ELZABURU Blog - Industrial and Intellectual Property

Tag Archives: Industrial property

United Arab Emirates reduces its official fees in relation to IP rights

Great news for holders of trademark rights and IP professionals interested in the United Arab Emirates. 

The high costs of this jurisdiction, one of the world’s most complex economies and also one of the countries in the Arabian peninsula offering most opportunities for foreign investment, have often proven to be an obstacle to the internationalization of trademarks and a decisive factor in decision-making with regard to the management and maintenance of trademark portfolios.

The Middle East has for some time been one of the most expensive regions in the world for protection of IP rights.

The GCC (Gulf Cooperation Council, made up of the United Arab Emirates, Saudi Arabia, Bahrain, Kuwait, Oman and Qatar) has worked hard to integrate, unify and standardize areas of the economy, finance, trade and customs, the laws of its members, among other aspects, and all of these efforts have also had an impact in the field of trademarks. One of the major milestones in the field of IP, not only in the GCC countries but in the Middle East and the territories of the region, was the issuance of the GCC Implementing Regulations. In this context of forging closer links between these countries, in the past few years we have seen reductions in tariffs and bureaucracy in neighbouring countries such as Bahrain, Oman and Kuwait which have facilitated and simplified the procedures for registering trademarks.

While not all of the fees relating to trademarks have been reduced in the United Arab Emirates (for example, the cost of preparing documentation and attending to formal requirements remains very high), the fees for registration and renewal have been reduced, which will facilitate matters with regard to portfolio management and decision-making.

Authors: Cristina ArroyoJuan M. Sáinz de Marles
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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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What is an IP strategy and why is it important?

There is a growing interest among CEOs in Spain in adding an IP strategy to their agenda, an element that has a direct impact on the profit and loss account and which is also closely linked to investments in innovation and marketing.

A well-designed and well-executed IP strategy facilitates the transformation of resources such as inventions, innovations, ideas, know-how and data into intangible assets, that is, patents, trademarks, industrial designs and copyright, thereby boosting and adding value to a company’s business portfolio.

Digital transformation, virtual communication and new technologies allow us to open up the creative process to all areas of the company, not just to the departments usually responsible for these matters.

Why is it so important for a company to implement such a strategy?

There are many legal and strategic reasons for doing so, although the key factors are determined by the sector and the degree of global competitiveness of the company.

By way of example, we may highlight the following factors, which have an important strategic influence:

  • These new intangible resources or assets help to foster a culture of permanent innovation within the company.
  • Competitors can be prevented from taking advantage of our progress and/or undermining our competitive advantage by means of different legal instruments for protection, such as, obtaining patents or industrial designs, implementing trade secret plans, protecting proprietary software, domain names, copyright, trademarks, etc.
  • We can benefit from the strength and legitimacy of intangible assets in new markets when the company has plans for international expansion.
  • A company’s branding strategy serves to build up and shape its brand and position its goods and services in the marketplace.
  • Discouraging professional or amateur counterfeiters from copying our products.
  • These assets may be transferred, licensed, sold and valued, increasing the company’s stock value, and helping to establish a stronger position in the financial markets.
  • They can be capitalised on the balance sheet and amortised, and may also offer fiscal advantages.
  • The cost of hiring experts to carry out the processes of transforming ideas into intangible assets can be recorded as deductible expenses by companies.
  • Without intangible innovations, companies cannot access national and European subsidies.

All of the above factors lead to the idea that an IP strategy could be an interesting prospect for a company. I encourage you to take up the challenge.

Author:Pilar Soriano

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Forward or backward step in court specialisation in Spain?

National Judicial Council (Source: Wikipedia)

Spain’s National Judicial Council, in its Decision of 18 October published today, has extended court specialisation in industrial property to new courts.

It may be recalled that, since Patent Act No. 24/2015 came into force in April 2017,  the issue of jurisdiction in proceedings regarding trademarks, designs and patents had been left in the hands of certain Mercantile Courts in Madrid, Barcelona and Valencia. This concentration of proceedings in three single jurisdictions was cheered by advocates of judicial hyper-specialisation but has also prompted reservations or even jealousy, of sorts, on the part of other courts that were excluded from the allocation of jurisdiction. The reaction of the latter did not take long.

The Decision of the National Judicial Council assigns exclusive powers to rule on industrial property proceedings to, in addition to the courts of Madrid, Barcelona and Valencia, already holding such powers, the following:

ANDALUSIA Granada Mercantile Court 1
GALICIA A Coruña Mercantile Court 1
CANARY ISLANDS Las Palmas Mercantile Court 1
BASQUE COUNTRY Bilbao Mercantile Court 2

The new jurisdiction framework will come into force on 1 January 2019 and, in the meantime, it would be no surprise to see some disquiet concerning this development.

One curious aspect worth noting is that the National Judicial Council decided against the designation of specialised courts in other Autonomous Communities that had requested this. It is still to be seen if this extension of the jurisdiction reinforces or, on the contrary, weakens court specialisation in industrial property proceedings. This would not be due to the different strengths or limitations shown by one or another court, but due to the convenience of concentrating matters in the fewest amount of courts possible, in an effort to foster specialisation.

Author: Antonio Castán

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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)



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