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ANNUAL REVIEW 2015 EUROPEAN CASE-LAW ELZABURU, S.L.P. Madrid 2016 ANNUAL REVIEW 2015 EUROPEAN CASE-LAW E L Z A B U R U
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First edition: March 2016 For the fifth year running, our Firm is delighted to share ELZABURU's
Annual Review of European Intellectual Property Case-Law with
our clients and colleagues in the profession.
On this occasion, the selection of judgments covers a total of 35 casesresolved by the Court of Justice of the European Union, the SpanishSupreme Court and the Community Trademark and Design Court withits seat in Alicante. The common denominator in all those cases is none other than thesupranational nature of the interests and rights at stake and theEuropean perspective underlying the proceedings that have beenanalysed. The format of this Review, now with five years under its belt,enables readers to go straight to the practical reality of the case-law,i.e., following a simple and non-scientific approach. The Review is the result of the collective effort of a team of writers whounderstand that this altruistic work is also part of the Firm's professionalcustomer service. We would, of course, like to thank all those who explore the pages ofthis Review.
Managing Partner ELZABURU EDITORIAL COMMITTEE
Manuel Desantes (President), Antonio Castán, Jesús Gómez Montero,Carlos Morán, Elisa Prieto Castro.
Enrique ARMIJO CHAVARRI, María CADARSO, Juan José CASELLES,Antonio CASTÁN, Manuel DESANTES, Fernando DÍAZ, Cristina ESPÍN,Patricia GARCÍA, Carolina GARCÍA DE LA RASILLA, Jesús GÓMEZMONTERO, Pablo HERNÁNDEZ, Alba Mª LÓPEZ, Patricia MARISCAL, CarlosMORÁN, Joaquín ROVIRA, Transi RUIZ, Pedro SATURIO, José Ignacio SANMARTÍN, Ana SANZ.
Translation: Emma J. TWEEDALE, Russell SACKS (comentarios 1, 4 and 20) E L Z A B U R U
EUROPEAN CASE-LAW INTELLECTUAL PROPERTY E L Z A B U R U
EUROPEAN CASE-LAW INTELLECTUAL PROPERTY 1. "In  dubio  pro  reputation".  Judgment  of  the  Court  of n n n 1. BACKGROUND. On 9 February 2010 the Spanish company The
English Cut S.L. filed application for the trademark THE ENGLISH CUT
(word) for clothing, etc. in Class 25. Spain's large El Corte Inglés
department store filed opposition citing their Spanish trademark for EL
CORTE INGLÉS (word) and several Community trademarks for EL CORTEINGLÉS (figurative) having coverage in various classes, including goodsin Class 25. Article 8(1)(b) (likelihood of confusion) and Article 8(5) CTMR (trademark having a reputation) were cited as grounds forthe opposition. The opposition was rejected and the subsequent appealdismissed.
The OHIM Board of Appeal basically held that there was no phoneticor visual similarity between The English Cut and El Corte Inglés. All thatexisted was a minimal degree of conceptual similarity, and given thatthe trademarks differed overall, Article 8(1)(b) CTMR was not infringed.
The Board of Appeal further found that El Corte Inglés had failed to demonstrate any actual or potential detriment to their trademark andhence also held that Article 8(5) CTMR was not infringed.
E L Z A B U R U
A subsequent appeal to the General Court was dismissed. The GeneralCourt agreed that the marks were different overall. Further, while theGeneral Court recognized the considerable reputation enjoyed by theEl Corte Inglés marks, it ruled that Article 8(5) CTMR did not apply,because the trademarks in dispute were not similar.
n n n 2. FINDINGS. The Court of Justice accepted El Corte Inglés' appeal
and set aside the General Court's judgment on grounds that it had erred
in law "in so far as it was held … that it was apparent from the fact that
the degree of similarity between the signs at issue was not sufficient toresult in the application of Article 8(1)(b) CTMR that the conditions forthe application of Article 8(5) CTMR were therefore also not satisfiedin the present case".
As a consequence, the case was referred back to the General Court for afresh decision as to "whether that degree of similarity, albeit low, was not sufficient, on account of the presence of other relevant factors such as therenown or reputation of the earlier mark, for the relevant public toestablish a link between those signs, for the purpose of Article 8(5) CTMR". n n n 3. REMARKS. This judgment provides an excellent opportunity for
us to recapitulate the basic principles for applying Article 8(5) CTMR and
hence for protecting trademarks that have a reputation. The
applicability of Article 8(5) depends on three conditions, all of which
need to be fulfilled. First, the conflicting trademarks need to be
identical or similar. Second, the earlier mark must have a reputation.
And third, use without due cause of the trademark applied for should
take unfair advantage of, or be detrimental to, the distinctive character
or the repute of the earlier trademark.
The important point in this judgment is the finding that the degree ofsimilarity between trademarks, even if insufficient to fulfil therequirements of Article 8(1)(b) CTMR, cannot necessarily be deemedinsufficient to fulfil the requirements of Article 8(5) CTMR, and it maythus still be possible to benefit from the protection accorded totrademarks having a reputation as provided for in this latter Articleeven where the trademarks in dispute have a low degree of similarity The Court of Justice also issued an important finding regarding the linkto be drawn between the signs by the relevant public pursuant to Article 8(5) CTMR, i.e. the harm referred to in Article 8(5) CTMR doesnot require consumers to establish an immediate connection betweenthe signs.
The Court of Justice's findings are, to our mind, most apposite, and thisleads us to encourage the courts and other bodies competent to decideon trademark matters to consider a principle that I propose shouldbecome a pillar of trademark law. Just as the principle of "in dubio proconsumer" holds sway in consumer protection and advertising law, inmatters involving assessment of the bar to registration laid down inArticle 8(5) CTMR, why not follow a similar principle, one that might be worded as "in dubio pro reputation". Jesús GÓMEZ MONTERO
2. Coercive  compensation  for  breach  of  a  court  order  for Community  trademark  infringement.  of  the Community  Trademark  and  Design  Court  of  8  October2015.
n n n 1. BACKGROUND. This Order stems from legal proceedings for
Community trademark infringement brought by Unión de Cosecheros
de Labastida S.L. against Bodegas y Viñedos Puerta de la Bastida S.L.
The defendant had been ordered to cease use of the sign "PUERTA DELA BASTIDA" on wines and to remove any products, advertisingmaterial or media on which that sign appeared from the market.
During the ensuing enforcement proceedings, the Court ordered thejudgment debtor to cease use of "PUERTA DE LA BASTIDA" within a period of one month and, in particular, to "cancel" a domain name.
Following various formalities, the Court set coercive compensation for E L Z A B U R U
the delay in complying with the order at 37,200 Euros (at a rate of 600Euros per day). The Court upheld the appeal lodged against thatdecision and revoked the damages. n n n 2. FINDINGS. The Court commenced by referring to general
doctrine on coercive compensation, i.e., the damages awarded per day
that elapses until the defendant complies with a court order. In that
regard, the judgment pointed out the following: "Two scenarios are
required in order for coercive compensation to be established, namely:
a) the judgment handed down in the trademark infringement
proceedings must contain an order to cease the infringing acts; and b)
the infringing acts must not have ceased. Where those requirements
are met, and once the judgment enforcement procedure is underway
(since according to the aforementioned provision, the amount of the
compensation must be established at the judgment enforcement stage),
the court will award coercive compensation (since the purpose of sameis to encourage the judgment debtor to cease the infringing acts) tothe judgment creditor under the following circumstances: a) theminimum amount of the damages shall not be lower than 600 Eurosper day; b) the dies a quo (the day as of which the compensationrequirement comes into play) shall be established at the enforcementstage; and c) the dies a quem shall be the day on which theinfringement effectively ceases". In the case under analysis, coercive compensation had been ordered dueto the defendant's delay in cancelling the domain name associated withits sign. The Court nevertheless considered that a number ofcircumstances precluded damages of that nature, namely: (i) the orderfor infringement did not contain a specific finding relating to thedomain name; (ii) the defendant, when ordered to cancel the domainname, redirected the website's content to another website; (iii) thedefendant demonstrated that it could not surrender the domain namedue to administrative issues beyond its control; and (iv) during thejudgment enforcement procedure, the defendant came to anagreement with the plaintiff regarding the assignment of the domainname. In those circumstances, the Court declared as follows: "the aim ofcoercive compensation, once the terms of the order to cease theinfringing acts are clear (or can easily be inferred from the terms of the legal proceedings), is to encourage the judgment debtor, who hasvoluntarily and consciously ignored those terms, to respect them. Ittherefore calls for a conscious reluctance to comply with the ordercontained in the judgment in respect of putting a halt to theinfringement of the other party's trademark. In accordance with theabove reasoning, there is no such conduct here, since the order did notcontain any reference whatsoever to the cancellation of the domainname (of which the plaintiff was aware before it filed the complaint),and afterwards, once the operative part of the judgment was specifiedat the enforcement stage with an order to cancel the domain name, itwas impossible for the defendant to comply with that order due toorganisational issues experienced by the service that were beyond thedefendant's control. That party had nevertheless acted diligently (sinceit had repeatedly asked the service provider to cancel the domain name) and had also, some time earlier, taken action aimed at preventingdamage from being sustained by the trademark holder by clearing thecontent of the website". n n n 3. REMARKS. Few judgments examine the application of coercive
compensation. It is a particularly important way in which to deal with
reluctance to comply with an order to cease acts of trademark
infringement. Imposing compensation for each day that goes by until a
court order is obeyed bolsters the effectiveness of the judgment and
gives meaning to the principle of legal certainty. However, the law
barely touches on the obligation to pay such compensation or the
amount which may be claimed per day.
This judgment clears up some previously unanswered questions and
shows that the judgment debtor's attitude can act as a kind of
"extenuating circumstance" when it comes to assessing the feasibility
of coercive compensation. Antonio CASTÁN
3. Product  shape  and  acquired  distinctive  character.
n n n 1. BACKGROUND. Nestlé applied to the UK Trademark Office for
registration of the shape of Kit Kat chocolate bars as a trademark:
E L Z A B U R U
Cadbury UK Ltd. opposed the application on the grounds that the markwas devoid of distinctive character and was subject to the bar toregistration of signs consisting exclusively of the shape imposed by thenature of the product and of the shape necessary in order to obtain atechnical result. The Trademark Office accepted the opposition on thegrounds that it had not been sufficiently demonstrated that the markhad acquired distinctive character. It considered that the shape inrespect of which registration was sought had three features, namely: – The basic rectangular slab shape; – The presence, position and depth of the grooves running along the length of the bar; and – The number of grooves, which, together with the width of the bar, determine the number of ‘fingers'. As far as the UK Trademark Office was concerned, the first of thosefeatures was the shape resulting from the very nature of the goodsclaimed (except in respect of cakes and pastries), and the remaining two were necessary in order to obtain a technical result. This decision was appealed in the High Court of Justice of England andWales, which made a reference for a preliminary ruling. n n n 2. FINDINGS. The CJ first of all examined the issue regarding the
possibility of cumulatively applying the bar to registration of signs
consisting of the shape of the product when that shape is imposed by
the nature of the product and when it is necessary in order to obtain a
technical result. In the Court's view, the fact that a shape may
simultaneously be subject to several grounds for refusal is irrelevant
and, in order to refuse the application for registration, it will suffice forjust one of those grounds to apply fully to the shape in question.
