IP News_GarridoPastor_june 2011_EN



IP News_GarridoPastor_june 2011_EN
Property and
the Law of
Office News
Garrido Pasor will attend INTA Congress
Garrido Pastor Abogados SLP was attending the INTA (International Trademark
Association) Meeting that took place on May 14-18 in San Francisco (USA). Ninethousand trademark professionals worldwide exchanged their opinions, knowledge,
experience and business concerns during the course of these four intense days. We had
appointments with correspondents from the countries that represent the largest
interest for our clients: USA, China, Brazil, India, Canada, and Middle Eastern and
Latin American Countries.
IP News
A Community patent without Spain and Italy?
Intellectual property is obviously an international matter. Intangible objects have a way
of crossing borders. In terms of technology, which is what fuels technical and therefore
material progress, the patent grant procedure (European patent) or part of the patent
grant procedure (PCT patent) has been uniform for some time now, but there has never
been uniformity in the application, grant procedure or in the right granted. Since 1975
(Green Book), Europe, considered to be in decadence by many, strives to be the first to
move forward in this field in order to reduce the costs of acquiring and maintaining
these rights, and those costs include translations. France and Germany have compelled
a strengthened cooperation (laid out in the Treaty of Lisbon, the initiative for one third
of the member States) proposing English, French and German.
Spain has objected, stating that if translation costs are to be reduced, only English
should be used. Why French and German, and not Spanish, which is the second most
widely spoken EU language worldwide? This objection comes from Spain’s good criteria
because the Spanish language is among what little we have left and it has an immense
Last March 8 (opinion 1/09), the ECJ (European Court of Justice) said NO to the
system for settling disputes provided for Community patents. Nevertheless the project
continues to move forward without any legal protection system, which is absolutely
Intellectual Property and the Law of Sustainable Economic Activity
On February 15, 2011, Congress approved the Law of Sustainable Economic Activity
after it was passed by the Senate, and the law entered into effect on March 6.
The Law of Sustainable Economic Activity (LSEA) is a far-reaching legal text which
seeks to establish conditions which foment economic development and productivity in
Some measured used for that purpose include those contained in Articles 57 to 59
relating to the promotion of the intellectual property rights. The use of electronic
means in applications and prosecuting procedures in the SPTO (Spanish Patent and
Trademark Office) will be encouraged, resulting in swifter, faster and less expensive
grant procedures. Policies of promoting Spanish will also be taken abroad in
international intellectual property systems.
It should finally be pointed out that the modification to the Patent Law laid out in the
Final Fifty-fourth Provision of the LSEA concerning the start of computing the term for
granting patents which will be after the search report has been published, modifying its
Second Additional Provision. This results in being able to move the publication date of
the patent application forward regardless of whether or not a search report is provided.
Case Law
Lego loses the final battle: The ECJ confirms the judgment of the
Court of First Instance of the European Communities
In our April 2009 issue, the judgment of the Court of First Instance of the European
Communities (currently the General Court) of November 12, 2008, which dismissed the
appeal filed by LEGO against the refusal of a Community Trademark over the threedimensional shape of the known construction toy piece.
The reasoning can be found in Articles 7.1.e (ii) of Regulation 40/94 (currently
207/2009) prohibiting the registration of “the shape of goods which is necessary to
obtain a technical result” as three-dimensional trademarks. These shapes are actually
inventions because they perform technical functions, and inventions expire when their
legal life has terminated, then being able to be exploited by others. Therefore, while
trademarks are indefinitely renewable by way of protecting necessarily functional
shapes, the exclusive right over an invention is being prolonged indefinitely. However,
the market demands competition in everything, even in technology, generating
inventions protected for a certain time under the exclusive right granted, but nothing
more. It then demands inventing more technology.
The judgment deals with three issues of the prohibition. First of all, it tacks the topic
that the functional shape must be “necessary” in order to achieve the technical result.
LEGO argues that necessary means unique, so if there are alternative shapes producing
the same result, it does not prohibit competitors from achieving the same technical
result with another shape. The ECJ interprets necessary to mean those shapes having
essential characteristics (not all their characteristics) defined as such to perform a
function. Furthermore, the fact that there are even other possible shapes to perform the
function would not impede the possibility of filing opposition if the application were
later confused (not the same). Finally, the functionality could be covered by registering
all the alternative shapes.
Second of all, the judgment approaches how the essential characteristics of the shape
should be determined and how it should be determined if such characteristics are
necessary for the technical function. This is a very important aspect because the
General Court indicates that if there is an important component that is not functionally
conditioned (i.e., it is for adornment or decoration), the functional shape could be used
by other competitors provided they do not also use that non-functional element or a
similar one. These aspects can be determined by experts without being limited to
consumers at this point. The most relevant functional element of the lego piece is the
rows of cylindrical protrusions, not the color of the pieces or their rectangular shape.
These are merely decorative non functional elements and their relevance is insufficient
to grant protection to the piece.
Finally, the judgment deals with the issue of functionality, which must be analyzed by
itself and not in relation to alternative shapes. For this purpose, it is asserted that
technical descriptions of patents, specifically of their functional elements, which
protected the product previously, where appropriate, may help.
SER (“Carrusel Deportivo”) vs. COPE (“Tiempo de Juego”):
The war of the radio waves has its day in Court
On March 9, Commercial Court No. 8 of Madrid issued a solidly reasoned Ruling,
whereby dismissing the temporary injunction filed by the radio station SER against the
radio station COPE for the supposed plagiarism of the radio format of “Carrusel
The SER asked the Court to grant the provisional cease of the program “Tiempo de
Juego”. Besides plagiarism of the show’s format, SER argued that there was unfair
conduct as former collaborators of the plaintiff were encouraged by the defendant to
terminate their contracts.
