garrido News ENG - GARRIDO PASTOR ABOGADOS

The online sale of electronic goods,
in the spot light.
December
2009
Office News
The instruction manuals of apparatuses are protected by copyright
and their translations as well.
The case handled was the following: our client, the exclusive distributor for Spain of radiocontrolled model-making apparatuses of the Japanese brand FUTABA (www.modelimport.com),
observed that an association of model-making fans had uploaded manuals of different apparatuses
of the brand on its webpage for their free download by the users. Our client had translated some
of the manuals of these apparatuses into Spanish and included them with the sale of the
apparatuses, together with the original manuals of the manufacturer. It is a fact that in the
model-making world, fans purchase apparatuses and models abroad. The page of the association,
upon allowing the download of the manuals in Spanish, completed the documentation of the
apparatus for the people who had purchased it abroad. The matter has two parts: the first part
is that the legitimate distributor needed the rights of transformation, specifically of translation
of the manuals from its manufacturer, at least for Spain. The second part, which is a consequence
of the above, is that the fact of uploading the translated manuals on the Internet for their
download by a third party, constituted, in itself, an act of infringement of the exploitation
rights assigned to our client, whether or not such downloadable documents were a reproduction
of the translation made by our client. Both parties reached a settlement to avoid legal action.
Our client has obtained two advantages from all this: It has avoided a lawsuit and has taken
the opportunity to review all its distribution contracts.
Office News
The “online” sale of consumer electronic goods in the spotlight
It is increasingly common, when opening up a business, to do it offline (traditional business)
and online (digital business), and sometimes, even the latter alone. When the digital platform,
the webpage, contains electronic commerce tools, certain legal obligations must be complied
with if one does not want to be exposed to penalties. Our client is a good example of the
compliance of the rules affecting its online activity: data protection, distance selling, general
conditions, are some of the affected issues.
The European Commission for Consumer Protection has conducted an investigation on
misleading advertising and unfair practices of 369 websites of 26 member states in which the
most popular electronic goods are sold: digital cameras, mobile phones, personal music players,
DVD players, computer equipment and game consoles.
Office News
The “online” sale of consumer electronic goods in the spotlight
The result has shown that 55% of the sites showed irregularities, in particular relating to the
following fundamental points:
1. Contact information for the trader.
2.Clear information about the offer (total price and clear product description).
3. Clear information about consumer rights.
After the study, the European Commission will send such results to national entities so that
they can initiate actions against the deficient webs.
For more information see: http://ec.europa.eu/consumers/enforcement/sweep/electronic_goods/index_en.htm
Office News
The agreements of coexistence of marks, an easy, inexpensive and
immediate solution for coexisting
The expression “coexistence of marks” describes a situation in which two different companies
use an identical or similar mark for marketing a good or service, without one of them thus
necessarily interfering in the business of the other. This phenomenon is relatively common.
In some cases, when two companies are aware of the fact of using identical or similar marks,
they must make the decision to establish a formal agreement of coexistence to prevent the
future use of both marks from being superimposed such that it is detrimental to or infringes the
respective rights.
It must be stressed that prevention is better, and cheaper, than cure. One of the essential
precautions when selecting and registering a new mark is conducting a search that is as thorough
as possible, using professionals in the field. Theoretically, by conducting a meticulous search
of marks, the risk of encountering another company with a similar mark once on the market
is reduced to a minimum. However, no search is infallible. Therefore, it is possible to encounter
identical marks or marks with a similarity leading to confusion if the search was not broad
enough, or if other categories of goods or services which can end up affecting the viability of
the proposed mark were not taken into account. Likewise, attention must also be paid to
unregistered marks, since in many countries well-known marks are protected even though they
are not registered.
Persil from Unilever
Office News
The agreements of coexistence of marks, an easy, inexpensive and
immediate solution for coexisting
Two traders often discover that they are using the same mark or a very similar one for identical
or similar goods in different places. It is really possible for one not to know of the existence
of the other for years until one of them expands his business and starts using the mark or files
an application for registering his mark in the country where the other one carries out his
activity. What happens in this case? At this point, the trademark office can refuse the application,
since it would collide with the earlier rights acquired by the other trader. It can also happen
that the latter opposes the application during the opposition proceeding, or brings a nullity
action once the mark has been registered.
In a formal agreement of coexistence of marks, both parties acknowledge the right of the other
party over his respective mark and accept the terms in which they will coexist on the marker.
This coexistence can be based on a division of the territories where each of the proprietors can
carry out his activities, or on a demarcation of their respective fields of use, for example, in
relation to the goods or services for which it will be used.
If the best solution is an agreement of coexistence, the first step is that both companies define
their spheres of activity and agree to limit themselves to these parameters. Nevertheless, the
true challenge consists of anticipating the future development of the activities of each company.