Secondly, the Court resolves the issue of whether the bar to registrationof shapes that are necessary in order to obtain a technical result referssolely to the way in which the goods function, or whether it also applies to their method of manufacture. In that regard, the CJ considers thatthe relevant perspective here is that of the consumer, for whom themanner in which the goods function is decisive and their method ofmanufacture is not important. It therefore holds that the bar toregistration does not apply to the way in which the product ismanufactured. Lastly, the CJ analyses the issue of the acquisition of distinctive characterthrough use and the proof that the trademark holder must furnish inorder to demonstrate this. In that regard, the CJ holds that in order toacquire distinctive character through use, it is not necessary for thetrademark to be used alone; rather, it can be used as part of a registered trademark or in conjunction with another mark. It nevertheless points out that the essential condition is that as aconsequence of the use, the mark may serve to identify, to the relevantsectors, the business origin of the goods. In order to satisfy thatrequirement, the applicant of the trademark registration must provethat the mark alone, regardless of any other elements accompanying it in trade, identifies the particular undertaking from which the goodsoriginate. n n n 3. REMARKS. With respect to the first issue, the CJ reiterates the
doctrine established in the recent Hauck ruling,the Tripp-
Trapp chair), in the sense that the three particular grounds for refusal
of registration of product shapes are independent and must be applied
separately. As the Advocate General explained in hiswhat
the CJ precluded in the Hauck judgment was the possibility of applying
the three different grounds for refusal in combination, but not the
possibility of applying them cumulatively, provided that at least one of
those grounds fully applied to the sign in question.
The issue of distinctive character acquired through use touches on aninteresting aspect that regularly crops up in cases concerning marksconsisting of product shape. Such marks are almost always presented inthe market in conjunction with word or composite marks. This is alsothe case with Kit Kat, which has always been marketed in packaging E L Z A B U R U
with a distinctive logo, and with the term Kit Kat engraved on the fourfingers comprising the chocolate bar: In order to settle this issue, the CJ relies on the criteria followed inNestlé,and Colloseum Holding,ccording to whichin order for a trademark to acquire distinctive character through use, itis not necessary for it to have been used separately; rather, its use aspart of another mark or in conjunction with that mark is also accepted.
However, the trademark holder must bear the burden of proving thatthe mark alone, without the other marks that accompany it in trade, isdistinctive. In practice, the most direct way of satisfying this requirement will beby means of a survey, in which those surveyed will be shown a productmarked exclusively with the sign for which registration is sought,without the additional elements that usually accompany it in trade. This was done by both Nestlé, in the national proceedings which gave rise
to this judgment, and Levi Strauss, in the proceedings leading to the
Colloseum judgment. Carlos MORÁN
n n n 1. BACKGROUND. The Court of Justice has ruled on a request for
a preliminary ruling referred by a Hungarian court touching on the
territorial effect of the reputation of a Community trademark under
Article 4.3 of(refusal of a trademark application conflicting with an earlier Community trademark having a reputationbut covering different goods). In the case before the Hungarian court referring the question for aruling, an earlier Community trademark cited in opposition to a latertrademark application had a reputation in the United Kingdom andItaly but not in Hungary, where the new application had been filed. TheHungarian court viewed the issue as displaying certain similarities withthe controversy surrounding the matter of use of Communitytrademarks and the territorial extent of use that might be deemedsufficient, a question already adjudicated on by the Court of Justice,chiefly in CasLeno).
Ultimately, the case in question hinged on the issue of whether thereputation of a Community trademark in certain EU countries could alsobe relied on and have legal effect in other EU countries in which the trademark was not reputed. n n n 2. FINDINGS. In a well-reasoned decision, the Court ruled
explicitly:
1. If the reputation of an earlier Community mark is established in a substantial part of the European Union, which may in somecircumstances coincide with the territory of a single Member State,the said earlier Community trademark is to be held to have areputation in the European Union as a whole.
2. The principles concerning genuine use of Community trademarks laid down by the case law are not necessarily relevant for thepurpose of establishing the existence of a reputation.
3. A Community trademark having a reputation may benefit from the extended protection conferred on reputed marks by the Directiveeven in a Member State in which it does not enjoy a reputation,where it is shown that a commercially significant part of the publicis familiar with the mark and makes a connection between it andthe later national mark and there is either actual and present injuryto the Community trademark or there is a serious risk that such injuryenjoy may occur in the future.
n n n3. REMARKS. The Court thus clearly held that an earlier
Community trademark having a reputation may enjoy the extended
protection conferred on reputed trademarks even in those countries in
E L Z A B U R U
which it is not considered reputed, provided that certain conditionsrelating to serious risk of and actual and present injury are fulfilled, asthe case law had in fact already been requiring even in territories wherethe reputation of an earlier mark is beyond question, for instance, inthe judgments in Case(General Motors) andRoyalShakespeare).
Accordingly, the judgment has been well received by the owners ofreputed trademarks, which may thus benefit from enhanced protectioneven in EU countries in which, strictly speaking, their trademarks arenot reputed, even though the need to prove serious risk of or actual and present injury in the territory concerned could, in practice, prove
to be an obstacle to enforcing reputation. José Ignacio SAN MARTÍN
n n n 1. BACKGROUND. The Kraft group filed proceedings against the
company Gullón for trademark infringement and unfair competition.
The complaint was based on the Community and national trademarks
registered by Kraft in respect of the following cookie shapes and trade
dress:
The action was directed against Gullón's marketing of the followingtwo designs of cookie packaging: In its defence, the defendant made a number of peremptory pleas(arguing res judicata and the statute of limitations), and filed acounterclaim seeking revocation of one of the trademark registrationsfor non-use. The appeal judgment partially upheld the complaint and orderedGullón to pay the sum of 323,450 Euros as compensation for damages.
The Supreme Court overturned the judgment and acquitted thedefendant.
n n n 2. FINDINGS. The Supreme Court first of all analysed the
counterclaim on grounds of non-use that Gullón had filed against
Kraft's figurative three-dimensional trademark consisting of a drawing
of a sandwich-shaped cookie. Kraft had, in fact, been using that
trademark in conjunction with the term "Oreo", displayed in the centre
of the cookie, and that word/device combination had been registered
as a separate trademark. In the Court's view, this showed that the mark
was being used in a manner that differed from the way in which it had
been registered, since without the term "Oreo", the three-dimensional
shape of the original trademark was "devoid of distinctive character".
The Court then examined whether the packaging of the defendant's"morenazos" cookies infringed Kraft's packaging trademark for its"Oreo" cookies by taking unfair advantage of the well-known characterof that trade dress. The judgment referred to case-law from the Courtof Justice of the European Union according to which, in order toconsider such infringement to have occurred, it is necessary for therelevant public to establish a "link" between the sign and the mark witha reputation. E L Z A B U R U
The Court considered that in this case the well-known character ofKraft's trademark lay in the word element (Oreo), which is highlyprominent on the packaging due to the size of its lettering. Therefore,"the absence of that term from the defendant's packaging, and the factthat no terms that are similar to it or that evoke it have been included,means that the similarity of the remaining components of thepackaging that constitutes the three-dimensional mark in question isnot sufficient for the purpose of producing a link that enables unfairadvantage to be taken of the well-known trademark". The Court then examined whether Gullón's marketing of its cookiescould constitute an act of unfair competition due to confusion withregard to the flow pack trade dress of Kraft's ChipsAhoy! cookies. In that regard, the judgment commenced with the following warning:"the fact that in the assessment of confusion conducted pursuant tof the Spanish Unfair Competition Act it is often stated that theuse of different word elements in trade dress, some of which are highlydistinctive, prevents a likelihood of confusion among consumers fromarising is one thing; the fact that the use of different word elementsgenerally prevents a likelihood of confusion from arising is anotherthing entirely". The judgment is clear on that point: "Different namescan be used, and nevertheless, the similarity of the packaging, due toits shape, size and colour combination, can give rise to a likelihood ofconfusion among average consumers". However, when applying that doctrine to the case in question, thejudgment points out that "this is not the case here, since thedistinctiveness of ChipsAhoy! and its prominent position on Kraft'spackaging is such that, even if the defendant's packaging were similar,the absence of the term ChipsAhoy! and the mention of a generic namefor the product (Cookies) will prevent a likelihood of confusion fromarising among consumers, even in the form of a likelihood ofassociation, with respect to the manufacturer of ChipsAhoy!" The Court dismissed the unfair competition action based on exploitationof another's reputation that Kraft had also filed against Gullón'spackaging for cookies on similar grounds. In that regard, the Court pointed out: "In this case, in order for the unfair competition act tohave been perpetrated by the defendant. it would have been necessary to demonstrate that the packaging (without the mention ofChipsAhoy!), which is similar to that used by the plaintiff, encapsulatedthe reputation or prestige of the ChipsAhoy! cookies, and that had notbeen demonstrated. It is actually the ChipsAhoy! sign whichencapsulates that reputation or prestige, and so the use of that sign ora similar one that free rode on its prestige would warrant theconsideration that unfair advantage had been taken of another'sreputation". n n n 3. REMARKS. There are judgments that are harmful because of
how they can be interpreted rather than because of the findings that
they actually contain. The simplistic message that can be extracted from
some isolated findings does not always coincide with the doctrineactually applied by the court in view of the specific facts that aredebated in the case. Furthermore, it should be borne in mind that thecourt is called upon to resolve each case on the basis of the materialthat the parties submit for consideration, not in light of an allegedgeneral interest or doctrinal premises. A simplistic interpretation of this judgment by the Supreme Courtwould jeopardise the possibility of pursuing confusing imitation ofmany three-dimensional trademarks and products. It would simplysuffice to change the word element in order to ensure that the courtruled against the existence of imitation. However, that is not thereflection that this judgment should inspire.
By observing the images of the conflicting trade dress and carefully
reading the findings of the judgment, it can be perceived that, in the
Court's view, this case moves away from general doctrine according to
which changing the name on similar products or packaging designs
does not rule out a finding of confusion. The problem in this case is that
the word element plays an extremely important role in the mark overall,
and it is that element which, over and above all others, epitomises the
well-known character of the sign. Antonio CASTÁN
E L Z A B U R U
6. The  meaning  and  pronunciation  of  a  Community n n n 1. BACKGROUND. The factors to be taken into account when
assessing the likelihood of confusion between two trademarks are
ordinarily clear, for instance, the degree of similarity between
trademarks and between the goods/services covered. It is also clear that
when the similarity between trademarks is being evaluated, three
factors, aural similarity, visual similarity, and conceptual similarity, are
to be taken as a three-fold basis for the assessment.
These, in short, make up the factors with which all IP professionals arefamiliar and which are applied when examining the likelihood ofconfusion. But what about trademarks written in a language that is notan official language of the European Union? Should the assessment alsotake into account the meanings of the words and even how they arepronounced in their language? What interpretation should be given toArt. 9.1 (b) of thconcerning theright of the holder of a Community trademark to prevent use of any sign that gives rise to a likelihood of confusion on the part of thepublic? In this specific case, the Community trademarks concerned contained Arabic words written in both the Latin and Arabic scripts and werevisually very similar. By contrast, if compared in Arabic, the trademarksdisplayed major phonetic and visual differences, in that they weresubstantially unalike in terms of meaning and pronunciation.
