Friday, 21 October 2016

Brexit: Prospects for data protection

The decision made by the British people in the 23 June 2016 referendum has multiple consequences, many of them legal. Some have already been addressed, but the issue of what Brexit could mean for European citizens’ privacy and data protection rights has been pushed to the background.

The regulatory framework for data protection in the European Union conferred total freedom of circulation on data within the 28 Member States.  The United Kingdom’s exit from the EU, and consequently from that legislative environment, will therefore mean that its citizens will be considered as established in a third country, and issues such as those currently existing with the United States will have to be contended with.  Basically, sending data from any EU country to the UK will constitute an international data transfer, with the legal effects that this entails.
Obviously, given the importance of massive data processing for a company from any sector, the UK is not going to remain aloof from its former fellow Member States, since not interacting with the EU in this field would leave it out of the game in a sphere that is vitally important for the economy.   

This situation obviously gives rise to uncertainty -which will have to be cleared up by the British government in the coming months- concerning the decision to be made on the subject of data protection in the island State.

Friday, 7 October 2016

Increase in number of counterfeit goods seized by customs authorities in the EU in 2015

On 23 September, the European Commission published its report on the results of the border measures against infringement of industrial and intellectual property rights in 2015.

According to the report, in 2015 a total of 40,728,675 products suspected of infringing IP rights were seized at customs in the EU, representing a 14% increase with respect to the 35,568,982 products seized in 2014. The value of the goods seized in the EU in 2015 was more than 642 million euros.

In the case of Spain, the increase in the number of goods seized in 2015 was even greater: the number increased by 17% with respect to 2014 (1,893,019 products seized in 2015, compared with 1,619,264 products seized in 2014). Spain is still in the top 10 of EU countries with the largest number of items seized, specifically in 9th position.

The level of effectiveness of the border measures provided for under (EU) Regulation No. 608/2013 is very high: the goods detained were destroyed in 80% of cases, legal proceedings were undertaken in 9% of cases and the goods were only found to be genuine in 2.7% of cases.

China continues to be the main country of provenance of goods seized by customs in the EU (40%). By category, the main countries of provenance for the goods were the following: Benin (foodstuffs), Mexico (alcoholic beverages), Morocco (other beverages), Malaysia (body care products), Turkey (clothing), Hong Kong (mobile telephones and accessories, memory cards, computer equipment, CDs/DVDs and lighters), Montenegro (cigarettes) and India (medicines).

Products for daily use that could pose a danger to the health and safety of consumers (such as foods, beverages, toiletries, medicines, electrical appliances, toys, etc.) make up 25.8% of the total seizures.

The most used modes of transport, per number of seizures, are still postal and courier deliveries (77% of seizures), commonly in response to purchases made online.

The principal categories of goods seized in 2015 were cigarettes (27% of seizures), other goods, such as batteries, glue, furniture and lamps, manuals and other documents, magnets, pesticides, etc. (10%), toys (9%), labels, tags and stickers (8%) and foodstuffs (7%).

It is striking that labels, tags and stickers have risen to the top 5 on the list of goods seized in 2015, which would appear to confirm the latest technique used by criminal counterfeiting organizations of importing unbranded articles, separately importing branded labels and stickers and subsequently affixing the brands to the articles once in the EU. This technique was highlighted by Europol and the EUIPO in their 2015 Situation Report on Counterfeiting in the European Union of April 2015.

Author: Juan José Caselles

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Friday, 30 September 2016

Infringement of an EU trademark... but not in the whole of the EU

The Court of Justice of the European Union has recently delivered its judgment in case C-223/15, combit Software (judgment of 22 September 2016, ECLI:EU:C:2016:719) concerning the interpretation of the unitary character of the European Union trademark in relation to the scope of infringement actions against confusingly similar signs.

In the case that prompted the Oberlandesgericht Düsseldorf to make a reference for a preliminary ruling, that court considered that a company’s use of the word sign “Commit” for computer programs gave rise, on the part of the average German-speaking consumer, to a likelihood of confusion with the EU trademark “combit”.  However, in the German court’s view, there was no such likelihood of confusion on the part of the average English-speaking consumer, who could easily understand the conceptual difference between the English verb “to commit” and the term “combit”, comprised of the letters “com” for computer and “bit” for binary digit.

