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ELZABURU opens new office at Torre Juana OST (Alicante) and joins 1.070 KM Hub

ELZABURU has opened a new office at Torre Juana OST (Alicante) and joined 1.070 KM Hub, the platform aiming to connect innovators in the southern Mediterranean region.

1.070 KM Hub is an initiative to boost the competitive edge of leading digital players in the “Mediterranean arc”, creating synergies and helping participants to expand their activities internationally. The platform has specialized digitization hubs in seven Mediterranean provinces: Mallorca, Castellón, Valencia, Málaga, Murcia, Ceuta and Alicante, the hub that ELZABURU has joined with a view to participating in major projects relating to IP and legislation on data management and data protection, among other areas.

Coinciding with joining the platform, ELZABURU has opened a new office at Torre Juana OST, a collaborative space for talent where 1.070 KM Hub and 1 Million Bot, a company specializing in Artificial Intelligence (AI) that operates in the field of chatbots and related data, are based.

 

Representing the firm at the inauguration event were Mabel Klimt, Managing Partner of ELZABURU and head of the Media & Entertainment Department, Javier Fernández-Lasquetty, partner in the Legal & Business Department, Manuel Mínguez, head of the firm’s Valencia office, and Manuel Desantes, Of Counsel of ELZABURU. Present on behalf of Torre Juana and 1 Million Bot was founder and president, Andrés Pedreño, as well as other members of the group’s senior management.

1 Million Bot and ELZABURU have worked together previously on the development of ElzaBot, one of the first chatbots created in the legal field in Spain, which is considered a benchmark in artificial intelligence applications in the legal sector.

Mabel Klimt, Managing Partner of ELZABURU, gave her assessment of this partnership: “with the opening of this office and with the support of these prestigious partners, we intend to continue working together on shared Data projects and exploring the opportunities offered by AI and process automation in the legal sector, as well as protecting the results of research and new business developments in these areas”.

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Antonio Tavira, new President of ELZABURU

Antonio Tavira junto al nuevo logo de ELZABURU

ELZABURU embarks on a new chapter, ready to maintain its leading position in the field of IP

Antonio Tavira has been appointed President of ELZABURU, a position that he will hold in addition to that of Managing Partner, which he has held since 2009. The position became vacant following the passing of Alberto Elzaburu in April of this year.

He has degrees in Law (Comillas University) and Business Studies (ICADE, Madrid), as well as a Master’s degree in Business Administration (IESE Business School, University of Navarra), and also holds positions in institutions and associations in the legal and IP fields, such as ASIPI, ECTA and AIPPI.

Antonio Tavira next to the ELZABURU logo  

Antonio Tavira knows ELZABURU very well. He began working at the firm in 1998, and has forged a brilliant professional career, leading the transformation from a family firm with over 150 years of history to a modern firm specializing in IP and IT law. “ELZABURU has evolved from a family firm structure to a partnership model, and this transformation was supported and driven at all times by our dear Alberto de Elzaburu, an extremely important figure in the history of industrial property in Spain and worldwide”.

The firm, which was established in 1865, has renewed its corporate image this year, adopting a new corporate identity that reflects its commitment to adapt to the new demands of a marketplace that is subject to constant technological and social change. “We have successfully transformed from the traditional image of a trademark and patent agency, expanding our services to a diverse range of fields, such as artificial intelligence, data protection and trade secrets, anti-counterfeiting, valuation of intangible assets, and management of audiovisual projects, while also implementing new technological tools”.

Thanks to this technological renewal, the firm has been well positioned to respond positively to the upheaval caused by the pandemic: “From a technological standpoint, we are at the cutting edge in legaltech with tools such as “Elzacloud”, a platform which enables our clients to interact online in the management of their portfolios and which has played a key role over these months of lockdown and teleworking. We also have our own “chatbot”, which is capable of answering many questions and helps to filter initial enquiries from visitors to our website”.

How has the situation caused by the coronavirus affected the firm and how will this financial year look in terms of results?

Fortunately, our firm was well prepared and thanks to Elzacloud and other technological tools, our more than 160 employees have been able to continue working at full capacity from the first day of the state of alarm, without any adverse impact on our services. However, we have naturally been concerned by the delicate situation faced by many of our clients in a range of different sectors: tourism, restaurants, retail, audiovisual productions, industry, etc. This economic crisis will inevitably also affect law firms, although we have continued to have intense business activity, but we will logically notice an impact on our turnover at the end of the year.