At the same time, the goods sold under these Community trademarkswere food products that were essentially Arabic in origin, and so therelevant public necessarily consisted of Muslim consumers with a basicknowledge of written Arabic. The assessment of the likelihood of confusion can vary substantiallyaccording to whether or not account is taken of knowledge of theforeign language, and so the Commercial Court of Brussels decided tostay the proceedings and make a reference for a preliminary ruling tothe CJ regarding whether Art. 9.1 (b) of the Regulation should beinterpreted as meaning that, in the assessment of the likelihood ofconfusion between a Community trademark and a sign, factors such asthe meaning and pronunciation of the words in a language that is notan official EU language should be taken into account in cases where therelevant public is deemed to have a basic knowledge of that language. n n n 2. FINDINGS. In view of those circumstances, the CJ came to the
conclusion that "Article 9(1)(b) ofC) 207/2009 of
26 February 2009 on the Community trade mark must be interpreted as
meaning that, in order to assess the likelihood of confusion that may
exist between a Community trade mark and a sign which cover identical
or similar goods and which both contain a dominant Arabic word in
Latin and Arabic script, those words being visually similar, in
circumstances where the relevant public for the Community trade mark
and for the sign at issue has a basic knowledge of written Arabic, themeaning and pronunciation of those words must be taken intoaccount".
It also considered that if those factors were not taken into account, "theassessment of the likelihood of confusion could be made only partially and, as a result, without taking into account the overall impressionmade by the Community trade marks and the sign considered on therelevant public". n n n 3. REMARKS. The Community Trademark Regulation does not
establish any legal concept of public. The closest thing to a definition
of that concept can be found in CJ case-law, according to which the
relevant public is comprised of consumers of the goods or services
protected by the Community trade mark who are reasonably well
informed and reasonably observant and circumspect. Also, in previous
cases the Court has drawn a language-based distinction between
consumers, which in many cases is considered to be an important factor
in the assessment of the likelihood of confusion.
E L Z A B U R U
It therefore follows from the above that trademark legislation cannotbe interpreted as imposing any limitations or restrictions whatsoeveron taking account of factors such as the meaning or pronunciation of atrademark in a language that is not an official EU language whenassessing the likelihood of confusion if, as is the case here, the relevantpublic, under normal circumstances, can be deemed to have aknowledge of that language. This judgment is closely in keeping with the social and economicsituation in the European Union, a market that encompasses consumersof all nationalities and ethnic groups. Taking account of the knowledge of relevant consumers, whether European or otherwise, is certainly the
decision that makes the most sense. Joaquín ROVIRA
7. The  scope  of  the  exclusive  right  conferred  by  national n n n 1. BACKGROUND. The reference for a preliminary ruling was made
within the context of legal proceedings between Rosa dels Vents
Assessoria, S.L. ("Rosa dels Vents") and U Hostels Albergues Juveniles, S.L.
("U Hostels") regarding action filed by Rosa dels Vents for infringement
of its earlier trademarks through U Hostels' use of a later trademark
registration for a stylised presentation of the word mark "UH".
In its defence statement against Rosa dels Vents' action, U Hostelsargued that Rosa dels Vents had not brought action seeking theinvalidity of its trademark registration. In view of that situation and thecontradictions between Spanish Supreme Court and CJ case-law in Fédération Cynologique Internationale), Madrid Mercantile Court no. 3 decided to stay the proceedings and refer thefollowing question for a preliminary ruling: "Should Article 5(1) of Directive 2008/95 be interpreted as meaning thatthe exclusive rights of the proprietor of a trademark to prevent all thirdparties from using, in the course of trade, signs which are identical withor similar to his trademark extends to a third-party proprietor of a later trademark, without the need for that latter mark to have been declaredinvalid beforehand?" n n n 2. FINDINGS. In its Order, the CJ began by analysing the judgment
that had been rendered in Fédération Cynologique Internationale
After setting out the considerations that served as a basis
for the CJ's interpretation of Art. 9(1) of th stated that they were relevant for interpreting the scope
of the exclusive right conferred by trademarks that have been
registered in a Member State or at the Benelux Office for Intellectual
Property, or that have been registered under international
arrangements which have effect in a Member State, as harmonised by

Art. 9(1) of the Regulation and Art. 5(1) of the Directive both confer anexclusive right on the holder of a registered trademark, and they entitlethat holder to prevent "any third party", where consent has not beengiven, to use, in the course of trade, signs likely to have an adverseeffect on their mark. No distinction is made as to whether or not thosethird parties are holders of a trademark.
According to the CJ, a provision such as of the SpanishTrademark Act, which prohibits "third parties" from use, is worded in a matter analogous to the EU measures at issue, and it is therefore for the national court to apply that article in a manner consistent with Art.
5(1) of the Directive, as interpreted by the CJ.
Moreover, the CJ considered it to be clear from the wording of Art. 9of the Directive (analogous to Art. 54 of the Regulation) that untilinvalidity in consequence of acquiescence occurs, the holder of atrademark is authorised to request that the later mark be declaredinvalid or to oppose its use by means of infringement proceedings. The CJ lastly points out that there is no provision of the Directive thatlimits the exclusive right of the trademark holder in favour of a third-party holder of a later mark. It is therefore clear from the wording of Art. 5(1) of the Directive thatthe holder of a trademark must be able to prohibit its use by the holderof a later mark, insofar as the provisions of the Directive must beinterpreted in light of the priority principle, according to which theearlier trademark takes priority over the later one. E L Z A B U R U
On the basis of the above, the CJ answered the question referred to itin the sense that the exclusive right of the holder of a trademark toprevent all third parties from using, in the course of trade, signsidentical with or similar to its trademark extends to a third-party holder of a later mark, without the need for that latter mark to have beendeclared invalid beforehand.
n n n 3. REMARKS. The CJ's Order confirms the stance taken by the
Spanish Supreme Court in itsf 14 October 2014 (Denso), in
which the Spanish court departed from the criteria that it had followed
previously on account of the fact that it contradicted the case-law
established by the CJ in its in Fédération Cynologique
Internationale. Ana SANZ
8. Communication  to  the  public  by  broadcasting n n n 1. BACKGROUND. SBS is a private broadcasting organisation
which broadcasts in Belgium by a technique known as "direct injection",
where the programme-carrying signals are transmitted to other
distributors via a private line so that at no point during the transmission
process can the signals be accessed by users. The recipients of those
transmissions, i.e., the distributors, then send the signals to their
subscribers using different techniques (cable, satellite, xDSL line).
SABAM is the copyright administration society that manages the rights
of musical authors in Belgium. This society brought the main
proceedings against SBS on the grounds that the latter's activities
constituted an act of public communication and, as such, were subject
to licensing requirements and remuneration in favour of the copyright
holders through SABAM. SBS, however, considered that the various
distributors to whom it sends the signal are actually the parties who are
carrying out public communication activities. The case went to Brussels
Court of Appeal, which referred a question to the CJ concerning
whether SBS' activities should be comprised within the Community
concept of communication to the public.
n n n 2. FINDINGS. This judgment delves into the concept of
communication to the public within the meaning of Art. 3.1 of
Information SocietyJust as it had done in previous
cases, the CJ analysed this matter by extricating the two concepts which
E L Z A B U R U
together and cumulatively constitute the activity regulated by theaforementioned provision. The first concept is the act of communicationper se. In that regard, the CJ had previously interpreted communication to the public in the broad sense, as an act of "making the work availableto the public", regardless of whether or not the works are actuallyaccessed by the public. This flows, inter alia, from the judgmentsrendered by the CJ in Football Association Premier League judgment of 4 October 2011), Airfield judgment of 13October 2011) and PPLjudgment of 15 March 2012).
Secondly, there is the concept of public. As the CJ has pointed out inprevious cases (the judgments in SGAE,and ITV Broadcastingand Others,the term "public" refers to an indeterminatenumber of recipients, potential television viewers, and implies,moreover, a fairly large number of persons. When the work or servicehas already been communicated previously, in order for the new act ofcommunication to constitute communication to the public, the publicat which it is directed needs to be new (Svenssonjudgmentof 13 February 2014). In that regard, the CJ has indicated that a publicis new when "it was not taken into account by the copyright holderswhen they authorised the initial communication". One of the factorstaken into consideration by the CJ when determining whether or notthe public is new is the significance of the involvement of the subjectperforming the second act of communication. If that second agent isacting as a mere technical intermediary, the CJ considers that the second act of communication is not communication to the public; rather, it isjust one more stage of the original communication process. In this case,the CJ places particular emphasis on the fact that the activity carriedout by the agents to whom SBS distributes its signals "is not just atechnical means of ensuring or improving reception of the originalbroadcast in its catchment area"; rather, it is a separate service, throughwhich they obtain commercial gain and enable the public to access theworks. Consequently, the CJ considers that there is a new public in thiscase, and so the act of communication to the public is carried out by the distributors, who enable the public to access the works, not by SBS,the defendant in the main proceedings. n n n 3. REMARKS. In this judgment, the CJ further examines the
concept and scope of the public communication right which, of all the
intellectual property rights, if not the most problematic, is certainly the
one that has prompted the most references for a preliminary ruling by
the CJ. Although the Court's arguments in this case are entirely inkeeping with the decisions that it had previously rendered on thesubject, the second part of the analysis concerning the concept of publicmight not even have been necessary in light of those earlier decisions.
According to the CJ's own doctrine, the use of different communication techniques by the various agents involved in a public communicationprocess itself establishes the existence of two acts of communicationdirected at different users (TVCatchupjudgment of 7 March 2013). In any event, this judgment certainly contributes towards
shedding light on the controversial concept of communication to the
public. Patricia MARISCAL
n n n 1. BACKGROUND. Art. 2 orovides a list of
reproduction rightholders which does not include publishers. When
addressing the right to receive compensation for private copying, Art.
5.2 of that same Directive states that the beneficiaries of that
compensation will be the reproduction rightholders. Under Belgian
copyright legislation, remuneration for private copying is allocated in
equal parts to authors and publishers.
In Reprobel, Hewlett-Packard questions, on the basis of the CJ's findingsin Luksan whether national legislation can recognisepublishers as beneficiaries of the right to remuneration for privatecopying. n n n 2. FINDINGS. In this case, the Advocate General issued hion 11 June 2015, indicating that "Directive 2001/29 must therefore be
interpreted as not precluding Member States from establishing
remuneration specifically for publishers, intended to compensate for
the harm suffered by the latter as a result of the marketing and use of
reprography equipment and devices, provided that that remuneration
is not levied and paid to the detriment of the fair compensation payable
to authors under Article 5(2)(a) and (b) of Directive 2001/29."
E L Z A B U R U
The judgment rendered on 12 November confronts the issue in a muchmore head-on manner. It does not pause to explain the possibility of compensatory remuneration for publishers; instead, it merely indicatesthat publishers "cannot, therefore, receive compensation under thoseexceptions [the reprography exception and any others] when suchreceipt would have the result of depriving reproduction rightholders[authors] of all or part of the fair compensation to which they areentitled under those exceptions". n n n 3. REMARKS. This judgment fails to address the possibility
considered by the Advocate General of the conferral of an "extra" right
to compensation on publishers under the laws of the Member States,
or the possibility of agreements between authors and publishers that
are permitted under national legislation. Pablo HERNÁNDEZ
rights  provided  for  in  the  Community  Directives.
n n n 1. BACKGROUND. L C More Entertainment is a Norwegian capital
company which broadcasts ice hockey matches, among other sports
events, to its subscribers on its Internet site. Mr. Sandberg, a Swedish
national, created links on his website through which Internet users
could access the live broadcasts of those matches for free.
