a plan of action against any unlawful attack against the same, from a communication and legal standpoint.

The options offered by the legal system may by divided into two areas: civil and criminal.

1.Civil

Within the first area, there are two options depending on the legal asset affected: protection of the right to honour and unfair competition.

Provision for the protection of the right to honour is made in Organic Act No. 1/1982 of 5 May 1982, affording civil protection to the right to honour, personal and family privacy, and one’s own likeness. This right is recognized in respect of legal persons in the references to “good name” or “reputation”.

Moreover, the Unfair Competition Act, Act No. 3/1991 of 10 January 1991, aims to ensure the proper functioning of the market and punish acts of unfair competition in the marketplace. Attacks against the reputation of a fashion company can sometimes fall within the category of unfair conduct (e.g., acts of denigration), and the company can seek to protect its rights through this option.

Additionally, it is important to consider the right of rectification, as regulated by Act No. 2/1984, which permits a (natural or legal) person to “correct information on facts related to him broadcasted by the mass media, which he considers untrue and the dissemination of which may cause him damage”.

2. Criminal

Finally, when the attacks against the fashion company’s or fashion brand’s reputation are particularly serious, protection may be sought under criminal law.

Specifically, if the act against the corporate reputation of the fashion company or brand consists of an action or expression which is harmful to its dignity, damages its reputation or undermines its self-esteem, it could constitute insult or defamation, as regulated by Articles 208 to 210 of the Criminal Code.

If said act consists of accusations of having committed an offence, made in the knowledge that they are false or display a reckless disregard for the truth, it could be considered false accusation of an offence, as regulated by Articles 205 to 207.

Author: Alba María López

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

Blog entries in the series Fashion Law:

1.Trademark protection in the fashion sector (23.04.2018)

2.Design protection in the fashion sector (30.04.2018)

3.Patent protection in the fashion sector (07.05.2018)

4.Protection of fashion through copyright (21.05.2018)

5. Image rights in the fashion sector (28.05.2018)

6.Fashion Law. Data Fashion (04.06.2018)

7.Counterfeiting in the fashion sector (11.06.2018)

8.Exhaustion of rights in the fashion sector (18.06.2018)

9.Corporate reputation in the fashion sector (25.06.2018)

10. Protection of the commercial imagen of a fashion brand (04.07.2018)

11. Websites, Apps & Social Networks (13.07.2018)

12. Valuation of intangible assets (17.07.2018)

13. Licensing (06.09.2018)

Fashion Law. Exhaustion of rights in the fashion sector (VIII)

ELZABURU has had the pleasure of working together with the publisher Thomson-Reuters Aranzadi on Fashion Law, a pioneering work in Spain on the subject of fashion law, which was presented on 16 April.

In these short weekly summaries, the professionals at ELZABURU who participated in the work offer us a brief outline of their contributions:

  Exhaustion of rights in the fashion sector

The importance of brands in sectors like the fashion industry is incontrovertible; not only do they act as a guarantee for consumers, if properly managed, they can also create great commercial value for their owners.

Nevertheless, prohibiting their use by third parties, the cornerstone of trade mark law, could, if taken to its logical conclusion and applied unrestrictedly, contravene such Community principles as the free circulation of goods and freedom of competition.

Exhaustion of intellectual property rights has thus arisen as a means of mitigating the strict-case scenario and involves limiting the right to prohibit imports and sales of products once they have been placed on the market in a given jurisdiction.

The chapter deals with the most relevant Community case law on this subject, tracing its regulatory history from the early stages of the concept to its boundaries and exceptions in the present day.

Applying the concept of exhaustion gives rise to a series of features that play a key role in the fashion sector, and the chapter thus compiles the findings reached by the courts as a basis for considering the selective distribution systems so commonly used for such products as perfumes and luxury goods, examining the requirements that exceptions to the principle of exhaustion need to fulfil along with how this principle applies in practice.

Another common feature of this sector is the grey market, or parallel trade, which seeks to benefit from price fluctuations for a given product in different countries. The chapter addresses the key factors for this type of trade, such as the operators taking part, the indicators that can be used to ascertain whether or not exhaustion has occurred, and the different approaches used for intra-Community and extra-Community channels.