Where does each company see itself ten or twenty years later? Is there a risk of the expansion
of each of them invading the territory of the other?
Persil from Henkel
Case Law
L’Oreal “because it’s worth it”: the ECJ places limits on comparative
advertising using well-known marks, because it free-rides on them.
The judgment of the ECJ of June 18, 2009 deals with the difficult issue of comparative advertising,
legitimate in certain conditions, using the well-known mark of a third party.
Specifically, L’Oreal SA, manufacturer and distributor of luxury perfumes, has several marks
registered: mainly Trésor and Miracle, in their three versions (word, bottle and packaging
mark). Malaika, Starion and Bellure, produce the perfumes La Valeur and Pink Wonder, the
bottles and packaging of which have a general similarity with the previous ones, without causing
an error in the professionals and the public. What is truly important is that when Malaika and
Starion market their goods, they send comparison lists to their retailers which indicate the
word mark of the imitated perfume together with the marketed perfume.
Despite the fact that there is no likelihood of confusion in relation to the origin of the goods
(since there is no error in the professionals and the public), the Trademark Directive confers
an extra protection to the well-known marks, against other identical or similar marks, which
are even aimed at distinguishing different goods, whenever there is a detriment and/or unfair
advantage taken of the distinctive character or of the repute.
The ECJ has already repeatedly established that this reinforced protection can also be applied
even though the goods are not similar (Davidoff, Adidas-Salomon and Adidas Benelux).
The judgment openly refers to the fact that this reinforce protection comprises three cases: (1)
detriment caused to the distinctive character (dilution or blurring); (2) detriment caused to
the repute (tarnishment or degradation); and (3) unfair advantage taken of the distinctive
character or of the repute (free-riding).
Case Law
L’Oreal “because it’s worth it”: the ECJ places limits on comparative
advertising using well-known marks, because it free-rides on them.
This judgment deals with the latter: free-riding.
The court first states that there are three independent cases, which leads to concluding that
the third once occurs even when without there being detriment to the repute or distinctive
character. Therefore the third one does not require sustaining damage. What is essential is the
advantage obtained by the third party upon using an identical or similar sign. For the latter
to occur, multiple factors must be assessed, among others, (1) strength of the reputation, (2)
strength of the distinctive character, (3) degree of similarity between the marks and (4) nature
and degree of proximity of the goods. In view of the circumstances of the case, it is concluded
that the resemblance of the marks (although not confusable) was deliberately sought to create
a link between the goods which would facilitate their marketing. The ECJ concluded that this
practice attempts to take unfair advantage of the power of attraction, of the reputation and of
the prestige of another mark, without making any type of effort in this regard or paying any
financial compensation.
The mark condenses all the information about the good, its characteristics and qualities, for
better or for worse. The experiences of the consumers are fused to the mark. In this sense, the
mark is a first-order informative mechanism, because in its simplicity it catalyzes all the efforts
of its proprietor. This judgment again supports the informative power of the mark as a selection
and identification mechanism, denying the possibility of its use, even in comparative advertising,
when by means of the mark an attempt is made to compete without being based on one’s own
effort.
Case Law
Google Adwords or the non-infringing use of a third party’s trademarks
The advocate general of the European Court of Justice, Miguel Poiares Maduro, has issued a report,
on September 22, stating that the internet search engine Google has not violated trademark rights
upon allowing advertisers to purchase keywords coinciding with the registered marks.
The AdWords system works as follows: the advertisers pay Google and choose “keywords” such that
their ads appear in the searches once they are typed into the search engine. Thus, when the users
conduct a search in Google by entering one of those “keywords”, the ad can appear on the righthand side of the results of the search (it appears in the same search). In this way, the advertising
will only be shown to a public which is already interested in its good or service.
In reality, for any keyword typed into a search engine, two types of results are usually provided: a
range of sites relevant to the keyword (“natural results”) and, alongside (actually over them, above),
advertising of certain websites (“ads”). While natural results are provided according to objective
criteria, determined by the search engine, the results of the ads appear because the advertisers pay
for their websites to be displayed in response to certain “keywords”.
Case Law
Google Adwords or the non-infringing use of a third party’s trademarks
In this case, the advocate general of the European Court of Justice, Miguel Poiares Maduro,
issued his report indicating that the search engine Internet Google had not violated trademark
rights upon allowing advertisers to select and purchase, in AdWords, “keywords” coinciding
with the trademarks that do not belong to them. According to him, the use of the trademarks
has not gone beyond the selection of “keywords”, which is an internal AdWords procedure and
only relates to Google and to the advertisers.
When “keywords” are selected, no good or service is therefore being sold to the general public.
The service which is provided and to which the use of “keywords” corresponding to the
trademarks is linked, is therefore the actual service of Google, AdWords aimed at the advertiser.