Mr. Sandberg's refusal to remove those links prompted criminalproceedings for copyright infringement in Sweden, which resulted in afine and damages award against the defendant. In the second instance,the Swedish criminal court amended the initial decision on the grounds that the broadcasts did not reach the level of originality required forcopyright protection. It nevertheless upheld the fine and damagesaward since it considered that the broadcasts were protected bycopyright-related rights held by the broadcasting organisation. The case went to the Swedish Supreme Court, which decided to refer anumber of questions, relating to classification of the link as an act ofcommunication to the public, to the CJ. All but one of those questionswere withdrawn in light of the Svensson judgment The remaining question referred to the CJ for a preliminary rulingconcerned whether the Member States could "give wider protection tothe exclusive right of authors […] than provided for in Article 3(2) of n n n 2. FINDINGS. The Court stated that its interpretation must be
guided by the objectives justifying harmonisation in respect of
copyright. In that regard, the judgment confirmed that the objective of
creating an internal market that operates under the rules of free
competition calls for copyright to be adapted and completed as far as
is necessary in order to achieve that goal. Consequently, the Court
understood that it would be necessary to readjust any differences in the
legal protection provided for in the national legislations that hindered
"the smooth functioning of the internal market and the proper
development of the information society in Europe". In other words, if
the problems in question do not arise, the Court believes that the
Member States' should enjoy regulatory freedom, given that "the
objective of that directive is not to remove or prevent differences
between the national legislations which do not adversely affect the
functioning of the internal market".
In this specific case, the CJ's conclusion implies that Sweden may conferwider protection on broadcasts transmitted by broadcastingorganisations than that strictly provided for in EU law.
n n n 3. REMARKS. This judgment examines the degree of
harmonisation required byndwhich replaces Directive 92/100 on rental and lending rights. In the
Court's opinion, the Information Society Directive is not trying to
prevent or remove differences if they refer to acts that have not been
regulated. It must therefore be understood that there is no margin in
respect of acts that have been regulated. Nevertheless,nables the Member States to extend the protection conferred
on rightholders provided that, with respect to related rights, such an
extension does not undermine the protection of copyright. Pablo
HERNÁNDEZ
E L Z A B U R U
11. Examination  of  the  Danish  private  copying  system  in n n n 1. BACKGROUND. Copydan is the Danish body responsible for
collecting the private copying levy. Its claim to Nokia for payment of
that levy in respect of the mobile telephone memory cards that that
company was selling in Denmark is what prompted the reference for a
preliminary ruling under analysis here.
In the context of those proceedings, the Danish court referred a batteryof questions to the CJ, which reorganised them in a judgment thatessentially sought to clarify how private copying is regulated. n n n 2. FINDINGS. The CJ first of all tackled the fourth question
concerning whether a provision that makes multifunctional equipment
whose primary function may not be to make copies for private use
subject to the private copying levy is in conformity with EU law. The
Court pointed out that it is irrelevant "whether a medium isunifunctional or multifunctional or whether the copying function is,depending on the circumstances, ancillary to the other functions", sinceit is assumed that final users will make use of all the available functions.
Nevertheless, the amount of fair compensation payable must beestablished "by reference to the relative importance of the medium'scapacity to reproduce works for private use".
The Court then turned to the fifth question relating to the lawfulnessof a remuneration system that made external cards subject to the levybut exempted the internal memories of MP3 players from that levy. TheCJ applied the principle of equal treatment, laid down in Art. 20 of the and indicatedthat, under EU law, comparable situations should not be treateddifferently. It nevertheless stated that it was for the national court toexamine whether the memories in question were comparable andwhether different treatment was warranted. Next, the Court examined the sixth question concerning the Danishsystem of reimbursing business customers with the private copying levy.
The CJ's response set out the guiding principles to be followed by theDanish court when rendering its decision in the case in question. In its judgment, it pointed out that it is possible to apply the levy tobusiness customers who acquire and subsequently sell recording mediawhenever there are practical difficulties associated with collecting thelevy from final users, and whenever business customers in general, notjust those recognised by Copydan, are exempt from payment if theydemonstrate that their customers are also business customers and thatthe cards supplied are for purposes clearly unrelated to copying forprivate use.
The CJ then addressed the third question, which touches on theinterpretation of recital 35, in relation to Art. 5, oregarding the possibility of not establishing any compensation wherethe prejudice caused to the rightholder is minimal. The Court explainedthat setting a threshold below which the prejudice may be classed asminimal for the purpose of the above provisions must be within thediscretion of the Member States. In any event, that discretion must beconsistent with the principle of equal treatment. Having answered those questions, the Court then turned to the sevenparts comprising the first question that had been referred for apreliminary ruling. The first and second parts concern the impact of therightholder's consent for users to make copies for private use oncompensatory remuneration. The Court considered that where anational law had excluded a rightholder's entitlement to authoriseprivate copying, such an act would not have any bearing on the faircompensation payable. When replying to parts (c) and (d) of the first question, the CJ alsotackled the second question regarding the potential impact oftechnological measures on fair compensation for private copying. TheCourt declared that the application of technological measures wasvoluntary, and that the non-application of those measures did not meanthat no fair compensation was due, as previously indicated in VG WortHowever, the Member States can take account of whetheror not such measures have been applied in order to establish the actual E L Z A B U R U
level of compensation so that rightholders "are encouraged to makeuse of them and thereby voluntarily contribute to the properapplication of the private copying exception".
Section (f) of the first question raises the previously resolved issue ofthe application of the private copying exception to reproductions made using unlawful sources. On that point, the Court reiterated its findingsin the ACI Adam judgmentThe Directive precludes nationallegislation which does not distinguish the situation in which the sourcefrom which a reproduction for private use is made is lawful from thatin which that source is unlawful, given that "under such a system, allthe users who purchase equipment, devices or media subject to thatlevy are indirectly penalised", and those who do not makereproductions using unlawful sources "are thus led to assume anadditional, non-negligible cost in order to be able to make the copiesfor private use covered by the exception" provided for by the Directive. Section (e) of the first question examines whether the private copyingexception covers reproductions made using a device belonging to athird party. In that regard, the Court pointed out that the descriptionof the factors that make up the private copying exception does notspecify the legal connection between the "copier" and the device usedto make the copy, and so it is understood that the legislature did notconsider it relevant to regulate what kind of relationship there mustbe. It therefore concluded that EU law does not preclude "nationallegislation which provides for fair compensation in respect ofreproductions of protected works made by a natural person by or withthe aid of a device which belongs to a third party." n n n 3. REMARKS. In view of the large number of questions referred
by the Danish court, the CJ has used this judgment to create a genuine
compilation of its doctrine on private copying and thus draw up a set
of guiding principles, so to speak, to enable the national court to
correctly apply EU law to the case in question. The judgment
nevertheless contains a new finding, namely, that it is not necessary for
the device used to make the copy to belong to the natural person who
is making the reproduction for private use. Pablo HERNÁNDEZ
n n n 1. BACKGROUND. Christie's France SNC is a French company
which arranges the sale of works of art by public auction. Its 2008
general conditions of sale included a term whereby with regard to any
lots sold by that auction house that were subject to payment of a resale
royalty (droit de suite), the buyer had to pay the company a sumequivalent to that royalty. Christie's France SNC therefore collected thatsum on the seller's behalf and then passed it on to the collecting agency.
The SNA, a competitor of Christie's France, considered that the latter'ssales to which the disputed term applied constituted an act of unfaircompetition and breached national intellectual property law regulating droit de suite. The term was declared void by the Cour d'Appel de Paris(Paris Court of Appeal), and Christie's filed an appeal with the Cour deCassation (Court of Cassation). That court decided to stay theproceedings and make a reference for a preliminary ruling to the CJ inorder to ascertain whether the rule laid down by Art. 1.4 ofhould be interpreted as meaning that it is the seller who is required definitively to bear the cost of the royalty. n n n 2. FINDINGS. The resale right for the benefit of the author of an
original work of art, more commonly known as droit de suite, is, as its
name suggests, a remuneration right held by the authors of works of
art consisting of an economic share in successive sales of their works.
Although this right was harmonised in the Community in 2011iled to provide for all aspects of its functioning and left a
number of loose ends, for instance, the identity of the person who must
definitively bear the cost of the royalty. According to Art. 1.4 of the
Directive: "The royalty shall be payable by the seller. Member States
may provide that one of the natural or legal persons referred to in
paragraph 2 (art market professionals) other than the seller shall alone
be liable or shall share liability with the seller for payment of the
royalty". The CJ resolved this issue on the basis of the need to draw a
distinction between the person liable for payment and the person who
definitively bears the cost of the royalty. According to the CJ, the
Directive establishes the former but is silent in respect of the latter. In
that regard, it found that a term such as the one included in Christie's
E L Z A B U R U
France's general conditions of sale, whereby the cost of the royalty waspayable by the final buyer, was not contrary to EU law.
n n n 3. REMARKS. The sole purpose of droit de suite is to enable
authors to share in the economic success of their original works of art,
thus balancing out any disproportion between the price for which
authors let go of their work and the price reached in subsequent sales
made via art market professionals. In line with that purpose, the CJ
considers that the objective of harmonising droit de suite in the
Community must be limited to ensuring that the author actually
receives the payment, and that it is for the Member States to decide
who can or must ultimately bear the cost of the royalty. Patricia
MARISCAL
13. International  jurisdiction  in  matters  concerning  online n n n 1. BACKGROUND. Ms. Hejduk, a professional photographer of
architecture, created a number of photographic works depicting the
buildings of the Austrian architect Georg W. Reinberg. He, with Ms.
