ELZABURU Blog - Industrial and Intellectual Property

Tag Archives: Community designs

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 court hotline has been set up for MOBILE WORLD CONGRESS 2019 in Barcelona

The Mercantile Courts of Barcelona have now disclosed the Duty Service and Fast-Action Protocol adopted on 13 December for MOBILE WORLD CONGRESS 2019. This is the fifth year running the Courts of Barcelona provide coverage for this important international forum, enabling the adoption of preliminary injunctions and the handling of preventive briefs under the most urgent conditions. The Protocol brings several important developments with it this year.

For the first time, the Protocol is agreed jointly by the Mercantile Court of Barcelona and the European Union Trade Mark Court in Alicante. In this way, the Protocol will not only be effective regarding patent infringements, but also for cases of infringement of European Union Trade Marks and Designs. Any preliminary injunction adopted by the Court of Alicante within this context may be enforced by the Courts of Barcelona while the Congress is being held.

The Protocol will be in force throughout February, in particular during the days the event is held (25-28 February). The commitment of the courts is to process and decide on the petitions for urgent preliminary injunctions within a period of 2 days (without a hearing for the defendant) or of 10 days (with a previous hearing being held) in terms of whether a preventive brief was previously filed.

Furthermore, the Protocol also proposes a guideline is followed to evaluate the risk factor that justifies measures are taken without a hearing for the defendant. For such purpose, both the previous behaviour of the complainant and the reaction speed to any knowledge on an eventual infringement will be decisive. The Protocol places emphasis on the fact that “it will be important to have submitted a petition for urgent preliminary injunctions sufficiently in advance for this, in good faith, not to reasonably prevent a hearing for the defendant, whenever the owner of the allegedly infringed right knew about the possible infringement beforehand and was able to file his petition in good time”.

These provisions of the Protocol encourage companies participating in MWC to weigh out and put in place as soon as possible their defensive or preventive strategies to guarantee their position. It should be borne in mind that 35 actions were carried out by judges in Barcelona regarding MWC 2018, 7 of these consisting of preliminary injunctions without a hearing for the defendants that were aimed at removing products on exhibition in the stands.

Author: Enrique Armijo

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

Fashion Law. Design protection in the fashion sector (II)

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:

Design protection in the fashion sector.

If there is a word that is inextricably linked with the world of fashion, it is “design”.

The second chapter looks at industrial designs from the legal standpoint, as an appropriate form of industrial property for protection of creations in the fashion sector and as a sort of formal innovation in reference to the features of a product’s appearance per se or its ornamentation.

A brief introduction sets out the legal concept of a “design”, the requirements for protection and the content of the right in the registered design.

It goes on to provide a practical and concise outline of the possible strategies for design protection that a company in the fashion sector can adopt, with reference to the different instruments of protection available under the current legal framework, particularly the concepts of registered and unregistered designs, grace period and deferment of publication, and to how a company in the fashion sector can make use of these concepts in each situation.

Given the increasingly globalised world in which we live, there is naturally a section that deals with the territorial extension of protection of designs and possible strategies for internationalization, focusing in particular on the supranational systems for protection, such as the Community design at the EUIPO and the international design at WIPO, setting out their advantages.

The chapter also touches on the relationship between industrial designs and copyright in the field of fashion. In theory, these two types of protection are accumulative in some cases if the design in question is held to possess the sufficient degree of originality and creativity to be protected as an artistic work. However, many creations in the world of fashion are for goods destined for mass consumption and industrial production, which are unlikely to be classed as artistic works.

The chapter concludes with a section setting out real cases, some of which are certainly unusual, relating to industrial designs in the fashion sector, which the author of the chapter has come across in his years of practice in the field of industrial designs and wanted to share with readers.


Authors: Pedro Saturio 

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)

The European Commission presents its Draft Withdrawal Agreement on the withdrawal of the United Kingdom – Brexit

In a bid for complete transparency, this past 28 February 2018 the Commission, in phase 2 of the negotiating process, made public its Draft Withdrawal Agreement for the countries of the European Union, setting out its proposals for solutions to the inevitable consequences Brexit will bring. Title IV of the Draft deals with Intellectual Property rights, including not just trade marks but also designs, plant variety rights, geographical indications, and designations of origin.

The Commission’s proposal is that the owners of rights registered in the European Union before the end of the transition period should automatically own those same rights in the United Kingdom without having to apply for registration in Britain, without being subject to examination by the British Authorities, and without having to pay for protection of their rights.

In its turn, in a letter sent to the British Government last December 2017, British Intellectual Property practitioners asked the Government to ensure continuity of the protection conferred by the European-wide intellectual property system, in which the United Kingdom has been an active participant, since it is regarded as one of the linchpins for being able to carry on normal business operations.

The position and interests of British practitioners thus appears to converge with the Commission’s proposal in respect of intellectual property rights. The position taken by the British Government remains to be seen.

One of the main stumbling blocks that has arisen in this phase of the negotiations between the Commission and the British Government to draw up a common text for the Withdrawal Agreement is setting a date for the end of the transition period. In its draft released in February, the Commission proposed a final date of 31 December 2020, that is, 21 months after the date set for Brexit, which is 29 March 2019. The British Government considers two years to be a suitable time period but does not want to commit to a hard date and proposes remaining in the single market and Customs Union as long as necessary.