The advent of the Internet has been a disruptive factor for commercial distribution. Today, not selling a product on-line, where consumers can buy it with just a few clicks, is simply inconceivable.

The rise of the Information Society has elicited no few legal challenges in connection with the doctrine of exhaustion on the web.

On the one hand, these new vistas have facilitated parallel imports by lowering marketing costs and extending the reach of trading activity. On the other, the ubiquitous nature of the Internet poses a challenge when it comes to deciding whether or not rights have been exhausted in a given case.

As a final touch in closing, the chapter addresses control measures and safeguards against parallel trade in goods, reviewing the most helpful measures that can be taken to counter it when it does occur and has been carefully analysed.

Author: Fernando Díaz 

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

Blog entries in the series Fashion Law:

1.Trademark protection in the fashion sector (23.04.2018)

2.Design protection in the fashion sector (30.04.2018)

3.Patent protection in the fashion sector (07.05.2018)

4.Protection of fashion through copyright (21.05.2018)

5. Image rights in the fashion sector (28.05.2018)

6.Fashion Law. Data Fashion (04.06.2018)

7.Counterfeiting in the fashion sector (11.06.2018)

8.Exhaustion of rights in the fashion sector (18.06.2018)

9.Corporate reputation in the fashion sector (25.06.2018)

10. Protection of the commercial imagen of a fashion brand (04.07.2018)

11. Websites, Apps & Social Networks (13.07.2018)

12. Valuation of intangible assets (17.07.2018)

13. Licensing (06.09.2018)

Fashion Law: Counterfeiting in the fashion sector (VII)

ELZABURU has had the pleasure of working together with the publisher Thomson-Reuters Aranzadi on Fashion Law, a pioneering work in Spain on the subject of fashion law, which was presented on 16 April.

In these short weekly summaries, the professionals at ELZABURU who participated in the work offer us a brief outline of their contributions:

Counterfeiting in the fashion sector

For some years now we have been witness to the ongoing integration of national economies (Spain’s included) into a single global economy. The many opportunities this opens up to producers, companies, and consumers often go hand in hand with the market’s flexibility being turned to the advantage of international criminal gangs to place illicit goods in far-away destinations.

The broad extent of crimes against intellectual property in Spain is due, in no small part, to the mild penalties these activities have traditionally elicited and to a widespread lack of awareness both by society as a whole and even by judicial authorities.

Like other production and consumption sectors, the fashion industry too has not been spared the scourge of counterfeiting.

One fashion counterfeiting statistic of great concern is that in 2015, 46 % of all goods detained by Customs in the EU were fashion-related items, more specifically, athletic shoes, handbags, purses, watches, and clothing.

In 2016 Spanish police forces seized nearly 800,000 fashion-related articles in Spain, namely, footwear, jewellery, watches, leather goods, accessories, perfumery, cosmetics, and textile goods.

Online selling has opened up to the fashion industry both a new distribution channel and a way to attract consumers, but counterfeiters have put the anonymity offered by the web, the vast numbers of potential buyers, and the multinational nature of the Internet to good use in running their criminal businesses.

A quick Internet search on “fake bags” plus the name of any luxury brand returns hundreds of thousands of hits.

This attests to the vast tendrils of counterfeiting that have broadly infiltrated fashion e-commerce, certainly posing a challenge to law enforcement and to protecting the rights of brand-owners, who bear the actual brunt of the economic impact in the form of, for instance, reduced earnings, fewer jobs, and damage to brand image and reputation.

Still, it is not all bad news in this sector. A series of reforms to the law in Spain have ushered in significant changes in the definition of offences against intellectual property that will have a positive effect on the fight against counterfeiting.

The main example of recent changes to the law is the long-awaited scaling of penalties to the severity of the conduct carried out by infringers (importing, wholesaling, street vending, etc.), which opens up the possibility of dealing with offences against industrial property more fairly and more proportionately.