Hejduk's consent, used her photographs in a conference organised bythe Germany company EnergieAgentur in 2004. Subsequently, theGerman company made the photographs available to the public on itswebsite without consent. When Ms. Hejduk learned that this hadhappened, she brought an action for copyright infringement before theAustrian courts. EnergieAgentur raised an objection that those courtsdid not hold international jurisdiction, since the website on which theworks were made available to the public was directed at Germany, notAustria, as demonstrated by the fact that the domain name of thewebsite was a ".de" domain. The plaintiff in the main proceedingsconsidered that the fact that the photographs could be accessed fromAustria was sufficient to confer jurisdiction on the Austrian courts underArt. 5.3 of Regulation 44/2001. In those circumstances, theHandelsgericht Wien decided to refer a question to the CJ for apreliminary ruling. n n n 2. FINDINGS. Article 5.3 ofrovides that in
matters relating to tort, delict or quasi-delict, a person domiciled in a
Member State may be sued in another Member State where theharmful event occurred or may occur. As the CJ has pointed out inprevious rulings, the provisions of Art. 5.3, as an exception to thegeneral rule, must be interpreted strictly. Consequently, in order for thatrule to come into play there must be a particularly close linking factorbetween the dispute and the courts of the place where the harmfulevent occurred or may occur, which justifies the attribution ofjurisdiction to those courts. That linking factor could lie in either thecausal event, or the event giving rise to the damage, or in theoccurrence of that damage or likelihood that it will occur. In this case,the causal event is the technical process consisting of making thephotographs available to the public on the Internet, which took placein Germany. Nevertheless, the damage occurred in both Germany andAustria, from where the works can also be accessed. In that regard, theCourt indicated that it was not necessary for the website in question "to be directed at" or "intended for" the Member State in which thecourt seised was situated. Consequently, and since Ms. Hejduk'scopyright in her photographs is equally recognised in Austria, the Courtconsidered that the Austrian courts had jurisdiction over an action forcopyright infringement originating in Germany but whose damagingeffects were felt in Austria, since the works could be accessed online from that Member State. n n n 3. REMARKS. The question referred for a preliminary ruling in
this case had already been raised, in virtually identical terms, in
Pinckney In its judgment of 3 October 2013, the CJ
confirmed that the likelihood of the occurrence, in a specific Member
State, of damage deriving from copyright infringement depends
exclusively on whether the rights deemed by the plaintiff to have been
infringed are protected in the territory of that Member State and
whether it is possible to access the work in question on the Internet
from that Member State. Patricia MARISCAL
E L Z A B U R U
14. Change  of  doctrine  in  the  application  of  TRIPS  to  a European  process  patent  reconverted  into  a  productpatent.f the Spanish Supreme Court of 21December 2015.
n n n 1. BACKGROUND. Astrazeneca AB, the holder of a European
patent for quetiapine and its supplementary protection certificate, filed
infringement proceedings against Alter and other laboratories withrespect to the offering and sale of a generic drug containing that activeingredient. The patent, whose priority predated the 1986 Spanishhad only been validated in Spain with claims relating to the process ofmanufacturing that compound, not with product claims. In January2007, Astrazeneca AB filed a petition to submit a revised Spanishtranslation of the patent, containing product claims, with the SpanishPatent and Trademark Office (SPTO). The petition was rejected and theSPTO's decision was appealed in the contentious-administrative courts. Although the revised patent had not been published in the OfficialIntellectual Property Journal, in July 2008 Astrazeneca filedinfringement proceedings based on the product claims after a numberof pharmaceutical laboratories obtained marketing authorisation forthe quetiapine generic. Opposing judgments were handed down in thefirst instance and in appeal before the matter went to the SpanishSupreme Court. E L Z A B U R U
n n n 2. FINDINGS. The Supreme Court began by pointing out that a
revised translation of a European patent cannot take effect until it is
published in the Official Intellectual Property Journal, and that the
decision issued by the SPTO in that regard must be reviewed by the
contentious-administrative courts. Civil infringement proceedings
cannot be brought until the appeal has been resolved.
The judgment then examined whether Astrazeneca's European patent,despite the refusal of that company's petition to submit a revisedtranslation, could benefit from the application of ArtsandTRIPS, given that product claims were included in the original wordingof the European patent. The appellant relied on case-law from ChamberI of the Supreme Court which had given the application of TRIPS itsblessing and made it possible to convert process patents into productpatents. The judgment effectively acknowledges that the Supreme Court hadpreviously advocated the full application of TRIPS to European patentswhich, on account of the Spanish reservation to the European PatentConvention, were granted in Spain as process, not product, patents.
Since the entry into force of TRIPS, it could be interpreted that those patents' product claims became fully valid. The Supreme Court nevertheless added that the same assessment canno longer be made following the Court of Justice of the EuropeanUnion's judgment of 18 July 2013 in Daiichi Sankyo/DemoIn that judgment, the CJ considered that under the rules laid down in Arts.
27 and 70 TRIPS, a patent obtained following an application claimingthe invention both of the process of manufacture of a pharmaceuticalproduct and of the pharmaceutical product as such, but granted solelyin relation to the process of manufacture, does not have to be regardedfrom the entry into force of that agreement as covering the inventionof that pharmaceutical product. The Supreme Court therefore concluded as follows: "in this case too, ifthe European product patent was validated in Spain by means of thepublication of a list of process claims, because the reservationconcerning pharmaceutical product patents was in force at the timewhen the application was filed, the subsequent entry into force of theTRIPS Agreement does not mean that as of then, by virtue of Arts. 27.1 and 70.2 TRIPS, that patent will protect the invention of thepharmaceutical product in Spain".
n n n 3. REMARKS. The aforementioned Daiichi Sankyo/Demo
judgment and the Court of Justice's later orders of 30 January 2014 in
Warner-Lambert v Minerva and Warner-Lambert v
SiegerPharmahave shattered case-law established by the
Spanish courts regarding the applicability of TRIPS and the conversion
of process patents into product patents.
Previous editions of this Review will serve as a reminder of the fact that,for almost two decades, litigation in Spain between the innovative andgeneric pharmaceutical industries has been marked by this controversy.
The Supreme Court'of 5 December 2012, which favouredthe applicability of TRIPS, had been interpreted as a definitive turningpoint that cleared up any doubts on the subject. However, the CJ hadthe final say, and its findings have been corroborated by the Spanish Supreme Court in this judgment. Antonio CASTÁN
on  the  market  in  the  Community"  for  the  purpose  ofdetermining  the  duration  of  an  SPC.  Judgment  of  the n n n 1. BACKGROUND. The dispute that gave rise to this judgment
refers to the interpretation of the concept of the "date of the first
authorisation to place the product on the market in the Community"
laid down in Art. 13(1) of concerning the
supplementary protection certificate for medicinal products. The events
that led to the dispute can be summarised as follows: The European
Commission granted a marketing authorisation (MA) for the medicinal
product Adcetris on 25 October 2012. The applicant was notified of the
MA on 30 October 2012. On 2 November 2012, Seattle Genetics filed an
application for an SPC for Adcetris with the Austrian Patent Office,
which granted the application. The Office considered that the date to
be taken into account for calculating the duration of the SPC for the
medicinal product was 25 October 2012, the date on which the E L Z A B U R U
Commission issued its decision on the MA, and it therefore fixed theexpiry date of the SPC as 25 October 2027. Seattle Genetics filed an appeal against that decision, claiming that theSPC should be rectified so that it expired on 30 October 2027. Inresponse to the appeal, the Austrian Patent Office stated that nationalpatent offices differ in their practice with regard to the determinationof the period covered by SPCs.
In those circumstances, the Austrian court stayed the proceedings andmade a reference for a preliminary ruling to the CJ in order to clarifythe concept of the "date of the first authorisation to place the producton the market in the Community" laid down in Art. 13(1) oTwo questions were referred to the CJ. The first questionsought to ascertain whether the concept of "the date of the firstauthorisation to place the product in the market in the Community"should be determined according to EU law, whilst the second, in theevent that the reply to the previous question was in the affirmative,sought to ascertain which date must be taken into account, i.e.,whether it should be the date on which the MA is granted, or the dateon which notification of the grant is given.
n n n 2. FINDINGS. With respect to the first question, the CJ alluded to
the uniform application of EU law and stated that where a provision of
EU law makes no reference to the law of the Member States with regard
to a particular concept, that concept must be interpreted independently
and uniformly throughout the European Union. Thus, given that theconcept of the "date of the first authorisation to place the product onthe market in the Community" laid down in Regulation 469/2009 doesnot contain any reference to national laws, it must be regarded ascontaining an autonomous concept of EU law which must beinterpreted in a uniform manner throughout the territory of the EU.
The CJ therefore concluded that the concept of the "date of the firstauthorisation to place the product on the market in the Community"should be determined by EU law. As regards the second question, the CJ indicated that the concept ofthe "date of the first authorisation to place the product on the marketin the Community" must be interpreted in light of the objective pursuedby the Regulation concerning the grant of SPCs, which is none other than to "re-establish a sufficient period of effective protection of a basicpatent". In that regard, the CJ pointed out that the holder of an SPCcannot begin to market its product until it is notified of the grant ofthe MA. It therefore concluded that the "date of the first authorisationto place the product on the market in the Community" should beinterpreted as the date on which notification of the decision grantingthe MA is given to the addressee of the decision, not the date on whichthe decision granting the MA is adopted. n n n 3. REMARKS. The interpretation of the concept of the "date of
the first authorisation to place the product on the market in the
Community" is essential for SPC holders, since that is the date that will
be taken into account for the purpose of calculating the duration of
their SPC. This is certainly a long-awaited judgment in the
pharmaceutical sector since, as can be observed in the case of the main
proceedings, extending the term of protection of an SPC for just five
days can have a considerable financial impact on the company that
owns the patented medicinal product. Following the publication of this
judgment by the CJ, the Spanish Patent and Trademark Office (SPTO)
published a notice in the Official Intellectual Property Gazette of Spain,
indicating that, with respect to SPC applications that are in prosecution,
the SPTO shall take the "date of the first authorisation to place the
product on the market" to be the date on which notification of the
decision granting the MA is given to the addressees of that decision. It
would not, a priori, seem that such criteria will apply to SPCs that have
already been granted. The courts will have the final say in that regard.
Enrique ARMIJO CHÁVARRI and María CADARSO
16. Time  period  for  complying  with  the  obligation  to  pay equitable  remuneration to  the  holder  of plant  variety n n n 1. BACKGROUND. Saatgut-Treuhandverwaltungs GmbH (STV) is
an association of plant variety right holders. One of the species that it
manages is the winter barley variety "FINITA". Each year, the association
asks farmers to provide information on any planting of protected plant
varieties for which STV administers the rights, sending planting
declaration forms to them for that purpose. The association learned
E L Z A B U R U
that in the marketing year 2010/2011, the agricultural company Gerhardund Jürgen Vogel GbR, and Mssrs. G. and J. Vogel, the personally liablepartners in that company (Vogel), had planted "FINITA" winter barley.
The farmers, who had no contractual relations with the plaintiff, didnot respond to either the request for information that STV had sent inMay 2012 or to the payment claim made in June. On 18 March 2013, STV sued Vogel, seeking compensation as redressfor the damages sustained. The defendants objected to the payment ofsuch compensation and argued that since they were entitled to carryout the planting (under Art. 14.1 ofn Communityplant variety rights), they owed, at most, a reduced fee as equitableremuneration. The Landgericht Mannheim referred two questions to the CJ concerning when the obligation to pay equitable remunerationbefore sowing comes into existence, and the time period for complyingwith that obligation.
n n n 2. FINDINGS. The CJ answered both questions together. It first of
all referred to the authorisation requirement laid down in Art. 13.2 of
according to which farmers must obtain
permission from the holder of the plant variety rights for, inter alia,
production and reproduction of their material. Art. 14.1 establishes a
derogation from that obligation, insofar as it expressly authorises
farmers to use the product of the harvest which they have obtained by
planting propagating material where they fulfil certain conditions. That
derogation is known as the "agricultural exemption", or "farmer's
privilege". One of the conditions for the derogation to apply, laid down
in Article 14.3, requires payment of equitable remuneration to therightholder, with small farmers being exempt from that payment. Thejudgment centres on the time period in which farmers may make thepayment and thus avail themselves of the derogation from theobligation to obtain authorisation pursuant to Art. 14. Nevertheless, ifthat remuneration has not been paid, it must be considered that thefarmer was not authorised and performed one of the acts prohibitedunder Art. 13, which would entitle the rightholder to bring thepertinent legal action, including an injunction and a compensationclaim, provided for in Art. 94 for cases of infringement. In cases of intentor negligence, the compensation shall cover the damage caused. The CJ applies which establishes theimplementing rules on the agricultural exemption provided for inArticle 14.3 of in order to determine the timeperiod. Based on Art. 6, it fixes the point as of which equitableremuneration is required, namely, the date of reseeding. Therightholder may determine the circumstances of the payment but cannever establish a payment date which is earlier than the date on whichthe farmer actually makes use of the product of the harvest. Where the rightholder does not establish a time period, the CJ considersthat it cannot be indefinite and applies the provisions of Art. 7 which,despite referring to small farmers, states that the period for paymentof the remuneration is the marketing year, which starts on 1 July andends on 30 June of the subsequent calendar year. Basically, in order for farmers to be able to benefit from the derogationprovided for in Art. 14 of Regulation 2100/94 and not be required to obtain authorisation from the rightholder in order to use the productof the harvest of a protected plant variety, they must pay equitableremuneration by 30 June following the date of reseeding.
n n n 3. REMARKS. The purpose of the derogation provided for in Art.
