Tag Archives: European Union

Spain in 3rd place among the top ten EU countries regarding detention of counterfeit products at customs in 2018

Innovation and creativity are the drivers of our economy. Therefore, it is important to provide rightholders with the certainty that their inventions will be duly protected. The competitiveness of European companies depends on it.

The enforcement of intellectual and industrial property rights by European customs is a priority for the European Commission and for Member States.

The European Commission published the “Report on the EU customs enforcement of intellectual property rights: Results at the EU border 2018” on 24 September 2019. The report shows that the number of interceptions of counterfeit goods imported to the EU increased in 2018 as a result of the large quantity of small packages in express postal traffic. The figures for detentions of these shipments increased from 57,433 in 2017 to 69,354 in 2018, although the total amount of articles detained (almost 27 million in 2018, with a market value of almost 740 million euros) fell by 15% compared with 2017.

The main categories of items detained were cigarettes (15% of the total amount of items detained), followed by toys (14%), packaging material (9%), labels and stickers (9%), and clothing (8%). Products for daily use, such as body care articles, medicines, toys and electrical household appliances, constituted almost 37% of the total amount of articles detained.

China remained the principal country of provenance of goods infringing intellectual property rights. North Macedonia was the main country of provenance for counterfeit alcoholic beverages. Turkey was the main source for other beverages, perfumes and cosmetics. EU customs detected a high number of fake watches, mobile telephones and accessories, ink and toner cartridges, CDs/DVDs, labels, tags and stickers from Hong Kong (China). India was the main country of provenance for computer equipment, Cambodia for cigarettes, and Bosnia-Herzegovina for packaging material.

The number of cases of detentions in air and sea transport have fallen, while the cases of detentions in courier and postal shipments increased, the latter amounting to 84% of the total number of cases, consisting mainly of consumer goods purchased via e-commerce. Sea transport remains in first place (54.29%) in terms of the means of transport with the highest number of articles detained.

Spain is in third place among the top ten European countries, which jointly account for 90% of all detention cases, with a total de 3,934 cases in 2018 compared with 3,740 cases in 2017 (+ 5%). However, Spain holds the 11th position in the ranking of articles detained, with 1,305,972 articles detained in 2018 in comparison with 1,776,405 articles in 2017 (- 26%), practically level with Belgium in 10th position, with 1,307,944 articles. Spain therefore joins the leading group of the 4 top ten countries in the EU in terms of the number of detention cases and articles detained.

For Spain it will pose a great challenge to maintains its leading position in the EU top ten in relation to customs detention in defence of intellectual and industrial property rights.

Author: Juan José Caselles
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Reform of EU Directives on Copyright

After extensive debate, the Council of the European Union recently approved Directive (EU) 2019/790 on copyright and related rights in the Digital Single Market and Directive (EU) 2019/789 laying down rules on the exercise of copyright and related rights applicable to online transmissions of broadcasting organisations and retransmissions of television and radio programmes.

These directives include amendments to the existing legislation, adapting the rules on copyright to today’s world, taking into account technological advances. The main objective of these reforms is to adapt the necessary legislation to guarantee fair remuneration for rightholders.

The new directives address present-day means of accessing works, such as real-time music broadcasting services, video-on-demand platforms, news aggregators and user-uploaded content platforms.

Directive (EU) 2019/789 of 17 April 2019

Technological advances have led to the creation of new forms of dissemination of works. Broadcasting organisations and operators of retransmission services offer multiple programmes and platforms comprising a large number of works and other protected subject matter.

This directive has sought to preserve the interests of rightholders and providers of online or broadcasting services, with a view to facilitating the clearance of rights for national and cross-border provision of ancillary online services.

Moreover, it specifies the application of the country of origin principle and the requirements that must be met by operators of retransmission services to provide certainty to rightholders and provide them with a fair remuneration.

Thus, when those organisations set the amount of the payment to be made, they must inform the interested parties (through management organisations) of all aspects of the ancillary online service, that is, the features of the online service, the availability of the programmes provided, the audience, and the language versions available.