It is too early to know how the year will end with regard to results, but there can be no doubt that we will have to tighten our belts. However, our business is highly diversified in terms of clients. In fact, we work for one in three of the IBEX-35 companies and, moreover, a significant proportion of our earnings comes from international business. Therefore, we hope to be able to close a difficult year with reasonable results.

What are Elzaburu’s clients seeking in terms of trademark protection in the midst of the coronavirus pandemic?

On the one hand, we have to ensure maximum protection for our clients’ portfolios, with the economic reality in mind, which requires us to be extremely efficient with top-level professional advice. It is essential to have an in-depth knowledge of our clients, who are the core of our business.

Moreover, one of the higher demand areas over the past few months has been cybersecurity. These months of lockdown have seen an increase in online intellectual property infringements. We have therefore expanded our monitoring services with a technological platform which, by means of big data processes and machine learning, as well as agreements with Google and social networks, enables us to detect and swiftly eliminate counterfeits and improper use of trademarks and thus protect our clients’ intangible assets.

How do you see the future economic outlook given the current situation?

It is clear that financial structures have to be strengthened in order to deal with all possible contingencies that the pandemic will bring. We will all also have to adapt to a new working model in which teleworking will play a key role. Any cost reductions and savings that we are able to make will be crucial. These are difficult times, and our objective is to ensure that we have sufficient financial muscle to withstand this period of uncertainty.

Companies will have to show responsibility, in the knowledge that society needs our help. CSR will therefore play a very important role in this new world that is taking shape. Only companies that are socially responsible will be able to survive: companies which are able to show solidarity with their clients; companies which contribute to society to help overcome this crisis. We have long been aware that we all have to work together to build a more sustainable world. Recently, together with more than 1,000 other CEOs from across the world, I signed the Statement for Renewed Global Cooperation of the UN Global Compact in support of institutions to guarantee peace and eradicate inequality.

I think that difficult times lie ahead and that there will be suffering, but I am sure that if companies and institutions demonstrate social responsibility, we will be able to overcome this crisis and create a better world for all.

ELZABURU signs the Statement for Renewed Global Cooperation of the UN Global Compact

ELZABURU signs the Statement for Renewed Global Cooperation of the UN Global Compact

Antonio Tavira, as the chief executive of ELZABURU, is one of the more than 1,000 CEOs, representing the world’s most important companies, who have signed the Statement from Business Leaders for Renewed Global Cooperation of the United Nations Global Compact.

In these disruptive and uncertain times, this is a statement endorsing inclusive multilateralism, in which the world’s most important companies express their support for institutions to guarantee peace, justice and good governance, eradicate inequality and contribute towards creating a better and more sustainable world.

ELZABURU signs the Statement for Renewed Global Cooperation of the UN Global Compact  

As Antonio Tavira explains, “our firm, with a history of over 155 years and an extensive international track record, has a responsibility to join this campaign promoted by the UN Global Compact, and to reaffirm our commitment to fostering sound corporate governance so that this renewed cooperation extends across borders, sectors and generations, helping us to overcome the crisis caused by the pandemic”.

ELZABURU is a socially responsible company that promotes the sustainable development of our firm’s business and operates on the basis of social, economic and environmental policies that contribute towards achieving the Sustainable Development Goals promoted by the UN through the Global Compact launched in 2000.

This statement in support of renewed global cooperation has been signed by the CEOs of more than 1,000 of the world’s most important companies, which include 183 Spanish companies, representing 17% of the total. The initiative coincides with the 75th anniversary of the United Nations, celebrated at a time of unprecedented global transformation, underlining the need to mobilize to show that public and private institutions are united in their support for the United Nations and inclusive multilateralism.

 

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Annual Review ELZABURU 2019

Annual Review ELZABURU 2019

Following a delay caused by the lockdown situation in Spain as a result of the global pandemic, but with the usual sense of pride, we present to our clients, friends and colleagues the ninth edition of ELZABURU’s Annual Review of European case-law in the field of industrial and intellectual property.