14 ois to safeguard agricultural production in the
public interest. However, we should not forget that this intellectual
property right seeks to stimulate plant breeding for the benefit of
society as a whole, since it confers exclusive rights on those who have
invested time and resources into researching varieties that increase the
productivity and quality of existing varieties.
The CJ's decision certainly endeavours to strike a balance between those
two objectives, whilst filling an apparent gap in the Regulation. In that
regard, farmers are entitled to use the product of the harvest of a
protected variety without obtaining the rightholder's authorisation.
However, the latter is guaranteed equitable remuneration within a
reasonable time period, which cannot be indefinite since that would
render the right to legal remedies ineffective in the event of
infringement. In fact, if that time period were unlimited, farmers could
attempt to defer the payment indefinitely, and rightholders would not
be able to bring legal action. Patricia GARCÍA
E L Z A B U R U
17. Compatibility  of  Regulation  1257/2012  implementing enhanced  cooperation  in  the  area  of  the  creation  of Court  of  Justice  of  5  May  2015,  Spain  v  the  EuropeanParliament and the Council n n n 1. BACKGROUND. Councilf 10 March 2011
authorised enhanced cooperation "in the area of the creation of unitary
patent protection" insofar as: a) it was based on Art. 118b) it was
aimed at "creating a unitary patent which would provide uniform
protection throughout the territories of the participating Member
States and would be granted by the European Patent Office"; and c) its
linguistic regime was inspired by the Commission's proposal of 30 June
2010. Spain and Italy applied to the CJ for annulment of the Council
Decision, and the Court, on 16 April 2013, concluded that: a) enhanced
cooperation was possible in all shared competence scenarios (as was the
case here since, according to the Court, intellectual property fell withinthe scope of the internal market, not free competition rules) in whichthe Treaty required unanimity; and b) in this case, the creation of suchenhanced cooperation contributed to the integration process (see On 17 December 2012, the European Parliament and the Counciladoptedmplementing enhanced cooperation inthe area of the creation of unitary patent protection. Spain filed actionwith the CJ seeking the annulment of the Regulation on the basis ofseven pleas in law, namely: infringement of the values of the rule of law; a lack of legal basis for the contested Regulation; a misuse ofpowers; infringement of Art. 291.2 infringement of the principles laid down in the Meronand infringement of the principlesof autonomy and uniform application of EU law. n n n 2. FINDINGS. The CJ fully dismissed all of the grounds for
annulment put forward by Spain and concluded as follows:
a. constitutes a "special agreement within the meaning of Art. 142 EPC".
b. An act by the EU institutions, in this case a regulation, can be devoid of substantial content and yet not be voidable on that basis. c. It is possible to create an EU title that is not autonomous, i.e., its rights and limitations are not directly proclaimed by the authoritythat created it –in this case, the EU-, but rather by the laws of anyMember State. This is the case of Arts. 5 to 7 of Regulation d. The legal basis of Art. 118 TFEU is adequate even though there is no harmonisation whatsoever and it does not provide "uniformprotection of intellectual property rights throughout the Union";instead, it only affords "uniform protection" of a specific Europeanpatent with unitary effect (EPUE). e. The amount of the annual renewal fees for EPUEs does not necessarily have to be uniform for all the participating MemberStates. f. There is no problem with regard to the EU's delegating implementing powers to the EPO, given that it is the Member Stateswhich have made that delegation. g. The applicability of a regulation cannot hinge on external factors unless the regulation itself makes provision for same, which is thecase here, since Regulation 1257/2012 enables the Member States tocreate the Unified Patent Court (UPC). h. When thecomes into force, Regulation 1257/2012 will apply to the 25 Member States participating in enhancedcooperation. However, the provisions relating to the EPUE will notapply to those which have yet to ratify that Agreement.
n n n 3. REMARKS. This judgment of 5 May 2015 (C-416/13) opens a
Pandora's box, and its consequences certainly transcend the scope of
the EPUE. Overall, it is a disappointing judgment from a technical and
legal standpoint, raising more problems than it solves. The judgment
magnifies the issue by extracting it from the specific matter at hand and
shifting it from species -Patent Law, in particular, the European patent
as a specific intellectual property title- to class –EU law-, thus settingthe stage for weightier disputes in the future. Surprisingly, it does notseem to touch on the heart of the issue, i.e., whether or not the EPUEis a real intellectual property title. E L Z A B U R U
Furthermore, the discourse is poor, repetitive and occasionally seems tobe predetermined by the outcome. It is certainly far removed from theremarkable reasoning that we are used to reading from the Court. It would be no surprise if, one way or another, most of these issues –thelink between the contested Regulations and the EPC, the exegesis ofArt. 118 the concept of intellectual property "title", thedelegation of tasks concerning the implementation of acts by the EUinstitutions to the Member States or to international organisations, the value of recitals in the institutions' acts and the distinction between the
inapplicability of an act and the inapplicability of its consequences-,
under which the Court had falsely drawn a line in this judgment, will
rear their heads again. Manuel DESANTES
Compatibility  of  n n n 1. BACKGROUND. Following Councilof 10
March 2011, the Council, on 17 December 2012, adoptedimplementing enhanced cooperation in the area of the
creation of unitary patent protection with regard to the applicable
translation arrangements. Spain filed action with the CJ seeking the
annulment of that Regulation on the basis of five pleas in law, which
can be summarised as follows: a) the Regulation infringes the principle
of non-discrimination on grounds of language since it establishes a
linguistic regime that is detrimental to individuals whose language is
not one of the official languages of the European Patent Office; and b)
every exception to the principle of equality among the official
languages of the EU must be justified by criteria other than strictly
economic criteria.
n n n 2. FINDINGS. The CJ fully dismissed Spain's allegations and
concluded that the Regulation: a) has a legitimate objective (the
establishment of a uniform and simple translation regime for the
European Patent with Unitary Effect (EPUE), thus facilitating access topatent protection, particularly for small and medium-sized enterprises);b) makes access to the EPUE and to the patent system as a whole easier, less costly and more legally certain; and c) is proportionate because itmaintains the necessary balance between the interests of applicants forthe EPUE and those of other economic operators as regards access totranslations of texts which confer rights, or proceedings involving more than one economic operator. Such proportion is achieved throughvarious mechanisms, namely, a compensation scheme for thereimbursement of translation costs, a transitional period until a highquality machine translation system is available for all the officiallanguages of the European Union and a full translation of the EPUE foroperators suspected of infringement in the event of litigation. n n n 3. REMARKS. The judgment of 5 May 2015 (C-417/13) certainly
has consequences that once again transcend patent law insofar as the
Court has, for the first time, enshrined what is, according to EU law,
linguistic discrimination justified by purely economic criteria. From nowon, in respect of any EU act that implies linguistic discrimination, it willsuffice to reason that the pursued objective –be it what it may, since the Court will not subject it to any assessment- is legitimate (and savingon translation costs certainly is) and that the proposed linguistic regime is balanced –regardless of how, since it will not be evaluated- in order
for the discrimination to be justified. Grim times for linguistic diversity
and golden arguments for the gradual imposition –no longer de facto,
now de iure- of a trilingual system in the EU. Manuel DESANTES
n n n 1. BACKGROUND. Lundbeck A/S brought proceedings for
patent/supplementary protection certificate infringement against a
number of pharmaceutical laboratories with respect to the launch of
certain generic drugs.
The first claim of the patent protects a method for preparingEscitalopram. Escitalopram was a new product on the filing date of theEuropean patent, and so the burden of proof was reversed. E L Z A B U R U
The defendants were divided into two groups, namely, those whoclaimed that the manufacturer of the active ingredient was thecompany Reddy's (whose process did not infringe the patent, asacknowledged by the plaintiff itself) and those who claimed that themanufacturer was Natco (whose process did infringe the patent inLundbeck's view). The complaint was dismissed, and the cassation appeal focused, interalia, on the issue of whether or not Natco's process infringed the patent.
The appeal was likewise dismissed. n n n 2. FINDINGS. The simultaneity rule. After establishing the
patent's scope of protection, the judgment points out that in order to
decide whether infringement has occurred it is necessary to assess
whether the accused process falls within the scope of that protection.
To that end, it is necessary to make an "element-by-element"
comparison of the patented invention and the accused process. Only
when "all" the elements of the patented invention have been
reproduced by the accused process will the rights conferred by the
former have been infringed.
The Court indicates that this rule, known as the simultaneity rule, hasbeen embraced by modern legal doctrine and can be inferred from theprovisions of Art. 2 of the Protocol on the Interpretation of Art. 69 ofthe(EPC). The judgment goes on to saythat, as a result of the above, under the current law "the ‘essentiality'doctrine and previous case-law from the Court itself which mention‘essential conditions' or refer to ‘substantial modification of thequalities' are unacceptable". The equivalence test. At this point, the judgment adds that thereproduction of all the elements of the patented invention necessaryfor the accused process to be considered as infringing can occur due toidentity (literal infringement) or due to equivalence (infringementunder the doctrine of equivalents). In this case, the debate was limitedto infringement by equivalence. The Supreme Court agreed with the lower courts in that it isappropriate to utilise the three-question test adopted in British case- law with respect to equivalence, essentially in Catnic and Improver. Thethree steps are as follows: i) Whether the defendant's process substantially alters the way in whichthe invention described in the plaintiff's patent works. If not (i.e., if thefunctioning is not affected), the following question must be answered: ii) Whether the alternative proposed by the defendant's process wouldhave been obvious to a person skilled in the art reading the patent onits publication date. If the variant was not obvious, i.e., if it wasinventive, there is no equivalence. If the answer is yes, it is still necessaryto answer the third question. iii) Whether that same skilled person, in view of the wording of theclaims and the description of the patent, would have understood thatthe patent holder intended that strict compliance with the wording ofthe claim was an essential requirement of the invention. The core of the dispute lies in the second question, namely, theobviousness of the alternative used in the process employed by Natcoto obtain the active ingredient, and specifically, whether the use ofenantiopure bromo-diol as a basic product was an obvious alternativefor the skilled person reading the patent on its publication date. The value of foreign precedents. The judgment points out that thedoctrine established by foreign courts could be useful in certain cases,as could other doctrinal elements. However, the cassation appealcannot be based on a discrepancy between the findings of the Spanishcourt and those of the UK court, since it can only be based on breachof the applicable law, in this case, the EPC and the Spanish Patent Act.
