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Trade marks and geographical indications are both in their own way identifiers of origin. As such, even if the former refer to commercial origin while the latter refer to a geographical location, it is easy to see how there is huge potential for overlap and conflict between the two. 

From 23 March 2016 a new Trade Mark Directive (2015/2436) and Regulation (2015/2424) have entered into force introducing changes such as, a new system of fees called “one-class-per-fee system”, which means that applicants are going to pay a lower fee if they only apply for one class or, the elimination of requirement of graphic representability as long as the representation is in a “clear, precise, self-contained, easily accessible, intelligible, durable and objective” manner. This post, however, will focus on the absolute grounds of refusal of registration which have been extended to include, in addition to designations of origin and geographical indications, protected traditional terms for wine (art.4.1.j) and traditional specialities (art. 4.1.k).

So, what is wrong with registering geographical names as trade marks? In synthesis, such a trade mark would inevitably be either descriptive or deceptive. If a mark is descriptive or lacks distinctive character, it cannot serve as a business identifier and it makes it impossible for other traders to market their products. By the same logic, if a geographical term were allowed registration, consumers could be misled as to the geographical origin of the goods (i.e. The Greek Yogurt decision for a yogurt not originating from Greece).

Surely enough, back in 1999, the ECJ established the principle of public policy by which geographical names cannot become subject to private trade mark rights in the famous Chiemsee case. This principle was later crystalized in art. 3.1.c of European Trade Mark Directive No. 2008/95/EC. According to this article, only trade marks which exclusively consist of a geographical origin will be invalid, thereby significantly narrowing its scope of application. At the same time however, the article is broad, as it prohibits registration of any designation of a place currently associated with the category of goods concerned or, any instance when it is reasonable to believe such association may occur in the future. Worryingly, these shortcomings are not resolved by the new Directive as its art. 4.1.c reproduces the exact wording of its predecessor. 

To sum up then, while the new EU regulation for trade marks aims at making the system more efficient, clearer and limiting the line between trade marks and different forms of geographical indications, it has not dealt with the existing loophole by which a combined word/device mark including a geographical name would not in principle fall within the exclusion. It seems that public interest is best served by the protection of free competition rather than property rights, and therefore unregistrability of terms descriptive of the goods should not be an exception, but an inherent limitation.

 

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A few months ago something has changed in the profile of 1 billion Facebook users. Any of us can verify that by looking at his profile information in the "contact information" part.  You will discover that our originally set mail contacts have now disappeared and they have been replaced by a brand new mail address "name.surname(number)@facebook.com".

Only a small percentage of Facebook users have perceived this change and until now many millions of people are displaying the new configuration. Thus with a very simple move Facebook has gained a huge amount of contacts for its mail service (emails come directly as messages).

While for users it is very simple to fix this small inconveniency, it is just about a couple of clicks, and restore the preferred mailing address, legal implications could be far more interesting.

This technique used by Facebook in order to instantly get millions of customers for its mail service, taking advantage of its diffusion as a social network, reminds us of a famous case in 2004, the Microsoft case.

In a landmark decision the Redmond based company had been heavily punished for including inside its operating systems default programs like Internet Explorer and Windows Media Player and in general for having acted in a way that damaged other producers of these types of applications.

As a matter of fact there is an analogy between the behaviors of Microsoft and Facebook as the latest put inside its platform a mail service automatically available to all users with probable damages for many other companies competing in the market of electronic mail services and whose address are no longer displayed on users profiles.

I will conclude with the words of then European Commissioner for competition Mario Monti:

"It is essential to have a precedent which will establish clear principles for the future conduct of a company with such a strong dominant position in the market".

Is Facebook in a dominant position in the social network market?

 
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Without words:

Photo AFP / Frederick Florin

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The Spanish “Internet Law” Law on Information Society Services and E-Commerce (Ley 34/2002, known as LSSI) has been amended by Royal Decree 13/2012, March 30, published in the official journal of March 31st to comply with Directive 2009/136/CE, amending Directive 2002/58/EC on Privacy and Electronic Communications.

This amendment, though not being a significant change, merits a description and two comments, one on what has been done and another on what has not been done.

The prohibition of the practice of sending mail for the purposes of direct marketing which disguise or conceal the identity of the sender (article 7 of the Directive) is implemented in article 20.4 of LSSI.

The obligation to provide a valid address where the recipient may request that communications cease (article 7) is implemented in article 21.2 of LSSI.

The “cookie rules” of the Directive (article 5 of the Directive) allowing storage of information or the gaining of access of information already stored in the terminal equipment of a subscriber or user on condition that this subscriber has given its consent, having been provided with clear and comprehensive information, can be found in article 22.2 of LSSI.

Spanish regulation ads that this consent can be obtained automatically if the web browser of the recipient is already configured to give this consent, provided that the recipient has been able to do so expressly.