Where more than one collective management organisation manages the rights affected in the Member State in question, determining which management organisation has the right to grant or refuse authorisation will be up to the Member State. Said collective management organisations must maintain proper records of membership, licences and the use of works, in order to comply with the transparency obligations established in the Directive.

Directive (EU) 2019/790 of 17 April 2019

Directive (EU) 2019/790 is intended to further harmonise the laws of the Member States on copyright and related rights in an effort to ensure that competition in the digital single market is not distorted. It also aims to establish general principles for future-proof legislation, providing the system with legal certainty but without restricting technological development.

In relation to areas such as research, innovation, education and conservation of cultural heritage, the Directive is innovative in its application of exceptions and limitations with the aim of achieving a fair balance between the rights and interests of authors and rightholders, on the one hand, and of users on the other. The exceptions and limitations, as restrictive criteria with respect to copyright, can be applied only in certain special cases, precluding application by analogy.

In keeping with previous Community legislation, the Directive addresses the need for Member States to have a rigorous and well-functioning collective management system, with regard to good governance, transparency and reporting, to ensure the regular and diligent distribution and payment of amounts due to individual rightholders. Management organisations must likewise be governed by the principle of equal treatment and facilitate the exclusion of works for rightholders.

In this case, the Directive includes measures to facilitate the collective licensing of rights. Consequently, the Member States must provide for licensing mechanisms of this kind which permit collective management organisations to conclude licences, on a voluntary basis. Such mechanisms could include extended collective licensing, legal mandates and presumptions of representation.

Conclusions

In conclusion, both directives have included mechanisms for legislation to gradually adapt to advances in technology, which has seen a drastic transformation in recent years.

We will closely follow the transposition of these directives into Spanish legislation, which, according to Community regulations, must be carried out by 7 June 2021.

Authors: Harumi Wakida y Mabel Klimt
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Criminal conviction for storage for commercial purposes of goods infringing copyright, even in storage facilities separate from the place of sale

Source: Pixabay

The judgment of the CJUE (Case C-572/17) of 19 December was issued within the context of a request for a preliminary ruling from the Swedish Supreme Court in criminal proceedings brought by the Public Prosecutor’s Office of this Court against Mr. Imran Syed concerning the infringement of trade marks and infringements of copyright in literary and artistic works. 

Mr Syed ran a retail shop in Stockholm (Sweden) in which he sold clothes and accessories with rock music motifs. In addition to offering the items for sale in that shop, Mr Syed stored such goods in a storage facility adjacent to the shop and in another storage facility located in Bandhagen, a suburb of Stockholm. It is established that Mr Syed’s shop was regularly restocked with merchandise from those storage facilities.

The issue arising was whether goods stored by someone in a warehouse and bearing a protected motif could be considered as being on sale whenever there are identical goods on sale in a retail establishment run by such person.

In this judgment the CJUE recalls that such an act can constitute an infringement of the exclusive distribution right (Article 4(1) of Directive 2001/29) even if that act is not followed by the transfer of ownership to a purchaser of the protected work or a copy thereof (expressly citing its judgment of 13 May 2015, Dimensione Direct Sales and Labianca, C‑516/13). Therefore, an act prior to the actual sale of a work or a copy thereof protected by copyright, which takes place without the rightholder’s consent and with the objective of making such a sale, may infringe the distribution right. Although carrying out the sale is not a necessary element for the purpose of establishing an infringement of the right of distribution, it must nonetheless be proven that the goods concerned are actually intended to be distributed to the public without the rightholder’s consent, inter alia by their being offered for sale in a Member State where the work at issue is protected.

The fact that a person, selling goods bearing copyrighted motifs in a shop without the rightholder’s authorisation, stores identical goods, may be an indication that the stored goods are also intended to be sold in that shop and that, accordingly, that storage may constitute an act prior to a sale being made, which is liable to infringe that rightholder’s distribution right.

Although the distance between the storage facility and the place of sale may constitute evidence that can be used in seeking to establish that the goods concerned are intended to be sold in that place of sale, that evidence cannot, on its own, be decisive. It may, on the other hand, be taken into account in a concrete analysis of all the factors likely to be relevant, such as, for example, the regular restocking of the shop with goods from the storage facilities at issue, accounting elements, the volume of sales and orders as compared with the volume of stored goods, or current contracts of sale.