Furthermore, the UK courts have themselves adapted the various rulesor tests established in previous cases to the requirements of each suit,"and so it makes no sense to dwell on that discrepancy". The value of the EPO Guidelines. The judgment adds that the EPOExamination Guidelines "are nothing more than that" - guidelines thatthe Office provides for its examiners. Therefore, they are not bindingon the courts of justice. The Board of Appeal's decisions come from abody of the EPO, and it should be borne in mind that even though theOffice may consider a particular invention to be patentable, "it is for E L Z A B U R U
the courts of each Member State to decide, regardless of what is ruledby the EPO, on the validity of a patent when nullity proceedings havebeen brought against it by means of an action, plea or counterclaim,and when those courts declare the nullity of a patent, they contradictthe criteria of the EPO that granted it".
The assessment of obviousness for patentability purposes is not thesame as examining it for the purposes of infringement. The examinationof the inventive step necessary for a variant to be deemed patentablediffers from the examination of obviousness during the assessment ofinfringement of that same variant under the doctrine of equivalents.
They are evaluations that pursue different ends and, therefore, theyutilise different parameters. The assessment of inventive step for the purpose of determining aninvention's patentability is not made on an element-by-element basis.
Instead, it is carried out on the invention as such, considered overall,and on the basis of that overall assessment it must be decided whetheror not the invention is obvious to the skilled person in light of the priorart (including the earlier patent, as well as other prior art documents).
In other words, inventive step is not assessed on the basis of theinvention's technical features, considered separately; rather, it isassessed on the basis of the overall solution constituting the invention.
When assessing infringement under the doctrine of equivalents, anelement-by-element appraisal and comparison must be performed, andso the obviousness of one element of the variant must refer to theallegedly equivalent element of the earlier invention. When assessing patentability, it is therefore possible for a laterembodiment to exceed the required level of inventive step but infringean earlier patent. Conversely, a later product might not meet thestandard of inventive step required for it to be deemed patentablebecause, considered overall, it is obvious to the skilled person in lightof the closest prior art on its priority date. Nevertheless, it does notinfringe the earlier patent because the alternative which replaced oneof the technical features of the claims, despite not altering the way inwhich the invention works, could not have been considered obvious tothe skilled person on the priority date of the allegedly infringed patent. Expectation of success for the purpose of obviousness. The judgmentthen refers to the obviousness requirement for the purpose ofestablishing infringement by equivalence. The Court considers thatalthough the skilled person does not have to be absolutely certain thatthe variant used in respect of a technical element of the claims wouldwork adequately, it will not suffice for the skilled person to have areasonable expectation that it will work, "since there needs to be adegree of predictability". In the case under analysis here, the replacement of the basic product(cyano-diol with bromo-diol) did not enable the skilled person to predictthat the active ingredient Escitalopram, due to the empirical andunpredictable nature of the experimental racemate resolution process,and to the fact that the route used by the racemic bromo-diol in orderto obtain Escitalopram gave rise to problems on a commercialproduction level.
n n n 3. REMARKS. Above and beyond the result achieved in a
particular case, which is always open to opposing opinions, the Supreme
Court's judgment is a decisive step forward in the long-awaited creation
of Spanish case-law in patent infringement matters that can rival that
of neighbouring jurisdictions. First and foremost, the Supreme Court
definitively establishes the fundamental doctrine concerning the
simultaneity rule and corrects some deviations that it itself had made
in a not too distant past.
The judgment also recognises that equivalence is a legal, not factual,issue, and so it may be reviewed by means of a cassation appeal. Thiswas key in order for the Supreme Court to be able to second the goodwork of Section 28 of Madrid Court of Appeal or Section 15 ofBarcelona Court of Appeal, without going any further. There were nojudgments from Spain's highest court that comprehensively addressedcomplex concepts such as infringement by equivalence and inventivestep. In its assessment, the Court recognises the value –as a guideline, but notbinding– of the judgments of foreign courts and of case-law from theEPO's Boards of Appeal. If that were not enough, the judgment makesa meticulous approach to the ever complex issue of establishingequivalence in the case of pharmaceutical process patents. We could E L Z A B U R U
therefore be facing the beginning of a new era in Spanish patent case-
law. Antonio CASTÁN
Decision  of the  EPO's  Enlarged  Board  of  Appeal  of  24 n n n 1. BACKGROUND. On 24 March 2015 the European Patent
Office's Enlarged Board of Appeal issued a major decision on the issue
of the clarity examination of claims in opposition proceedings at the
Office.
Lack of clarity of claimsuropean Patent Convention) is notone of the allowable grounds for opposition enumerated inEPC. However, where a patent's claims have been amended duringopposition proceedings, EPC stipulates that theOpposition Division shall examine whether the amended patent fulfilsthe requirements of the EPC (including the clarity requirement laiddown inEPC) and hence assess whether to allow or revokethe patent as amended.
The question of whether the EPO's Boards of Appeal should examinethe clarity of claims that have been amended during opposition orappeal proceedings has been raised repeatedly, and conflictingdecisions have been issued.
In these circumstances, the Enlarged Board of Appeal was asked for itsopinion as to whether examination of the clarity of amended claimswas permissible in cases where one or more elements of dependentclaims have been inserted into an independent claim, and, in theaffirmative, as to the scope of the clarity examination. n n n 2. FINDINGS. In he Enlarged Board's responded
that, for purposes of the examination provided for under Article 101(3)
EPC, patent claims may be examined for compliance with the
requirements of Article 84 EPC (clarity of claims) only when amendment
introduces an alleged lack of clarity, and the clarity examination shallbe limited in its extent to consideration of whether the amendmentdoes introduce an alleged lack of clarity.
In consequence, the EPO may not raise objections on grounds of lackof clarity of amended claims in opposition proceedings unless theobjections arise from the amendments themselves. n n n 3. REMARKS. Decision G 3/14 explicitly approves the line of
"conventional" jurisprudence as exemplified by decisionand
disapproves the line of "diverging" jurisprudence as exemplified by
decisionsandwhich advocated performing a less
restricted clarity examination. Therefore, from decision G 3/14,
examination of the clarity of claims in opposition proceedings will be
much more restricted in its extent than was allowed under the line of
"diverging" decisions.
One practical consequence of this decision is that in oppositionproceedings at the EPO, no objections may be raised against the clarityof granted patent claims, in that lack of clarity is not a grounds foropposition. Thus, in opposition proceedings no examination of claritywill be possible where a patent has been amended by deleting wholeclaims or by limiting the broader scope of an already granted claim,since the resulting claims would not be new.
Where, during opposition proceedings, a claim is limited by insertingsome (but not all) of the features of a dependent claim, the claim so limited may be examined as to its clarity, but only if lack of clarity arisesafresh from the amendment as such, that is, by introduction of the newfeatures.
It will be interesting to see how the future Unified Patent Court applies
the conclusions of this decision and also whether it will have an impact
on the clarity examination carried out by the EPO during the patent
granting procedure. Pedro SATURIO
not  specified  in  the  original  wording  of  the  patent.
Judgment  of  the  Court  of  Justice  of  12  March  2015,Boehringer  n n n 1. BACKGROUND. The pharmaceutical company Boehringer
obtained an initial SPC for the active ingredient "telmisartan", found
E L Z A B U R U
in the medicinal product Micardis. Boehringer was later granted amarketing authorisation (MA) for a combination of telmisartan andhydrochlorothiazide (a molecule that is in the public domain) for themarketing of its medicinal product MicardisPlus. Based on that MA,Boehringer applied for a second SPC for a combination of the activeingredients telmisartan and hydrochlorothiazide. The basic patent'sclaims referred only to the active ingredient telmisartan, not to thecombination of the two active ingredients. The UK Intellectual PropertyOffice suggested that Boehringer amend the basic patent by includingthe combination in question and that it apply for the SPC again. This time,the UK IPO granted the second SPC on the basis of the amended patent.
The generic drug company Actavis appealed the grant of the secondSPC on the grounds that on the date on which it was originally appliedfor, Boehringer's basic patent did not refer to the active ingredient incombination. Boehringer claimed that under both EU and nationallegislation a patent may be amended after it has been granted and that,once amended, the patent retrospectively protected the product forwhich the combination SPC application had been filed. In those circumstances, the High Court of Justice of England and Walesstayed the proceedings and referred a number of questions to the CJfor a preliminary ruling. Those questions can be summarised in twopoints, namely: (i) whether a patent can be amended, following itsgrant, to insert new claims so that it satisfies the requirements forgranting an SPC; and (ii) whether the holder of a patent who hasalready obtained an SPC for an active ingredient specified in a claim ofthe basic patent can apply for a second SPC for that active ingredientin combination with another active ingredient, with that combinationhaving been specified in a claim inserted after the patent was granted.
n n n 2. FINDINGS. The CJ only ruled on the second question. The
debate centred on the interpretation of Articles 1, 3 and 13 of
concerning the supplementary protection
certificate for medicinal products, and specifically on the interpretation
to be given to Article 1(c) of that Regulation, insofar as it states that
the basic patent must protect the product "as such".
Actavis maintained that the aforementioned expression should beunderstood as meaning that the product for which the SPC was granted should constitute the true subject matter of the invention covered bythe patent. In other words, the product must constitute the coreinventive step and not derive from a combination of an activeingredient that is already protected by the basic patent and by an SPCin combination with any other substance that does not constitute thesubject matter of the invention. Otherwise, an extension of themonopoly conferred by the SPC would not be warranted. Boehringernevertheless argued that the mere fact that the combination of theproducts is specified in the wording used in the claims of the basicpatent is sufficient for them to be regarded as protected. The CJ based its findings on the reasoning that, as had beendemonstrated in the main proceedings, of the two active ingredientsmaking up the combination (telmisartan and hydrochlorothiazide), onlytelmisartan constitutes the subject matter of the invention covered bythe patent, since the molecule hydrochlorothiazide is in the publicdomain. After referring to the principles that must be taken into accountand to the different interests at stake, the CJ concluded that the holderof a patent must be precluded from obtaining an SPC for a medicinalproduct containing a combination of an active ingredient that constitutes the sole subject matter of the patented invention and another substancethat does not constitute the subject matter of the invention.
n n n 3. REMARKS. The CJ justifies its decision in this case by the need
to strike a balance between the interests of the pharmaceutical industry
and those of public health. The scale would tip very much in favour of
the former if it were unrestrictedly accepted that multiple SPCs could
be obtained for the subsequent marketing of an active ingredient
protected on the basis of a combination of the same with any other
ingredient or substance that is not the subject matter of the original
The CJ thus confirms the case-law that it had established in previousjudgments concerning SPCs for combinations of products (see Actavis vs Sanofi nd Georgetown University II . Although the judgment does not rule explicitly on the issue of whether a patent,
once granted, can be amended so that its claims include a combination
of products for the purpose of satisfying the requirements for obtaining
an SPC, the CJ appears to implicitly reject that possibility. Enrique
ARMIJO CHÁVARRI and María CADARSO
E L Z A B U R U
n n n 1. BACKGROUND. The CJ's judgment answers a request for a
preliminary ruling on the interpretation of the "specific mechanism"
provided for in Chapter 2 of Annex IV to theoncerning the
conditions of accession to the EU of the Czech Republic, the Republic
of Estonia, the Republic of Cyprus, the Republic of Latvia, the Republic
of Lithuania, the Republic of Hungary, the Republic of Malta, the
Republic of Poland, the Republic of Slovenia and the Slovak Republic,
and the adjustments to the Treaties on which the European Union is
founded ("the 2003 Act of Accession").
