ELZABURU Blog - Industrial and Intellectual Property

Tag Archives: Internet

Amazon not liable for trademark infringement in storing goods offered and sold by third parties

Amazon no infringe marcas ajenas al almacenar productos ofrecidos y vendidos por terceros, según el TJUE

In December 2017, the Court of Justice of the European Union ruled that from the standpoint of the rules on competition, the bar imposed by the company Coty Germany on the members of its selective distribution network, prohibiting them from offering its luxury perfumes on the Amazon e-commerce platform, was lawful.

Amazon not liable for trademark infringement in storing goods offered and sold by third parties  

On 2 April of this year, the CJEU ruled on a new matter referred for a preliminary ruling (case C-567/18) concerning the sale of Coty’s perfumes through the aforementioned platform. However, on this occasion, Coty had brought its complaint directly against Amazon, and the decision went against its interests.

Coty Germany had brought an action against Amazon before the German courts, arguing that Amazon was infringing its trademark rights by storing Davidoff brand perfumes in which its trademark rights were not exhausted. The storage in question formed part of the service provided by Amazon to third-party sellers that were offering goods for sale in the “Amazon Marketplace” section of Amazon’s website in Germany.

The complaint was dismissed and, with Coty having lodged an appeal against the decision on a point of law, the German Federal Court of Justice (Bundesgerichtshof) referred a question to the CJEU for a preliminary ruling, seeking clarification as to whether said storage constituted use of the trademark within the meaning of Article 9 of the Regulation on the European Union Trade Mark. Specifically, it questioned whether it came under the example of use mentioned in Article 9(3)(b) of Regulation No. 2017/1001, which provides for prohibiting third parties from “offering the goods, putting them on the market, or stocking them for those purposes”.

In its ruling on the matter, the Court of Justice first of all pointed to its case law holding that on e-commerce platforms third-party trademarks are used by the sellers of the goods and not by the operators of those platforms (judgment of 12 July 2011, L’Oreal, C-324/09).

With respect to the storage service Amazon provides to third parties who sell goods on its platform, the Court stated that according to the information provided by the referring court, those goods were not offered or put on the market by Amazon itself but by the third-party sellers. It further stated that it follows from this circumstance that Amazon does not use the trademarks in its own commercial communication. Therefore, Article 9 of the Regulation is not applicable to Amazon.

Lastly, the CJEU stated that the above does not preclude the examination of the platform operator’s conduct with respect to the trademarks of third parties from the standpoint of other rules of law, specifically Article 14(1) of Directive 2000/31 on certain legal aspects of information society services or Article 11 of Directive 2004/48 on the enforcement of intellectual property rights. However, since this matter had not been raised by the referring court in this case, the Court of Justice refrained from conducting such an examination, notwithstanding Coty’s petition in this regard.

In summary, the Court of Justice rejects that Amazon may be held directly liable for trademark infringements committed by sellers that use its online sales platform, not even when it stores the infringing goods. Nevertheless, it does not rule out the possibility that the owners of infringed trademarks could request measures against Amazon through application of the rules in the aforementioned directives. In this regard, we must consider the precedent of the aforementioned judgment of 12 July 2011, in which this issue was examined in relation to the eBay platform.


Author: Carlos Morán

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Nine basic issues concerning the new Data Protection Act (II)

Digital rights

Besides dealing with the field of data protection, Title X of the Act lays down a controversial series of provisions dealing with digital rights, such as Internet neutrality, universal access, promotion in education, and extension of the right to be forgotten to social media, that are highly contentious among people in the field.


In the field of labour relations, the Act provides broad protection for employees while placing squarely on employers the need to adjust internal policies to such new factors as:

  1. a) Protection of privacy in the use of digital devices and metered access to content.
  2. b) Digital disconnection, to ensure respect for free time off work.
  3. c) Greater regulation of the conditions of valid video surveillance and audio recording.
  4. d) Employees’ right to privacy in respect of geolocation systems.

 Digital inheritance

Barring a will stipulating otherwise, the heirs, persons related to the deceased, and/or persons designated by the deceased may access the deceased’s content on social media and digital platforms and give service providers instructions as to its use, modification, destination, and removal.

Access to the first part of this post here

Authors: Ruth Benito y Fernando Díaz

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

Nine basic issues concerning the new Data Protection Act (I)

On 6 December the BOE [Official Spanish Government Gazette] published Organic Personal Data Protection and Guarantee of Digital Rights Act, Act No. 3/2018 of 5 December 2018, approved by plenary session of the Senate this past 21 November.

The General Data Protection Regulation (GDPR) does not leave EU Member States much room for manoeuvre, and for that reason the new Act makes constant reference to the Regulation, but it nonetheless contains certain novel provisions discussed here in this post.