Annual Review ELZABURU 2019  

When the Annual Review was in print, our Firm was grieving the passing of its President, Alberto Elzaburu, who proudly presented the earlier editions. We wish to dedicate this edition to him, with the photograph displayed in this Annual Review.

Our regular readers will note that this edition reflects ELZABURU’s change of corporate image, which symbolises the Firm’s vocation for adapting to the new demands of a marketplace that is subject to constant technological and social change.

On this occasion, the Annual Review includes 31 articles on rulings by the Court of Justice of the European Union, the Spanish Supreme Court, the European Union Trade Mark Court in Alicante, and Spain’s Provincial Courts of Appeal. This is all made possible by the selfless and enthusiastic participation of a large number of the Firm’s professionals, to whom we would like to express our sincere gratitude.

We hope that those interested in legal developments in Europe in the field of industrial and intellectual property will enjoy this simple and impartial analysis.

 

Annual Review in PDF format

Annual Review in e-book format

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CJEU ruling: Is it possible to seek compensation for damages in respect of infringement of a trademark that has never been used?

licor st germain

On 26 March, prior to the changes made to its operational arrangements due to the COVID-19 crisis, the Court of Justice of the European Union issued an interesting judgment (in case C-622/18) with regard to claiming compensation for damages in respect of infringement of a trademark when the trademark has been revoked on grounds of non-use.

The judgment was in response to a request for a preliminary ruling made by the French Court of Cassation in relation to an action for infringement of the French trademark SAINT GERMAIN covering alcoholic beverages, brought by the owner of the mark against companies that were producing and distributing a liqueur under the name “St-Germain”. In parallel proceedings, the mark had been revoked on grounds of non-use, but the complainant maintained its damages claim for the earlier period not covered by the revocation.

 

licor st germain

 

Under French law, the effects of the declaration of revocation are regulated in the following terms: “the rights of a trademark proprietor who, without proper reason, has not made genuine use of those rights in respect of the goods and services referred to in the registration during an uninterrupted period of five years, shall be revoked. Revocation shall take effect on the date of expiry of the five-year period laid down in the first paragraph of this article. It shall have absolute effect”.

The question therefore arises as to whether the owner of a trademark who has never used it and whose rights in the same have been revoked on expiry of the legally established five-year period, may claim that the essential function of his or her trademark has been affected and, consequently, seek compensation for damage sustained as a result of the use by a third party of an identical or similar sign during the five-year period following registration of the mark.

In its ruling, the CJEU points out that the Harmonisation Directive states that the Member States should remain free to determine the effects of revocation. Consequently, a national law which establishes the dies a quo from the date of expiry of the five-year period without use, is not contrary to EU law. If this is the case, there is nothing to prevent the filing of an action for infringement of trademark rights with the corresponding claim for damages, if permitted under national legislation. However, one significant detail should be noted in this regard.

With regard to the award of damages, the Court points out that Directive 2004/48 stipulates that the compensation must be “appropriate to the actual prejudice suffered by [the proprietor of the trademark] as a result of the infringement”. Although the fact that a trademark has not been used does not, in itself, preclude compensation for acts constituting trademark infringement, it remains an important factor to be taken into account in determining the existence and, as the case may be, the extent of the damage sustained by the owner and, therefore, the amount of damages that the owner may claim.

As for the consequences of this judgment in Spain, it should be noted that the effects of the revocation of trademarks are regulated as follows under Article 60 of the Spanish Trademark Act: “A registered trademark shall be deemed not to have had, as from the date of the application for revocation or the counterclaim, the effects specified in this Act, to the extent that the owner’s rights have been revoked. An earlier date, on which one of the grounds for revocation occurred, may be set in the decision on the application or claim for revocation at the request of one of the parties”. This provision of Spanish law essentially reproduces the provisions of Article 62 of Regulation (EU) 2017/1001, and therefore the situation for European Union trademarks is the same.

Therefore, if requested by the party seeking revocation, in Spain it is also possible for the declaration of revocation to be made effective retroactively from the date of expiry of the five-year period of non-use of the mark. Nevertheless, the owner of the mark could claim compensation for damage sustained if the infringement of his or her trademark occurred in a period not covered by the effects of the revocation. However, it remains to be seen what amount of compensation will be determined by the Spanish courts in such cases.

 

Author: Carlos Morán

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