The judgment finally rules that the storage by a retailer of goods bearing a motif protected by copyright on the territory of the Member State where the goods are stored may constitute an infringement of the exclusive distribution right when that retailer offers for sale, in a shop without the authorisation of the copyright holder, goods identical to those which he is storing, provided that the stored goods are actually intended for sale on the territory of the Member State in which that motif is protected. The distance between the place of storage and the place of sale cannot, on its own, be a decisive element in determining whether the stored goods are intended for sale in the territory of that Member State.

Once more, with this judgment the CJUE imposes order regarding the problem of copyright-infringing acts or means, prior to the sale of goods, that regrettably and painfully affect creators far too frequently.

  Author: Juan José Caselles

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

Battle between rightholders and internet users

(Source: Pixabay)

Since it was published in 2016, the proposal for a Directive on Copyright in the Digital Single Market has turned into a showdown between IP rightholders and Internet users, the latter brought together and represented by the main Internet user associations.

The proposed Directive, as its name suggests, was created with the aim of harmonising and adapting copyright law to the new uses and exploitation models of intellectual creations inherent to the Internet age and new technologies.

The Internet, traditionally an information source for the average user, is now increasingly a means of expression. Every day, millions of Internet users share (by means of tweeting, retweeting, tagging) all kinds of content: photos, videos, text, memes, comments. Problems arise when the content being shared has an owner and permission has not been sought or, in more serious cases, when a third party is making a profit from content shared, perhaps innocently and in good faith, by the user.

The amendments to the text of the proposal for the Directive, adopted by the European Parliament in September, to a large extent reflect the feelings of authors, artists, publishers and other rightholders who are desperately trying to put an end to the culture of sharing something that belongs to someone else in a space where it seems that freedom of expression has to prevail over any other right.

In the parliamentary debate, the bone of contention (or at least one of them) was the issue of the obligation of service providers that share content online to reach agreement with rightholders to avoid users of these platforms being able to upload content protected by copyright or to ensure that, if they do so, the rightholder receives due payment.

Up to now, this type of provider (YouTube, for example) was only obliged to put in place mechanisms for withdrawing content in cases in which the rightholder had reported the providing of protected content (the so-called notice and take down protocol). If the wording of Article 13 adopted by the Parliament is ultimately accepted, it seems that providers of these services will be obliged to carry out prior monitoring and filtering of the content that users wish to upload.

This Article 13 has come under heavy criticism and has been described by certain groups as an attack on freedom of expression and on diversity of opinion online. A review of the full text of the provision and the related recitals should lead to a more moderate view, given that the filtering obligation will only affect those providers acting for profit-making purposes, storing and giving the public access to a large amount of protected works and which are not small or medium-sized businesses. The provision expressly excludes online encyclopedias and scientific or educational repositories.

The amendments to Article 11, which provide for the establishment of a remuneration for press publishers for the digital use of their publications, have generated similar reactions. This is not a new development for Spain, given that since 2014, its own Copyright Act has included a provision for what has become popularly known as the “Google tax”, which in fact led said company to withdraw the Google News service in Spain. The EU provision is considerably less strict than that in Spain, given that it limits the obligation to provide remuneration to 5 years, whereas the provision in Spanish legislation does not set a specific time limit.

The controversy generated by these two provisions has overshadowed other no less important matters that are introduced for the first time in the text of the Directive following the parliamentary debate of 12 September.

One of them is the creation of a right to revoke for authors and performers who have transferred their rights on an exclusive basis. Article 16 imposes on Member States the establishment of rules permitting creators to recover their rights if, after a reasonable time (which shall vary, depending on the type of exploitation involved), the exclusive licensee has not exploited the work. In the case of Spain, this obligation will finally give meaning to and transform into a specific and real obligation the theoretical obligation on exclusive licensees set out in Article 48 of the Consolidated Version of the Copyright Act.