In those circumstances, the Oberlandesgericht Düsseldorf asked the CJEU for guidance as to which of those two consumer groups should be taken into account in order to assess the likelihood of confusion, and whether the EU trademark should be considered as infringed throughout the whole of the EU or whether the Member States should be differentiated individually.  

In response to the referring court’s question, the CJEU indicated that where there is a likelihood of confusion in one part of the European Union, it must be concluded that the EU trademark has been infringed, even if that likelihood of confusion does not exist in other parts of the EU. This solution is in keeping with the approach followed for oppositions to EU trademark applications, where the existence of a likelihood of confusion with an earlier trademark in one part of the European Union will suffice in order for the application to be refused.     

The Court of Justice nevertheless goes one step beyond the question referred by the German court and analyses the consequences of the declaration of infringement. Here, the CJEU is supported by the case-law established in its earlier judgment of 12 April 2011, DHL Express France (C-235/09, ECLI:EU:C:2011:238).  In that judgment, the Court of Justice had ruled that a prohibition on proceeding with acts which infringe or would infringe an EU trademark must, as a rule, extend to the entire area of the EU.  However, it established the exception (paragraph 48 of the judgment) that where the defendant proves that the use of the sign at issue does not affect, particularly on linguistic grounds, the functions of the trademark in part of the EU, the EU trademark court must limit the territorial scope of the prohibition that it issues.

Based on that reasoning, the Court of Justice has now concluded that in a situation such as the one raised by the Oberlandesgericht Düsseldorf, the EU trademark court must issue an order prohibiting use of the infringing sign for the entire area of the European Union with the exception of the part in respect of which there has been found to be no likelihood of confusion. In the CJEU’s opinion, this solution, which initially seems to contradict the principle of the unitary character of the EU trademark, is imposed by the need for exclusive rights to be exercised only in cases where the use of a similar sign by a third party adversely affects the functions of the trademark.

Author: Carlos Morán

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Monday, 8 August 2016


Please be informed that certain letters have been detected in which the addressees are informed that they have won a (fake) lottery prize and that a law firm is responsible for the process of verifying the payment of the lottery prize. To claim the prize, addressees are asked to send to a stated fax number their bank details, a copy of their passport and their telephone number.

Please note that these letters use the names and addresses of professional law firms, with false stamps and letterheads. In the event of any such letter purportedly being sent from ELZABURU SLP, we wish to state that our firm has no connection whatsoever with the parties sending the letters and does not undertake any kind of verification work in relation to the fake lottery prizes. 

Any parties receiving such letters should therefore refrain from providing any of the requested information and should notify their country’s relevant authorities of the attempted fraud.

Should you have any further questions, you may contact us as follows:

Tel.: +34 91 7009400
Fax: +34 91 3193810

Author: Elzaburu SLP

Wednesday, 3 August 2016

Confirmed! The holders of licenses in Community designs may also bring claims themselves even though the license has not been entered in the register

Only some months after having given a ruling (case C-163/15)  to the effect that the holders of licenses in Community trademarks (or, rather, “European Union trademarks”, as they now are)  were entitled to bring actions for infringement against third parties even though their licenses had not been entered in the register, the Court of Justice of the European Union was asked to give a preliminary ruling on whether the holders of licenses in Community designs (as they are still called) in turn had that right.

The CJEU has given its judgment in case C-419/15 which stemmed from a request for a preliminary ruling made by the Oberlandesgericht Düsseldorf (the German court of appeal) in connection with a dispute between two German companies. The first of the two, the plaintiff, was the holder of an exclusive unrecorded license in a Community design. The defendant was the distributor of a product which allegedly infringed that design.

In these circumstances the German court referred the following questions to the CJEU: 
  • May a licensee who has not been entered in the register bring claims for infringement of the rights in a registered Community design? 

  • In the affirmative, may the exclusive licensee also bring an action claiming damages on its own, or may it only intervene in an action brought by the rightholder itself?

Friday, 29 July 2016

Recent creation of EUROPOL's Intellectual Property Crime Coordinated Coalition (IPC3)

On 12 July 2016 EUROPOL’s headquarters in The Hague witnessed the launch of the Intellectual Property Crime Coordinated Coalition (IPC3).
This organization constitutes the EU’s response to offences against intellectual property and stems from the joining of the strengths of EUROPOL and the EUIPO in this area.

