ELZABURU Blog - Industrial and Intellectual Property

Tag Archives: Law

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.


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

New amendment to Regulation implementing the Trademark Act fires starting pistol for proof of use in Spain

Courtesy of Mohamed Hassan at Pixabay

The amended Regulation implementing  the Spanish Trademark Act (Act No. 17/2001) has been published has been published the 30th April and enters into force the 1st May 2019.

With the approval of this amendment, the starting pistol has been fired for applicants of trademarks, in the context of opposition proceedings, to be able to require the opponent to furnish proof of use of the registrations on which the opposition is based, provided that the registrations are subject to the use requirement. Thus, if the opponent fails to furnish proof of use of the mark invoked as the basis for opposition or show that there are proper reasons for non-use, the opposition will be dismissed with respect to that mark.

This is an important change to the Spanish trademark system, arising from the transposition of Directive (EU) 2015/2436 to approximate the laws of the Member States relating to trademarks.

However, pursuant to the First Transitional Provision, this amendment will not affect trademark and tradename proceedings commenced before this amendment to the Regulation comes into force. Only applications filed as of 1 May will be subject to the new system of proof of use in opposition proceedings.

As already anticipated, the entry into force of the new system for administrative invalidity and revocation proceedings has been postponed until 14 January 2023.

Author: Luis Baz
Visit our website: http://www.elzaburu.es/en

The new Spanish Trade Secret Act is here! (II)

Trade secrets are considered an object of property, allowing for their transfer and licensing, under a similar regime to that of patents, which already provides for the transfer of know-how. Likewise, it establishes the regime for cases of co-ownership of trade secrets; that agreed between the parties would prevail in these cases, should this fail the corresponding provision of the Act would apply or, otherwise, the provisions regarding common property of the Civil Code. Once again, the legal regime is similar to that for patents.

Finally, this section of the Act would make the party transferring secrets it does not own liable for the damages caused to the acquiring party, provided that the former acted in bad faith.

With regard to the actions in defence of trade secrets, this right is placed on an equal foot with the rest of intellectual property rights, once again in line with the catalogue of actions allowed for patents, such as cessation, removal and compensation. The diminished liability of the bona fide third party, referred to above, becomes a reality here as the substitution of these actions for the payment of a monetary compensation is allowed in some cases. In addition, the Act provides for the exercise of precautionary measures and measures of enquiry to supplement the defence actions, following the procedures set out both in the Patent Act and the Civil Procedure Act.

One of the most significant developments included is the demand for confidentiality regarding trade secrets in legal proceedings, therefore avoiding placing this valuable information at risk by establishing preservation measures and penalties for their infringement.

The new Act is an opportunity for all companies, opening up the possibility to protect as trade secrets information that previously lacked clear protection. It is precisely for this reason that it becomes necessary to implement a trade secret protection plan to achieve the protection afforded by the Act. Otherwise, trade secret owners would not be in a position to bring all the actions this new Act makes available to them. Similarly, companies must be particularly diligent with the information they receive and use whenever this is considered secret since, as stated above, they could be liable for infringements, even when acting as third parties in good faith.

  The first part of this article is available here

Authors: Javier Fernández-Lasquetty , Cristina Espín and Martín Bello

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

The new Spanish Trade Secret Act is here! (I)

The new Trade Secret Act 1/2019 has been published today. This new legislation opens a new protection opportunity for companies which most of their valuable information will now enjoy legal recognition equivalent to that of other intellectual property rights. As a result, we shall now analyse some of the most relevant developments included in this regulation.

First of all, this Act sets out a definition of trade secrets in a very broad manner, allowing for this concept to cover all types of information. The subject matter of protection includes any information or know-how that fulfils three requirements:

(i) it is secret;

(ii) it has business value; and

(iii) reasonable measures have been taken to maintain its secrecy.

Thus, practically any kind of know-how generated by a company may be considered a trade secret.

Secondly, the act specifies the types of activities considered to be lawful or unlawful, taking into account the activities trade secret management entails: acquisition, use and disclosure. In this way, said actions may be lawful or unlawful depending on the circumstances described in the Act.

On the one hand, acquisition, and therefore use and disclosure, shall be deemed lawful when resulting from

(i) independent discovery;

(ii) reverse engineering;

(iii) the exercise of workers’ rights; and

(iv) any other action conforming to fair commercial practices.

On the other hand, these same actions (acquisition, use and disclosure of trade secrets) may also be considered unlawful.

This would arise in the event that the trade secret was acquired without the authorisation of the owner, that is, in the case of unlawful acquisition. This manner of acquiring information will affect other conducts since, if its acquisition was unlawful, so will its use and disclosure be.

Furthermore, if the know-how is obtained in a lawful manner, but it is used or disclosed in breach of any contractual or similar obligation, these acts will be considered infringements of trade secrets.

One important development in this new Act is liability for infringement, given that it establishes  objective liability for third parties who have not committed the aforementioned unlawful activities. Thus, the party liable for an infringement will be a party which acquires, uses or discloses the trade secret while being aware, or which should reasonably have been aware, that it was acquired from a party that uses or discloses it unlawfully. This objective liability also extends to those producing, offering or marketing goods that incorporate trade secrets used unlawfully.

The Act goes even further, also establishing a liability regime which could be qualified as being “ultra-objective”, according to which even a bona fide third party is considered liable, although liability is diminished when compared with the cases described above.

Therefore, the Act calls for the utmost diligence from companies when receiving or passing on trade secrets, ensuring that no information acquired unlawfully is handled so as to avoid incurring any penalty.

  The second part of this article is available here  

Authors: Javier Fernández-Lasquetty , Cristina Espín and Martín Bello

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

It is essential, now more than ever, to have a plan for management of trade secrets

The imminent Spanish Trade Secret Act, driven by Directive 2016/943 on the protection of undisclosed technical know-how and business information, will represent a major step forward in Spain regarding  the protection of trade secrets (in the same way as the respective national laws in Europe), placing it at the same level as intellectual and industrial property rights (patents, trademarks, designs and copyrights) by affording similar protection.

However, even a minimum standard of diligence concerning this issue calls for a plan for management of trade secrets for their protection and defence, for the reasons we shall explain.

It is important to note that not all confidential information is considered a trade secret. It is essential that it meets the requirements established by the Act (secret information, of real or potential business value and subject to reasonable measures to maintain its secrecy) in order for the information to be considered a trade secret since, whenever an attempt is made to assert this vis-a-vis a third party, the latter will argue that it is not a trade secret, obliging the owner to furnish evidence to the contrary.

Not only will those liable for prior acts of unlawful acquisition, use and disclosure be considered infringers but the Act also establishes objective liability for those who were aware or, under such circumstances, should have been aware about the unlawful origin. Even an “ultra-objective” liability is established since bona fide intermediaries (manufacturers, importers or sellers) are also liable when performing their activities and the product or service infringes the trade secret of a third party. All this places emphasis on the need to carry out business due diligence processes and to sign agreements passing on to suppliers the liabilities deriving from the infringement of trade secrets.

In the above context, it can be stated that this Act protects the owners of trade secrets, providing sufficient legal certainty for their activities in the marketplace. Therefore, by complying with the new Act, companies managing trade secrets correctly will have various legal mechanisms to prevent third parties from infringing their trade secrets.

Finally, we must stress the fact that correct trade secret management reduces the risk of trade secrets leaking through employees and third parties, providing added value to the sales or licencing processes.

Authors: Javier Fernández-Lasquetty y Cristina Espín

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



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