Another matter that has attracted little attention, if not gone unnoticed, is that of recognition of intellectual property rights for organisers of sports events. Article 12 a) does not specify what is to be understood by “organiser of a sports event”, or even what constitutes a sports event, which is in itself a sufficiently broad term to cover all kinds of interpretations.

In any case, the battle does not end here. The final text will be voted on in a plenary session of the European Parliament at the beginning of next year, and only after it has been agreed upon by the Parliament, the Commission and the Council. Until then, it is to be assumed that swords will remain drawn on both sides.

Author: Patricia Mariscal

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

 

New CJEU judgment on the distinctive character of the Kit Kat shape

The long-running conflict between Nestlé and Cadbury (now Mondelez) with regard to registration of the Kit Kat shape mark as characteristic for chocolates is still bringing us interesting rulings by the courts on the question of the acquisition of distinctive character by trade marks through use.

   

Recapitulating, first came the refusal of the trade mark in the United Kingdom, which resulted in a referral for a preliminary ruling, addressed by the Court of Justice of the European Union in its judgment of 16 September 2015 (Case C-215/14). Counter to what many had expected, that decision did not move the British High Court of Justice to find in favour of registering Nestlé’s trade mark. Quite the opposite, in his judgment of 20 January 2016 Mr. Justice Arnold’s interpretation was that the CJEU had held that the association between the image of the confection and the Kit Kat chocolate bar by a large majority of people surveyed did not suffice to consider that the shape had acquired distinctiveness as a trade mark. In his opinion, it would have been necessary to show that consumers perceived the product as having a given undertaking as its business origin on the basis of the sign in question alone, without considering any other marks that may also be present. As a result, the refusal of the British trade mark was ultimately upheld.

On the other hand, Nestlé had succeeded in registering the shape of the Kit Kat chocolate bar as a three-dimensional European Union trade mark in 2006. The following year Cadbury filed a request asking the EUIPO to invalidate the registration on grounds that the sign was devoid of distinctive character. The EUIPO’s Board of Appeal held that even though the sign was initially devoid of distinctiveness, Nestlé had proven that it had acquired distinctive character through use. That decision was set aside by the General Court by its judgment of 15 December 2016 on grounds that the findings of the Board of Appeal did not address the acquisition of distinctiveness by the mark in part of the European Union (specifically, in Belgium, Ireland, Greece, and Portugal).

In essence, the issue in dispute was the geographical extent of the evidence of acquisition of distinctive character through use. While Nestlé and the EUIPO maintained that it sufficed to show that the mark had acquired distinctiveness in a significant portion of the European Union, the General Court ruled that this had to be shown in the entire territory of the EU, not just in a substantial part or in the greater part of that territory.

On appeal, by its judgment of 25 July 2018 (Joined Cases C-84/17 P, C-85/17 P, and C-95/17 P), the Court of Justice upheld the General Court’s decision. The CJEU found that Article 7.3 European Union Trade Mark Regulation requires proving distinctiveness in the European Union to have been acquired wherever the sign was not distinctive ab initioWhere this is the case throughout the European Union, the proof needs to encompass the territory of the EU as a whole; evidence dealing with a substantial part of the EU does not suffice.

The Court has clarified, though, that the evidence does not have to consist of separate evidence for each individual EU Member State but that evidence may instead be produced globally for various Member States combined. However, the evidence, whether individual or global, must cover the entire territory of the European Union. In consequence, the Board of Appeal’s decision was vitiated by an error in law in failing to adjudicate on the acquisition of distinctive character by Nestlé’s trade mark in Belgium, Ireland, Greece, and Portugal.

The Court of Justice has set a very high bar for evidence. It should be noted that both the EUIPO and the General Court had deemed Nestlé to have proven acquisition of distinctive character in 10 EU Member States, including the largest ones (Germany, Spain, France, Italy, and the United Kingdom). It would thus seem that owners who, in the event of a challenge, wish to rely on the acquisition of distinctive character through use to defend the validity of their European Union trade marks had best be prepared to embark on a laborious and costly process of compiling evidence.

Author: Carlos Morán 

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

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