The IPC3 arose out of a strategic agreement between EUROPOL and the EUIPO signed in 2013. It has been incorporated into the current structure of EUROPOL and receives financial support from the EUIPO in the amount of 500,000 euros per year.

The organization provides technical and operational support for law enforcement agencies and other partners both inside and outside the EU by:
  • a) facilitating and coordinating cross-border investigations;
  • b) monitoring and reporting on trends in on-line offences and watching for the appearance of new modus operandi;
  • c) improving the harmonization and standardization of legal instruments and operating procedures to fight intellectual property crime globally;
  • d) reaching the public and law enforcement agencies by enhancing awareness and providing training in this specific area of knowledge. 

The creation of the IPC3 is more than warranted if we consider the impact of counterfeit or pirated goods within the EU, which account for 5% of imports with a total value of 85,000 million euros. The fight against offences of this nature has to be given priority in order to provide consumers with protection against dangerous or defective products and to tackle the organized criminal networks engaging in these illicit activities which are frequently also linked to other serious forms of transnational crime (smuggling, illegal immigration, labour exploitation, tax evasion, money laundering, financing terrorist activities, etc.).

The Joint Task Force Observatory EUIPO-INTA of INTA’s EU Anti-Counterfeiting Subcommittee, of which ELZABURU forms part, had for some time been strongly advocating the setting up of a specific organization within EUROPOL to combat crime of this nature.

Author: Juan José Caselles

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Tuesday, 19 July 2016

Brexit in IP? Not so fast

The decision of the United Kingdom to “withdraw from the Union” – in the language of the much mentioned article 50 of the Treaty on European Union – appears to have opened up The Gate of the Hundred Sorrows, to borrow the title of the story by the British writer Rudyard Kipling. Lamentations and cries of alarm abound. However, the fact is that the gate is not open yet (the UK has not notified the European Council of its intention and will probably take some time to do so) and it remains to be seen on what conditions the withdrawal will take place and, therefore, what degree of suffering it may actually cause.

As regards intellectual property it is clear, at least on paper, that the withdrawal of the UK will test the strength of the systems so laboriously constructed over more than half a century to achieve unification and harmonization in the fields of trademarks, designs, geographical indications, designations of origin, plant varieties, trade secrets and patents. Trademarks and designs registered at the European Union Intellectual Property Office (EUIPO) in Alicante will cease to have effects in the UK and means will have to be put in place to determine what will happen to the existing registrations and the applications under prosecution. A similar situation will arise with regard to geographical indications, designations of origin and plant varieties, while the harmonization of trade secrets which was recently agreed upon will not be applicable in the UK.

The European patent with unitary effect, a project to which Spain has not adhered, loses one of its most prominent partners. A future unitary protection for patents will no longer be able to extend to the UK. In addition, the proposed International Agreement on a Unified Patent Court will require a different form of ratification and will also need to be reworked, given that London was the seat chosen for one of the three sections of the Central Division: that dealing with chemistry, metallurgy and life sciences.

While companies will have to assess, within the context of their intangibles strategies, the impact that opting for systems which leave out so relevant a territory may have, there would not appear to be any need, for the moment, to take decisions hurriedly. It is true that when the time comes the unitary effect of the trademarks and designs and the actions of the courts of the EU will no longer extend to the UK, but that is the way it used to be not too long ago and companies and practitioners were able to live with that situation.

However, the departure of the UK will also have consequences which are less foreseeable but could prove of undoubted importance for industrial property and also for copyright. It is undeniable that in many sensitive areas the UK embodied a manner of seeing things which on no few occasions conflicted with the more European or continental view. The tensions between the two visions of intellectual property, or even of unfair competition, emerged plainly in the very gestation of Community law and in the interpretation thereof by the Court of Justice. Upon the waning of the British influence, the situation could change in the future and the delicate balance which has been achieved in certain areas could be lost for ever. 
To conclude, as we began, by quoting (loosely) from a work by Kipling, on this occasion his famous poem “If”, in the phase which is now commencing the European Union will need to endeavour to keep its head when all about are losing theirs, and watch the things it gave its life to, broken, and stoop and build ‘em up with worn-out tools.

Author: Luis Baz

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