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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with regard to claiming compensation for damages in respect of infringement of a trademark when the trademark has been revoked on grounds of non-use.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 In parallel proceedings, the mark had been revoked on grounds of non-use, but the complainant maintained its damages claim for the earlier period not covered by the revocation.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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Message regarding COVID-19

 

Dear readers,

We would like to share a few words with you on the unprecedented situation that we are currently facing and try to convey a message of hope.

Firstly, we hope that you and your families are all well. To anyone who is not well or has family members and loved ones affected, you have all our support and we send you our warmest wishes.

The most important thing right now is people’s wellbeing. The situation is proving difficult for everyone, things are happening very fast, and we must face and overcome these difficulties together and, above all, thinking of others.

On a professional level, ELZABURU was prepared for teleworking and we reacted quickly in order to remain fully operational. It is a good time to learn and adapt to this technological, virtual and collaborative environment.

Our Firm has thus been publishing statements on our website and on social networks, with information on the internal measures adopted and on the consequences of the state of alarm declared in Spain.

  • 1st Statement – ELZABURU and the state of alarm declared in Spain – [Access]
  • 2nd Statement – Procedural deadlines – Have all IP litigations in Spain come to a halt? – [Access]
  • 3rd Statement – Postal and courier deliveries – [Access]

We hope that this information will be of interest.

Warm regards to everyone,

The team at ELZABURU

 

ELZABURU, leader in the protection of intangible assets, has renewed its corporate image

ELZABURU

Elzaburu, a firm specialising in managing intangible assets, has renewed its corporate image. The new image has been designed by the Manuel Estrada design studio and symbolises the firm’s vocation for adapting to the new demands of a marketplace that is subject to constant technological and social change. Elzaburu’s new branding includes a modern typeface together with a symbol projecting upwards, representing the firm’s commitment to supporting the innovations and progress of its clients.




Elzaburu, founded 155 years ago, was Spain’s first specialised IP firm. Throughout the firm’s history, it has witnessed such milestones as the patents for the inventions of Thomas Edison, Alexander Graham Bell or Juan de la Cierva, inventor of the ‘autogyro’, as well as the registration and protection of some of the most important trademarks of multinationals from all over the world.

The firm protects and defends the IP interests of 30% of the companies in the IBEX 35, Spain’s stock market index, together with 36% of the top Fortune 500 companies. Recently, a group of Elzaburu lawyers were selected to provide advice on IP-related matters to the Chinese government, a country where the firm has an office.

Over the years, Elzaburu has evolved from its initial activities centring on the registration of patents and trademarks, becoming a firm specialised in protecting and maximising the value of all kinds of creations and intangible assets in all economic sectors, particularly in the fields of new technologies, e-commerce, entertainment, cybersecurity, data protection, domain names and trade secrets, among others.

Today the firm has a staff of 165 people, with lawyers and experts in a wide range of areas, who handle the legal defence of more than 70,000 ongoing cases for more than 3,000 clients throughout the world.



Elzaburu


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Three lawyers from ELZABURU selected to form part of a new council of experts that will advise the Chinese government on IP matters

This new year 2020, China is launching a centre called the Chinese Overseas Intellectual Property Dispute Response Guidance Centre, which aims to bring together professionals from different countries who are experts in intellectual property to provide guidance on matters relating to this field. The centre has been established by the Chinese Patent and Trademark Office (CNIPA), which is the largest Office of its kind in the world, with a workforce of more than 20,000 employees.

 

The 75 experts who now form part of this centre were selected by means of a worldwide public merit-based competition. Of the 35 foreign professionals who will be participating in this initiative, 6 are Spanish, and 3 of them are lawyers from ELZABURU: Manuel DesantesEnrique Armijo Chávarri and Colm Ahern.

The CNIPA’s aim with this initiative is to provide guidance for resolving possible conflicts relating to intellectual property: on the one hand, to safeguard the rights of Chinese entities abroad and, on the other, to gain a better understanding of the intellectual property systems and rules of overseas jurisdictions.

As Manuel Desantes explains in an interview for Confilegal, the biggest problem encountered by Chinese companies seeking to expand internationally is a lack of knowledge of different countries’ legal systems. Therefore, this advice will be essential to dispel doubts and avoid future conflicts. Moreover, thanks to the cooperation of these experts, Chinese entities will be in a better position to defend themselves in the event that any foreign company infringes their intellectual property rights.

Through the creation of new channels for obtaining and distributing information on intellectual property disputes abroad, the centre aims to establish a guidance and coordination mechanism for handling IP disputes involving Chinese companies.

As China is the world’s leading force in intellectual property, it is hoped that this project will serve as an example for other countries with regard to avoiding conflicts and disputes, thereby improving legal certainty and international commercial relations, concludes Desantes.

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

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