The amendment that merits the comment is  article 31 LSSI, concerning the persons or legal entities entitled to bring legal proceedings on infringements regarding unsolicited communications.

Following Directive 2009/136, electronic communication service providers wanting to protect their legitimate commercial interests or those of their clients are entitled to a cessation action.

This means that any company whose products have been offered or trademarks used on such communications unsolicited communications are now entitled to such cessation action. Under Spanish civil procedure law (Ley de Enjuiciamiento Civil) this action is brought under the simplest procedure available, known as “juicio verbal”. This is a positive amendment since it widens the scope of natural and legal persons that can bring a cessation action through a simple procedure.

What has not been done relates to administrative sanctions on infringements. According to an established principle on sanction law, the conducts sanctioned have to be described. The issue arises when the prohibitions introduced by this amendment are not introduced in the description of the sanctioned conducts, thus raising the question about whether the infringement on these new prohibitions can be sanctioned.

As usual after an amendment, the debate is open.

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We are very glad to inform that Abel Garriga will be in London (@BFI) and Amsterdan (@ECF) next week to present a Workshop on Intellectual Property, Media and Culture in the Doc Next Network program, a project of the European Cultural Foundation

Find following an introduction to the exciting topics we are going to work on.

PRESENTATION OF THE WORKSHOP

London, February 21st – 22nd, 2012

This two day workshop aims to give a comprehensive view of copyright law, so that participants can be able to understand why copyright exists and how it works.

The first session will address the main issues of copyright law, giving both a wide and rigorous perspective of them. We will analyse in depth the narratives of copyright to stress the fundamental public interest that copyright originally served, and the reasons why this original purpose is nowadays, at least, blurred.  We will also discuss the role  that technology has had to boost a profound debate on the subject.

Since we are facing a transnational issue, the first session will focus on the two main legal systems to analyse the structure of copyright law and to find the common principles that apply to any legal system.

We will end the first session with an analysis of the interests of the participants  in the program so that we will have raw material to work with in the next session.

The second session will have as a central issue how can copyright law serve the purposes, goals and needs of the participants, the Foundation and the project.  Given the existing legal framework,we will analyse the law to see what licences would be the best fit for the project to stress public interest in copyright. We will focus on  the open licences, to see why  they were created and how they work.

As a conclusion and practical outcome the workshop will end proposing, with the contribution of all the participants, the legal tool that best can serve de project.

We’ll keep you posted!

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Second episode.

The case SGAE v PADAWAN

1. The case

As explained in our previous post, PADAWAN, S.L. runs a shop selling all kind of items related to computers, from hard drives and USB pen drives to spare parts of PC to DVD’s and CD’s. Therefore and according to the system explained in our first post, it had to pay the levy for the selling of those items. When SGAE  required this shop to pay the amounts due by the levy to compensate the private copy, the shop refused to do so and SGAE sued PADAWAN, S.L. claiming the amounts due between November 2004 and January 2006, a total of 18.084,70 € .

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This is the first of a series of articles on this issue, the coming weeks we will publish several follow-up's discussing the SGAE v PADAWAN case, including a conference given by the honourable Judge Ignacio Sancho Gargallo, not forgetting an interesting administrative case on the national level, and ending with a broad overview of the panorama we are in now.

Spanish IP practitioners and scholars, as well as representatives of collective rights’ management agencies, have been buzzing frantically these days around the system set up to provide a fair compensation to right holders deriving from the limitation of private copying, as two judgments from very different Courts have ruled in one way or another that it didn’t comply with the law.

The coup de grace to the existing system has been a recent Judgment of the administrative section of the Audiencia Nacional which declares void the Ministerial Order

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This article was published in 2001, at the time I was still an attorney with Jausas; the article was quoted in several national news bulletins on the day of the press conference, as well as in the Financial Times. For the sake of completeness of my archives, and of course for nostalgic reasons I publish it here again.


Fines of up to EUR. 600.000 may be neck shot for bubble survivors.

If your e-business yet hasn’t stranded due to the ongoing stormy weather in cyberspace by autumn or winter this year, it anyway still might hit the ground for the shift in the legal climate by that time. You may face fines up to a 600.000 Euro when the Law on Information Society Services and Electronic Commerce (ISSEC) will enter into force. The ISSEC is the Spanish implementation of directive

Somos un pequeño despacho especializado en transacciones y cuestiones relacionadas con la operativa empresarial. Nuestros profesionales son abogados independientes, con una profunda comprensión del negocio y una trayectoria profesional de probada solvencia. Todos nuestros abogados están inscritos en el Ilustre Colegio de Abogados de Barcelona. Nuestra póliza de responsabilidad civil tiene una cobertura de 2.000.000.- €.

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