Having heard the parties in the hearing held on January 18, the Court decided to
dismiss the claim as it interpreted that the presuppositions required by the legal system
which allows granting the cease of the broadcast of a show are not present. Therefore,
in order to grant measures of this type, three requirements must be met in accordance
with the laws in force: (i) the risk of a delay in the proceedings, (ii) the appearance of
right and (iii) a bond must be paid.
Though acknowledging that there is indeed “substantial grounds for the risk of a delay
in the proceedings” concerning the basis of the “true and accepted fact that the show,
Tiempo de Juego, is broadcast and of the advertising campaign since August 2010”
sponsored by the COPE radio station, the Court understands that the presupposition of
the appearance of right does exist, i.e., it is apparently clear that the format invoked by
the SER may involve plagiarism, given that the Court questions that the format of a
news show can be considered as a work that can be protected as intellectual property.
It establishes that “it can be seen that though not identical, there is certain similarity
and resemblance between the shows of different radio stations which are intended for
narrating the weekend sports results. All these shows more or less comprise some or
many of the elements invoked for their format by the SER”. The Court mentions the
principle of free imitation provided for under Article 11 of the Law on Unfair
Competition, which in summary establishes that “there can be said to be a typical way
of producing shows of this type and the listener chooses one or the other depending on
elements other than the format”. The Ruling considers to state that “the basic
distinction of each show for the public has nothing to do with format, but rather other
elements, and the format can barely be original or creative in relation to this typical
manner of reporting the weekend football results”.
When assessing the specific elements of the format of the program “Carrusel
Deportivo”, referred to by the SER in its written claim, the Court indicates that it “is
absolutely typical in radio broadcasting to use commercials recorded live by the
host/hostess of a show. The same occurs with the times when they communicate
directly with the listeners, inviting them to participate in the program by sending text
messages, or using a sound such as Morse code, which is almost impossible for a
specific radio format”.
In summary, the COPE has won the first battle in the war between the two radio
stations, and listeners can continue to listen to either show at least until the judgment
of the main proceeding says otherwise (as this decision does not set a precedent for the
final decision).
Computer program imitation
In a judgment from September 16, 2010, the Provincial Court of Burgos allowed the
appeal filed by a company against two former employees who left the company at the
end of 2008 who then set up their own business to provide service to many former
clients of the plaintiff. This single fact is generally irrelevant for unfair competition
Specifically, the actions which were brought were: acts of denigration and acts of
inducing breach of contract (Article 9 Law on Unfair Competition), acts of imitation
(Article 11 Law on Unfair Competition), acts of exploiting a third party’s reputation
(Article 12), acts of violating secrecy (Article 13) and acts of inducting breach of
contract (Article 14).
Concerning all the acts of unfair conduct analyzed by the Court, what most stands out is
the analysis of the acts of imitating the computer program that the plaintiff used.
First of all, TriGes is licensed software, i.e., to operate the program, it is necessary to
acquire a license, and Trisoft is the licensee of the TriGes program regardless of
whether or not he was the creator. Article 97 of Legislative Royal Decree 1/1996 which
approves the Consolidated Text of the Intellectual Property Law, considers that the
author of a computer program is not only the natural person or group of natural
persons who have created it but also the legal person that is contemplated as the
copyright holder in cases expressly contemplated in this Law. The copyright holder is
therefore also the licensee, and a license is one of the ways of assigning copyrights
under Article 43.1 of the Intellectual Property Law, which provides for the copyright
conveyance. Accordingly, the exception provided in Article 11 of the Intellectual
Property Law for imitating a third party’s goods does not apply because the TriGes
program is protected by an exclusive right.
In the opinion of the Court, the version that the former workers sued in this case
installed in their client companies may be an original version of the TriGes program
marketed by the plaintiff, or it may be a modified version created by the defendants. In
any case, whether it is a copy of a new program or a modification of a previous
program, it had to be created by the defendants using the program source code and
therefore by performing acts of exploitation conferred solely to the proprietor.
Therefore, the reproduction of the program and its installation were necessarily
performed by the defendants because the clients could not do so as they were no longer
Trisoft clients. The modification of an earlier program, for which the source code is
necessary, is also included. In both cases, the product is imitated by someone other
than the proprietor.
D. José Gabriel Garrido Pastor
Intellectual Property Agent
D. Jesús Sánchez Silva
Profesor at Universidad Autónoma de Madrid
and at Universitat Oberta de Catalunya
C/ López de Hoyos, 78 Dpdo.-Bajo A. Madrid 28002
Teléfono: +34 91 590 07 73
Fax: +34 91 590 07 74
[email protected]
which develops, on the one hand, an activity
characteristic of an Industrial and Intellectual
Property Consultancy and, on the other hand, it is a
Lawyer’s Office with a high degree of specialization
referring to this knowledge area.
As an Industrial & Intellectual Property
Consultancy, the services provided are, in the first
place, the genesis, the obtaining and the pursuit of
all the Industrial and Intellectual Property rights:
Patents, Trademarks, Designs and Copyright. It is
also provided the registration of internet domain
names. Secondly, the analysis of Industrial Property
portfolios in a triple way: technology, signs of the
company together with the services it offers, and
As a Lawyer’s Office, we offer counsel, conciliation
and litigation services.
GARRIDO PASTOR ABOGADOS offers services in
Spanish, English, German and French.

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