Data Protection Officer

In addition to the provisions already set out in the General Data Protection Regulation (GDPR) in this respect, the Act specifies a total of 16 cases in which designation of a DPO is mandatory.

Advertising firms that carry out profiling, operators that offer online gaming, insurance companies, schools, investment service firms that do business in securities markets, financial institutions, and certain energy companies, along with other companies, are all affected by this provision.

Transparency and information

Article 11 of the Act takes what had until now been a recommendation by Spain’s Data Protection Agency and the former Article 29 Data Protection Working Party concerning the layered approach to information and turns it into a mandatory standard.

Accordingly, under this layered information approach, the first layer must necessarily contain, at minimum, the features required in Article 11:

  1. The identity of the data controller and its representative, if any.
  2. The purpose of the processing.
  3. The option of exercising data protection rights.
  4. Where the data are not obtained directly from the owner, the type of data and their source.


The Act keeps the age limit at 14 years and introduces measures aimed at defending minors and their interactions with the digital sphere, for instance, the possibility of intervention by the Public Prosecutor’s Office in cases when images and personal information of minors are disseminated on social networks if doing so represents an unlawful intrusion on their fundamental rights.

Legitimate interest and public interest

The Act expressly sets out certain instances of data processing in which the data controller is presumed to have a legitimate interest or the processing is presumed to be carried out in the public interest.

The former case includes credit information systems, changes to corporate structure or the sale of companies, and contact details of individual business owners and members of the liberal professions, provided that the processing of location and contact data is restricted wholly to the business sphere in relation to providing specialised services.

As far as the public interest is concerned, the Act addresses video surveillance, files regarding advertising opt-outs, and whistleblowing.

The controversy regarding political parties

The final provisions of the new Personal Data Protection and Guarantee of Digital Rights Act amends the Elections Act to allow political parties to gather and use data collected from websites and other publicly accessible sources, including by electronic means, stipulating that election advertising is not to be considered a commercial communication.

Technically, the implicit consideration of websites as being publicly accessible is an important feature, since heretofore the Internet has not enjoyed this status.

System of sanctions

The Act specifies and classifies infringements of data protection categories into the conventional categories of (i) minor, (ii) serious, and (iii) very serious, while maintaining the fines laid down in the GDPR, ranging from a minimum of €10,000,000 or 2 % of total worldwide annual turnover to a maximum of €20,000,000 or 4 % of total worldwide annual turnover.

Access to the second part of this post here

Authors: Ruth Benito y Fernando Díaz

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


Fashion Law. Fashion 4.0: Websites, Apps & Social Networks (XI)

ELZABURU has had the pleasure of working together with the publisher Thomson-ReutersAranzadi 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:

Fashion 4.0. Websites, Apps & Social Networks: protection and Defence

The digital age has had a profound effect the world of fashion, transforming the way it designs, sells or communicates. No one can now operate solely through traditional channels and must reach out to consumers via online media.

Therefore, it is crucial to limit the risks and protect the intangible assets of the business.

In this regard, holding the exclusive rights to a domain identifying the business is extremely important, particularly with a view to preventing its use by third parties. To obtain exclusive rights, the domain must be registered before the corresponding body, depending on the domain of interest, which may be national (.es, .us, .uk, etc.) or generic (.com, .net, .biz, etc.).

The content, appearance and layout of a website can also be protected. Any original content included on the website (images, text, videos, illustrations, etc.) are protected by the Copyright Act. This protection also extends to the content uploaded to social networks, as it is considered equivalent to that included on corporate websites. Similarly, websites from which data and information are extracted or compiled can be protected as databases, either as a work or as a sui generis database right, provided that the investment made by the owner is duly accredited, the latter form being the more usual.

All this must be supported by a contractual protection strategy, with website use policies being an ideal tool to restrict the reuse of the intangible assets of the business.

The protection of mobile apps has a similar structure to that of websites with regard to their content, the main difference being that an app may additionally be protected as a computer programme or software, in accordance with the provisions of the Copyright Act.

Finally, it is important not to overlook the registration of those trademarks used to identify the business on online platforms.

The reality is that this digital revolution is constantly evolving, posing new challenges and strategies focussed on improving the customer’s experience, in adapting physical shops to new technologies, experimenting with chatbots, customising garments through technical developments in the materials used, as in the case of sportswear, whose technical features are adapted to the requirements of top-level athletes, or the design of clothing whose colours depending on the weather conditions, while adapting business models in line with new sustainability objectives or targeted improvements in environmental conditions, for instance, through the use of renewable energies in the manufacture of garments or that of new, low-impact means of production.

Author: Martín Bello Castro

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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