ELZABURU Blog - Industrial and Intellectual Property

Tag Archives: Trademarks

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

Somalia. How to protect your trademarks in Africa’s most failed state

In recent years, some clients have expressed an interest in registering their trademarks in Somalia. The unrest and extreme difficulties in this country in the Horn of Africa, and the permanent closure of its Trademark Office almost three decades ago, have made this impossible.

However, although there is no law governing trademarks, trademark owners can adopt precautionary measures against unauthorized use of their trademarks by third parties, by publishing Cautionary Notices in one of the country’s major newspapers. Trademark owners are thus able to notify and warn third parties of their ownership of the marks and establish some evidence of their rights.

While not many companies or clients are interested in seeking protection in Somalia, some companies have begun making preparations by publishing Cautionary Notices.

 

Author: Cristina Arroyo 

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

Rwanda: New deadline date for renewal of trademarks filed before the entry into force of the Law of 26 October 2009

The Rwandan Trademark Law of 26 October 2009 entered into force some time ago, in December of that same year.

However, the Trademark Office has now finally clarified the date by which trademarks filed before the entry into force of the Law must be renewed, in line with new legal provisions.

There has been some confusion concerning that date, given that in principle, the Trademark Office set 26 October 2019 as the deadline for renewal of these trademarks that were pending registration when the new Law entered into force. Rwanda’s Trademark Office has now confirmed that the date by which all of the affected trademarks must be renewed is 14 December 2019.

While Rwanda is not a country that is often included in the internationalization projects of Spanish companies and trademark owners, we are working together with our local associates in order to ensure that all affected cases are resolved by the date set by the Trademark Office.

Author: Cristina Arroyo 

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

 

Fashion Law. Corporate reputation in the fashion sector (IX)

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:

Corporate reputation

Corporate reputation could be likened to the concept of prestige or fame and defined as the image or perception that both the general public and the fashion company’s customers, as well as the company itself, have of the company.

If we consider that the decision-making process of consumers is no longer governed by objective factors such as the quality of materials or the price of a product but by the values and experiences transmitted by brands (e.g., modernity, design, etc.), we can conclude that corporate reputation is a valuable asset for a company, which has an influence on the value and price of that company’s products in the marketplace.

The reputation of fashion companies and brands is the result of a carefully devised communication strategy, creating and maintaining value for the brand beyond the product, and recognition of the brand in the marketplace (by existing or potential consumers, competitors, the general public).

The following are generally the cornerstones of this strategy:

  • Creating and maintaining a reputation in the fashion market, by selecting a niche in the market and working on positioning.
  • Designing communication policies and developing marketing initiatives.
  • Implementation of policies for management of any potential reputation crisis.

For when such actions prove to be insufficient, fashion companies and brands need to be familiar with the regulatory framework which guarantees legal protection of their reputation and establish a plan of action against any unlawful attack against the same, from a communication and legal standpoint.

The options offered by the legal system may by divided into two areas: civil and criminal.

1.Civil

Within the first area, there are two options depending on the legal asset affected: protection of the right to honour and unfair competition.

Provision for the protection of the right to honour is made in Organic Act No. 1/1982 of 5 May 1982, affording civil protection to the right to honour, personal and family privacy, and one’s own likeness. This right is recognized in respect of legal persons in the references to “good name” or “reputation”.

Moreover, the Unfair Competition Act, Act No. 3/1991 of 10 January 1991, aims to ensure the proper functioning of the market and punish acts of unfair competition in the marketplace. Attacks against the reputation of a fashion company can sometimes fall within the category of unfair conduct (e.g., acts of denigration), and the company can seek to protect its rights through this option.

Additionally, it is important to consider the right of rectification, as regulated by Act No. 2/1984, which permits a (natural or legal) person to “correct information on facts related to him broadcasted by the mass media, which he considers untrue and the dissemination of which may cause him damage”.

2. Criminal

Finally, when the attacks against the fashion company’s or fashion brand’s reputation are particularly serious, protection may be sought under criminal law.