Furthermore, he adds that the advertisers’ selection in AdWords of keywords which correspond
to trademarks can take place for many legitimate purposes (purely descriptive uses, comparative
advertising, product reviews, and so on). The consequence of considering that such selection
constitutes, in itself, a trademark infringement would be to preclude all those legitimate uses.
Case Law
Google Adwords or the non-infringing use of a third party’s trademarks
In relation to the fact that Google establishes a link between the “keywords” and the advertised
websites in which fake goods are sold, it is not considered that there is trademark infringement
either. According to Poiares Maduro, the mere fact that a list of relevant websites appears on
the screen in response to “keywords” is not enough to prove the existence of a likelihood of
confusion by the consumers in relation to the origin of the goods or services. “In order for such
a risk to exist, consumers would have to assume, from the mere fact that certain sites are
associated with such keywords, that those sites ‘originate from the same undertaking as the
trademark proprietors or, as the case may be, from economically linked undertakings’. Such a
risk of confusion cannot be presumed; it must be positively established”, indicates the Report.
The opinion of the advocate general is not binding for the Court of Justice. His function consists
of providing the judges with this motivated opinion (by means of the Report) on the issues
considered before the Court, in a public manner and with complete impartiality and independence.
The advocate generals do not form part of the Court’s deliberations. The judges are the ones
who must finally deliberate and adopt the final decision which will be issued in a subsequent
judgment. We will continue to inform on the matter.
Case Law
P2P sites: we’ll see each other in court
Several cases opened up in Spain against pages of P2P links (Peer-to-peer. Decentralized, it
does not have fixed clients or servers, but rather a series of nodes which behave simultaneously
as clients and servers of the other nodes of the network) must go to court, in which the
legitimacy or illegitimacy of these practices will be determined. In other words, if the arguments
of the cultural industry, which sustains that providing links is equivalent to publishing protected
content (and furthermore they make a profit from advertising) or those of the defenders of
these sites, who criticize the persecution of linking to other sites, are successful.
Until recently, it was patent among the various Provincial Courts. In some cases, the dismissal
of the corresponding case was decreed, whereas in others the appeal of the defense had been
dismissed and the start of the trial had been ordered. The balance is now inclined towards the
latter option.
It has been published by a ruling, of November 11, 2009, which sends the persons responsible
for “ps2rip.com” to court after dismissing their appeal.
The text of the ruling of the Court of Barcelona provides that “the issue is not pacific”, and
although it refers to the dismissal, it mentions opposite cases, such as (Provincial Court of
Murcia) as an example of the opposite.
Thus, the judge sees signs of offence against intellectual property, despite the fact that the page
does not host the files but is limited to providing links, and establishes that its activity could
fit into the definition of “public communication” included in Article 270 of the Penal Code.
Case Law
P2P sites: we’ll see each other in court
The Sharemula case
The “Sharemula” case, which existed, gave hope to the proprietors of webpages of links to P2P
file exchange sites.
However, several decisions of various provincial courts indicate that the legitimacy or not of
linking to download sites must be resolved in court. This is the case of “elitedivx.com”,
mentioned
previously, as well as other cases, such as the PCTorrent case (Zaragoza) and other similar cases,
which will undergo an oral proceeding in Bilbao and Malaga.
Case Law
The Lanzarote.com case: Geographical denominations per se cannot
be claimed as trademarks
On May 27, 2009, Commercial Court no. 1 of Las Palmas de Gran Canaria passed a judgment
in which it dealt with a subject which is frequently forgotten at the time of filing for the
registration of a trademark.
In this case, the problem arises due to the application of the Spanish trademark “Lanzarote”
for trademark classes 38, 39, 41 and 42, by the Council of Lanzarote.
As set forth by the judicial body, one of the absolute prohibitions of Article 5 of Trademark
Law in force is given by the impossibility of registering as trademarks the signs which are
exclusively made up of signs or indications which can serve in trade to designate the species,
the quality, the quantity, the destination, the value, the geographic origin, the season of
obtaining the good, of the provision of the service or other characteristics of the good or
service”.
Such prohibition is based on the peculiarity of geographical signs which, unlike those of
imagination, cannot, due to their nature, be instruments which can be used by all the citizens
and businessmen settled in the geographical area designated by the name, since it is the suitable
sign to indicate the geographical area of the goods.
Case Law
Lindt chocolate bunnies and trademarks registered in bad faith
Modern marketing trends seek to surprise the consumer with new types of marks which are
more striking for such consumer: sound marks, moving marks, three-dimensional marks, even
olfactory marks. In the food sector, especially, the use of packing, packaging or presentations
of goods (trade dress) which are used as a mark is frequent, insofar as they have a differentiating
character and the consumers associate them to a certain company and therefore they are
registered as such.