The issue of the end of the transition period is to be discussed at the next meeting of European leaders, scheduled to take place in Brussels at the end of March. Judging from recent statements made by certain authorities, the position of the Government of Spain on this issue is the same as the Commission’s. It sees little point for either the European Union or the United Kingdom in keeping the UK in a system that it would have to continue funding even though it would not be able to take part in decision-making, since it would no longer be present in the institutions of the European Union.

The Member States have displayed unity and consensus during this process of withdrawal by the United Kingdom from the European Union, and they have taken a positive, constructive stance in seeking solutions that do not punish the United Kingdom but instead lay the groundwork for future relations with the UK when the transition period has ended and it ceases to be an EU Member State.

Still, the possibility that the negotiations may fail cannot be ruled out. In this respect, at the same time as it has been drawing up a draft text as a basis for agreement, the Commission has also taken this into account and warned the various economic operators of the possible repercussions that would ensue from a failure to reach agreement.

Spanish companies should therefore be aware that there is a risk that their trade mark rights could cease to have effect in the United Kingdom on 29 March 2019, and for this reason, at least for those companies interested in the British market, it could make sense for them to register their brands as national marks in the United Kingdom, even though their marks have already been registered with EUIPO as EU marks.

We should therefore keep an eye on developments in the negotiations between the Commission and the British Government. The Commission has done its homework and has published its draft Withdrawal Agreement. The ball is now in the British Government’s court.


Author: Catherine Bonzom

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How to determine whether design features are solely dictated by their technical function

In its recent judgment C-395/16 of 8 March 2018, DOCERAM vs. CeramTec, the Court of Justice addressed the controversial issue of the bar against registering a shape dictated solely by its technical function as a Community design. Article 8(1) of Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community Designs (CDR) sets out this bar to registration in those terms. As stated in Recital 10 of that Regulation, its purpose is to prevent the grant of exclusive rights to the owner of an industrial design from interfering with technological innovation.

However, to date, interpretation of that Article by the national courts and by the EUIPO has not been uniform. Basically, two different approaches have coexisted side by side.

  1. On the one hand, there is the so-called multiplicity of forms approach, which holds that if there are different alternative forms of an object performing the same technical function, the design in question cannot be regarded as being dictated solely by its function. This criterion has been followed by the courts of various countries, France, Germany, and Spain among them.
  2. In recent decisions, however, the EUIPO has taken a different approach, which holds that what needs to be examined is whether the designer selected the design features based solely on their functionality or based on other considerations as well. Furthermore, this point is to be assessed from the standpoint of a reasonable, objective observer.

To date the CJEU has not had occasion to issue any ruling on this subject. The occasion has now arisen subsequent to a request for a preliminary ruling submitted by the Oberlandesgericht Düsseldorf in proceedings between the German companies DOCERAM GmbH and CeramTec GmbH. The former company owns several Community design registrations covering the shape of ceramic centring pins used with welding machines to hold the pieces to be welded in position.

In response to infringement proceedings brought based on those registrations, CeramTec GmbH counterclaimed seeking a declaration of invalidity on grounds that the designs were barred under Article 8(1) CDR. The counterclaim was successful, and DOCERAM appealed, contending that there were other, alternative forms that fulfil the same technical function for the product in question. At that point, the Düsseldorf court referred its questions to the CJEU for a preliminary ruling as to which criterion should be employed in assessing the bar to registration.

It turns out that the Court of Justice has rejected the multiplicity of forms doctrine. In its view, it does not follow either from Article 8(1) of the CDR or from any other provision of the Regulation that multiplicity of forms is the only criterion for determining application of the Article. Following the Advocate General’s opinion, the Court further ruled that applying this criterion would enable an operator who has registered various alternative forms fulfilling the same technical function to obtain, in practice, exclusive protection equivalent to patent protection without having to meet the requirements of a patent.

Therefore, the CJEU has taken the alternative approach, holding that what has to be considered is whether, when choosing the features of appearance of a product, considerations other than the need for it to fulfil its technical function, in particular those related to its visual aspect, have been taken into account. Thus, the Court concluded that for the bar to registration in Article 8(1) CDR to apply, a product’s technical function must be the only factor that has determined the features of the product’s appearance, the existence of other, alternative designs being irrelevant in that connection.

On the other hand, in its reply to the second question raised by the Oberlandesgericht Düsseldorf, the Court ruled that assessment of that point does not have to be based on the perception of an “objective observer”.

Instead, again following the opinion of the Advocate General, the Court has held that, in their assessments, the national courts need not base their findings on the perception of an “objective observer” but must take account of all the circumstances relevant to the case. The factors to be taken into account include, in particular, the design in question, the objective circumstances informing the choice of the features of appearance of the product, information on its use, and even the existence of alternative designs that fulfil the same technical function.

Clearly, the criteria set by the Court of Justice in this judgment do not particularly simplify the work of the national courts. This question of technical function will doubtless continue to be a significant source of controversy in proceedings dealing with the infringement and invalidity of industrial designs.

  Author: Carlos Morán

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