Specifically, if the act against the corporate reputation of the fashion company or brand consists of an action or expression which is harmful to its dignity, damages its reputation or undermines its self-esteem, it could constitute insult or defamation, as regulated by Articles 208 to 210 of the Criminal Code.

If said act consists of accusations of having committed an offence, made in the knowledge that they are false or display a reckless disregard for the truth, it could be considered false accusation of an offence, as regulated by Articles 205 to 207.

Author: Alba María López

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)

Mexico. Major changes coming for trade marks

A short time ago, on 18 May 2018, Mexico’s Official Journal of the Federation published Amendments and Additions to the Industrial Property Act affecting trade marks. The Decree containing these changes will enter into force 60 days after publication, i.e., on around 10 August 2018.

Mexico is a primary landing place for Spanish companies and clients in their internationalization projects. The fact is that in recent years Mexican lawmakers and our colleagues have made huge efforts to modernize the practice of the profession and trade mark practice generally.

Broadly speaking, Mexican lawmakers would appear to have taken aim not only at updating the country’s trade mark legislation, at consolidating the barely two-year-old opposition proceedings, but also at impinging on such key trade mark law principles as “bad faith” as a bar to registering a trade mark and/or at settling uncertainties attaching to certain aspects that were highly ambiguous in practice, such as compulsory use by owners.

Firstly, and significantly, the concept of what a trade mark is has been expanded to include non-traditional marks (e.g., holograms, sound marks, and olfactory marks), collective and certification marks, and even trade dress as understood in the law of English-speaking countries, which will become registrable under the new wording of the law, though it is not referred to literally by that name.

Also, the possibility of registering generic or descriptive trade marks lacking in distinctiveness as an exception to absolute grounds for refusal is recognized where a trade mark has acquired secondary meaning through its use in the marketplace.

It will become possible to request a declaration that an unregistered trade mark is well known; before the Decree, prior registration was required.

The Mexican Institute of Industrial Property (IMPI) will begin admitting letters of consent and coexistence agreements as means of dispute resolution and settling cases where an obstacle posing a likelihood of confusion has been encountered. Nevertheless, it appears that they may not be admissible in the case of identical trade marks.

In line with practice more common in English-speaking jurisdictions and the Court of Justice of the European Union’s oft-cited “IP Translator” judgment, which has caught the eye of jurisdictions outside the EU, Mexican lawmakers have come down on the side of specific descriptions of goods and services, and hence general class headings will no longer be accepted. Taken in conjunction with the new requirement for declarations of use mentioned above, we think it will be wise to decide on an appropriate trade mark protection strategy for Mexico, generally of great importance to Spanish clients, from the very outset.

Use is the reason for being and the purpose of trade marks and what makes a trade mark a reality, and in point of fact most countries’ legislation includes a use requirement for trade marks. In this regard, one of the most relevant aspects included in the new Decree is the requirement – from entry into force of the amendments – for owners of trade mark registrations to submit Declarations of Use for their trade marks starting three years from the registration date. Our primary sources have told us that the declaration of use could be required with each renewal, in which case the question of use will become an essential component of any trade mark protection strategy in Mexico. Failure to comply with this new requirement will result in cancellation of the trade mark.

Another controversial question regarding trade mark use to date has been whether or not it is advisable to include a date of first use when filing a trade mark application in Mexico, because the trade mark application form did not in fact provide for doing so yet nonetheless constituted a sort of “tacit presumption of an intent to use declaration“. Beginning in August, anyone seeking to claim a date of first use for a trade mark filing will have to include that date on the application form itself. If a date of first use is not stated, the application may then be deemed to be a “tacit intent to use declaration”.

Coming back to the principle of “bad faith” referred to earlier, it is included in the Decree as grounds for opposition and for cancellation of a trade mark. In addition, the binding effect of oppositions has been strengthened.

From our perspective, these changes will proffer additional grounds for judgments and decisions that will help Mexico gradually increase the specialisation of the IMPI and the courts in trade mark matters.

 

Author: Cristina Arroyo 

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

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