One of these marks, that of the gold bunny (Goldhase) of the Swiss chocolate company Lindt,
has been the object of the recent judgment of the European Court of Justice which, on June
11, resolved a detrimental issue set forth by an Austrian court, relating to the interpretation
of Article 51.1b) of the Regulation on the Community Trademark, upon establishing criteria
must be considered by the judges and courts of the member states of the EU to decide if a
company filing for the registration of three-dimensional community trademark is acting in bad
faith or not.
The central point of the issue lied in determining if Lindt, which manufactures its bunnies
since 1950, had acted in bad faith when it registered its Goldhase as a three-dimensional mark
in 2000 in the Community Trademark Office (OHIM), for the purpose of prohibiting its
competitors from manufacturing and selling this type of chocolate, which are a usual candy
since 1930 during Easter holidays in central Europe.
Case Law
Lindt chocolate bunnies and trademarks registered in bad faith
This was the opinion of the company Hauswirth, manufacturer since 1962, which was sued by
Lindt for the infringement of its trademark, and defended itself by arguing the bad faith of the
Swiss company which, knowing the use of similar signs by competitors who held a right acquired
in a member state, filed for the registration of the Community trademark to prevent them from
continuing its use.
In its judgment, the Court emphasizes that the bad faith of the applicant must be assessed in
an overall manner, taking into account all the relevant factors for each case.
Likewise, the nature of the trademark filed for can be relevant to appreciate the existence of
bad faith of the applicant: if the sign consisted of the shape and the overall presentation of the
product, the existence of the bad faith can be proved more easily if the freedom of choice of
the competitors is limited by technical or commercial considerations, such that the proprietor
of the trademark could prevent its competitors from not only using an identical or similar sign,
but also from marketing comparable goods.
Furthermore, in order to appreciate the existence of the bad faith of the applicant, consideration
may be given to the extent of the reputation enjoyed by a sign at the time when the application
for its registration as a Community trademark is filed. The extent of that reputation might
justify the applicant’s interest in ensuring a wider legal protection for his sign, without this
constituting an illegitimate conduct.
Case Law
Lindt chocolate bunnies and trademarks registered in bad faith
In view of these considerations, it is now the Austrian court which must assess whether Lindt
has acted in good or bad faith when registering its gold bunny trademark and whether,
consequently, the trademark is valid or invalid.
Legislatión
The European Order for Payment Procedure
In times like the present, in which arrears and non-payments are quite frequent, it is suitable
to remember the effectiveness and possibility of resorting to the European order for payment
procedure, established by Regulation (EC) number 1896/2006 since December 12, 2008, in
Spain and in the rest of the member countries of the European Union, with the exception of
Denmark.
It is a new procedure which, following the order for payment technique, allows creditors to
claim money debts and, if the debtor is not opposed, obtaining an instrument which will be
executable in any Member State, without needing to following an exequatur procedure in the
Member State of enforcement, or obtaining its prior certification as a European executable
instrument in the Member State of origin, because this new European procedure is designed
as a uniform procedure, in which the essential formalities are regulated in the same way for the
entire European territory.
Legislatión
The European Order for Payment Procedure
The procedure is very similar to the order for payment regulated in the Spanish Civil Procedure Law, although it also has significant
differences. Thus:
1. It is not subject to an amount limit, unlike the Spanish order for payment procedure, which can only be used to claim debts
which are not greater than 30,000 euros.
2. All the procedure is processed by means of pre-established forms, there being one form for the application of the claimant,
another one for the opposition of the defendant, and others for the different decisions which must be adopted by the court.
3. The interests and the costs can be claimed together with the principal of the debt. Nevertheless, the inclusion of the costs in
the request which, as stated above, is designed for certain amounts, overdue and payable on demand, poses certain difficulties.
4. It is not necessary to provide any document with the application. It is enough to make a list of the means of proof available.
5. The opposition of the debtor does not necessarily lead to a declaratory proceeding, but rather the creditor can voluntarily
exclude this consequence in his application. The debtor can oppose the order for payment without needing to justify his opposition.
GARRIDO PASTOR ABOGADOS is an enterprise 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 designs.
GARRIDO PASTOR ABOGADOS offers services in Spanish, English,
German and French.
Contributors to this News Letter:
Contact:
D. José Gabriel Garrido Pastor
C/ López de Hoyos, 78 Dpdo. – Bajo A. Madrid 28002
Teléfono: + 34 91 590 07 73
Fax:
+ 34 91 590 07 74
[email protected]
www.garridopastor.com
Abogado del ICAM y Agente de la Propiedad Industrial
D. Jesús Sánchez Silva
Abogado del ICAM y Prof. de Derecho Mercantil de la UAM y de la UOC