Author: Tránsito Ruiz 

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

Blog entries in the series Fashion Law:

1.Trademark protection in the fashion sector (23.04.2018)

2.Design protection in the fashion sector (30.04.2018)

3.Patent protection in the fashion sector (07.05.2018)

4.Protection of fashion through copyright (21.05.2018)

5. Image rights in the fashion sector (28.05.2018)

6.Fashion Law. Data Fashion (04.06.2018)

7.Counterfeiting in the fashion sector (11.06.2018)

8.Exhaustion of rights in the fashion sector (18.06.2018)

9.Corporate reputation in the fashion sector (25.06.2018)

10. Protection of the commercial imagen of a fashion brand (04.07.2018)

11. Websites, Apps & Social Networks (13.07.2018)

12. Valuation of intangible assets (17.07.2018)

13. Licensing (06.09.2018)

Mexico. Major changes coming for trade marks

A short time ago, on 18 May 2018, Mexico’s Official Journal of the Federation published Amendments and Additions to the Industrial Property Act affecting trade marks. The Decree containing these changes will enter into force 60 days after publication, i.e., on around 10 August 2018.

Mexico is a primary landing place for Spanish companies and clients in their internationalization projects. The fact is that in recent years Mexican lawmakers and our colleagues have made huge efforts to modernize the practice of the profession and trade mark practice generally.

Broadly speaking, Mexican lawmakers would appear to have taken aim not only at updating the country’s trade mark legislation, at consolidating the barely two-year-old opposition proceedings, but also at impinging on such key trade mark law principles as “bad faith” as a bar to registering a trade mark and/or at settling uncertainties attaching to certain aspects that were highly ambiguous in practice, such as compulsory use by owners.

Firstly, and significantly, the concept of what a trade mark is has been expanded to include non-traditional marks (e.g., holograms, sound marks, and olfactory marks), collective and certification marks, and even trade dress as understood in the law of English-speaking countries, which will become registrable under the new wording of the law, though it is not referred to literally by that name.

Also, the possibility of registering generic or descriptive trade marks lacking in distinctiveness as an exception to absolute grounds for refusal is recognized where a trade mark has acquired secondary meaning through its use in the marketplace.

It will become possible to request a declaration that an unregistered trade mark is well known; before the Decree, prior registration was required.

The Mexican Institute of Industrial Property (IMPI) will begin admitting letters of consent and coexistence agreements as means of dispute resolution and settling cases where an obstacle posing a likelihood of confusion has been encountered. Nevertheless, it appears that they may not be admissible in the case of identical trade marks.

In line with practice more common in English-speaking jurisdictions and the Court of Justice of the European Union’s oft-cited “IP Translator” judgment, which has caught the eye of jurisdictions outside the EU, Mexican lawmakers have come down on the side of specific descriptions of goods and services, and hence general class headings will no longer be accepted. Taken in conjunction with the new requirement for declarations of use mentioned above, we think it will be wise to decide on an appropriate trade mark protection strategy for Mexico, generally of great importance to Spanish clients, from the very outset.

Use is the reason for being and the purpose of trade marks and what makes a trade mark a reality, and in point of fact most countries’ legislation includes a use requirement for trade marks. In this regard, one of the most relevant aspects included in the new Decree is the requirement – from entry into force of the amendments – for owners of trade mark registrations to submit Declarations of Use for their trade marks starting three years from the registration date. Our primary sources have told us that the declaration of use could be required with each renewal, in which case the question of use will become an essential component of any trade mark protection strategy in Mexico. Failure to comply with this new requirement will result in cancellation of the trade mark.

Another controversial question regarding trade mark use to date has been whether or not it is advisable to include a date of first use when filing a trade mark application in Mexico, because the trade mark application form did not in fact provide for doing so yet nonetheless constituted a sort of “tacit presumption of an intent to use declaration“. Beginning in August, anyone seeking to claim a date of first use for a trade mark filing will have to include that date on the application form itself. If a date of first use is not stated, the application may then be deemed to be a “tacit intent to use declaration”.

Coming back to the principle of “bad faith” referred to earlier, it is included in the Decree as grounds for opposition and for cancellation of a trade mark. In addition, the binding effect of oppositions has been strengthened.

From our perspective, these changes will proffer additional grounds for judgments and decisions that will help Mexico gradually increase the specialisation of the IMPI and the courts in trade mark matters.

 

Author: Cristina Arroyo 

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

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