The aforementioned specific mechanism entitles the holders of patentsor supplementary protection certificates (SPCs) for pharmaceuticalproducts to prevent the import of such products from the new MemberStates (those listed above) in which such protection could not beobtained at the time when the application for the patent or SPC wasfiled. This provision lays down an exception to the principle ofexhaustion of patent rights, and establishes the requirement wherebyany party that is going to import pharmaceutical products from the newMember States into a Member State where those products are subjectto patent or SPC protection, or put them on the market in that State, must give the holder or beneficiary of the patent or SPC one month'sprior notification of their intention of doing so. The events that led to the main proceedings can be summarised asfollows: Merck Canada is the holder of a European patent and an SPCin the United Kingdom for the medicinal product Singulair. Merck Sharpand Dohme ("MSD") is the holder of an exclusive licence in theaforementioned patent and SPC. Pharma XL Ltd. ("Pharma XL"), anassociated company of Sigma, applied for a parallel import licence toimport Singulair into the UK from Poland. Once that licence wasgranted, it notified MSD of its intention to import the product onseveral occasions. It then began to import Singulair. Following thosenotifications, Merck Canada and MSD expressed their opposition to theimports of Singulair by Sigma in the UK and brought patentinfringement proceedings in that country. The dispute centred on the way in which the specific mechanismprovided for in the 2003 Act of Accession should be applied. On the onehand, Sigma maintained that the provision regarding the importer'sobligation to give the holder of the patent or SPC one month's prior notification of their intention of importing the protected productmeant that once the rightholder had been notified and a period of onemonth had gone by in which the holder or beneficiary of the protectionhad not relied on their rights, the importer would be entitled, onceauthorised by the pertinent authorities, to import and market theproduct in the Member State concerned. Sigma therefore believed thatthe time period laid down in the provision entailed the implicitobligation of the holder or beneficiary of the patent to exercise theirrights fairly and to give notification of their intention of relying onthem within the aforementioned time period. Otherwise, the importerwould be left in a state of legal uncertainty that would be detrimentalto their legitimate interests and expectations. Merck, on the other hand, submitted that the specific mechanismplaced the holder or beneficiary of the patent or SPC under noobligation to give prior notification of their intention of preventing theparallel imports. In order for such an obligation to exist, it would haveto be expressly provided for, and there would have to be a precisedefinition of how the obligation should be discharged. In those circumstances, the referring court stayed the proceedings andsubmitted a number of questions to the CJ on how the specificmechanism provided for in the 2003 Act of Accession should be applied.
n n n 2. FINDINGS. The CJ first of all declared that the holder or
beneficiary of a patent who, in accordance with the aforementioned
specific mechanism, wished to prevent a parallel importation of a
pharmaceutical product, is not required to give one month's
notification of their intention of opposing the importation before
invoking their rights in that product. However, if the holder or
beneficiary does not express their opposition to the importation within
that one-month period, the parallel importer may import and market
the product once the pertinent authorisation has been obtained from
the competent authorities. Therefore, the holder or beneficiary of the
patent or SPC will not be able to rely on their rights with respect to any
importing and marketing of the pharmaceutical product in question
E L Z A B U R U
carried out before the intention of preventing such activity wasindicated. n n n 3. REMARKS. This judgment contributes towards defining the
meaning and scope of the specific mechanism provided for in the 2003
Act of Accession by carefully balancing the rights conferred by patents
and SPCs with the principle of the free movement of goods in the EU.
Enrique ARMIJO CHÁVARRI and María CADARSO
n n n 1. BACKGROUND. This judgment concerns a reference for a
preliminary ruling made within the context of legal proceedings
between the holder of a European patent claiming protein D and the
Austrian Patent Office. Protein D was present in a pneumococcal vaccine
for paediatric use named Synflorix, for which marketing authorisation
(MA) had been obtained. Synflorix did not contain protein D as such;
rather, that protein was present by means of a covalent binding with
other active ingredients. Besides protein D's covalent effect in Synflorix,
it also had an immunological effect of its own against the bacteriaHaemophilus influenzae. Nevertheless, the MA for Synflorix onlyreferred to protein D as a carrier protein and made no explicit referenceto its own therapeutic effect (as a vaccine against Haemophilusinfluenzae). The questions that the Austrian court referred to the CJ can besummarised as follows: (i) whether an SPC can be granted for an activeagreement that is present in a medicinal product as part of a covalentbond with other active ingredients; (ii) whether an SPC can be grantedfor an active ingredient whose therapeutic effect does not fall withinthe therapeutic indications covered by the wording of the MA; and (iii)whether a carrier protein that produces no pharmacological orimmunological effect of its own that is covered by the wording of themarketing authorisation may be categorised as an "active ingredient". 2. FINDINGS. The CJ replied as follows to the questions that had been
referred to it by the Austrian court:
First, the Community Regulation does not preclude the possibility thatan active ingredient can give rise to the grant of an SPC where theactive ingredient is covalently bound to other active ingredients whichare part of a medicinal product. Second, the Regulation does, however, preclude the grant of an SPC foran active ingredient whose therapeutic or immunological effect doesnot fall within the therapeutic indications covered by the wording ofthe MA. In this case, the CJ argues that no trial or data concerning thetherapeutic effect of protein D against Haemophilus influenzae that could have delayed the commercial use of the basic patent wasintegrated into the marketing authorisation procedure. Consequently,the grant of an SPC under those circumstances would have provencontrary to the objective pursued by the Community Regulation,consisting of partially compensating for the delay to the commercialuse of a patented invention on account of the time needed for the firstMA in the European Union to be granted. Third, the Community Regulation must be interpreted as meaning thata carrier protein conjugated with a polysaccharide antigen by means ofa covalent binding can only be categorised as an active ingredient if itis established that it produces a pharmacological, immunological ormetabolic action of its own which is covered by the therapeuticindications of the MA. However, it will be for the referring court todetermine this matter in light of all the circumstances of the case.
n n n 3. REMARKS. This judgment joins the numerous decisions
rendered by the CJ on the interpretation of Arts. 1 and 3 oconcerning SPCs for medicinal products. In this case, the CJ
pinpoints the meaning and scope of the concept of "product" which
may be subject to an SPC. The CJ essentially finds that in order for a
product or active ingredient to be able to give rise to the grant of an
SPC, it must first of all produce a pharmacological, immunological or
metabolic effect of its own. Secondly, that independent
pharmacological, immunological or metabolic effect must fall within
the therapeutic indications covered by the wording of the MA. Enrique
ARMIJO CHÁVARRI and María CADARSO
E L Z A B U R U
n n n 1. BACKGROUND. This reference for a preliminary ruling arose in
connection with a fresh clash between two age-old adversaries, namely,
automobile manufacturers and the manufacturers of spare automobile
parts. In this case, the dispute concerned the US multinational Ford
Motor Company and the Italian spare parts manufacturer Wheeltrims,
which was sued by the former before the Tribunale di Torino for
marketing wheel trims displaying Ford's figurative trademark
registration without consent.
Ford Motor Company argued that such conduct constituted trademarkinfringement, which was not justified by the exceptions provided for inEU law (Art. 12 ofsince the inclusion of the FORDtrademark on the wheel trims in question was not necessary in orderto indicate the intended purpose of the parts or to guarantee otherdescriptive functions. E L Z A B U R U
The defendant contended that it was entitled to manufacture spareparts of a complex product, trademarks included, without therightholder's consent, under the "repair clause" provided for in Art. 14ofon the legal protection of designs and Art. 110 ofaccording to which third-party use of parts intendedfor the repair of a complex product shall not be prohibited if such useis for the purpose of restoring the original appearance of that product. The Tribunale di Torino considered that the defendant's conductconstituted trademark infringement in light of trademark legislation.
However, it had serious doubts as to whether the aforementioned"repair clause" that was established for designs also affected theprotection conferred by trademarks. It therefore stayed the proceedingsand made a reference for a preliminary ruling to the CJ regardingwhether that clause could also be interpreted as constituting alimitation on the trademark right in cases where the use of a certain trademark is the only means by which to completely restore the originalappearance of a complex product.
n n n 2. FINDINGS. Based on the fact that and
only establish limitations concerning design
protection and do not refer to trademark protection, and that it can be
inferred from those provisions that such limitations are applicable
without prejudice to other provisions of EU law or of the laws of the
Member States, in particular, trademark law, the CJ concluded in its
Order of 6 October 2015 that Art. 14 of Directive 98/71 and Art. 110 of
Regulation 6/2002, regulating the "repair clause", do not constitute an
exception to trademark law. Accordingly, they do not entitle spare parts
manufacturers to affix a sign that is identical to a registered trademark
to the parts without the consent of the rightholder on the grounds that
such use is necessary in order to restore the original appearance of the
complex product.
n n n 3. REMARKS. This decision by the CJ is an important victory for
the manufacturers of complex products in their constant war against
spare parts manufacturers. The first dispute between those two market
segments was waged on trademark terrain and concerned the scope ofthe exception contained in Art. 6.1 of Directive 89/104/EEC regarding the use of a third party's trademark when such use wasnecessary in order to indicate the intended purpose of the spare parts.
That case was resolved on the basis of a strict interpretation of thepertinent legal provisions, where it was established that the use of athird-party trademark was considered necessary when there was noother way of conveying the information in question to the public. In this new battle, the CJ has once again opted for a strict interpretationbased on the letter of the law and established a new red line in IPRprotection, in this case preventing spare parts manufacturers frombeing able to rely on the "repair clause" in order to make unauthorised use of trademarks belonging to complex products manufacturers on the
grounds that such use is for the purpose of completely restoring the
product's original appearance. Joaquín ROVIRA
25. The  informed  user  in  cases  of  registered  Community n n n 1. BACKGROUND. Fun Factory GmbH filed a complaint for
infringement of a number of Community designs that had been
registered for vibrators.
The action was directed against Life is Short's marketing of thefollowing designs of vibrator: E L Z A B U R U
The plaintiff was also the holder of the composite Communitytrademark "LOVE YOURSELF!", which the defendant was using on itsproduct packaging: The complaint was accepted at first instance, with the damagesassessment being postponed until the judgment enforcement stage ofthe proceedings. n n n 2. FINDINGS. The appeal judgment centres on a comparison of
the registered designs and the infringing products in order to establish
whether the differences between them are too qualitatively
insignificant and quantitatively scant to produce a different impression
on the informed user.
The Court begins by pointing out the defendant's incorrect applicationof the pertinent principles by focusing its comparative analysis on theway in which the plaintiff was marketing its products, when it shouldhave done so on the basis of the graphic representation of the vibrators,as per the registration. The Court then rejects the suitability of the expert used by thedefendant to support its argument that the Community designs werenot infringed. According to the judgment, an industrial engineer cannotbe classed as an informed user, as established in Community case-law,for the purpose of conducting a comparative analysis on vibrators. According to the judgment, the informed user "is the subjective pointof reference in respect of the individual character of the design, who must be predetermined for the purpose of performing the comparative process". It then alludes to EU case-law on the subject: "The Court ofJustice of the European Union, in itsof 20 October 2011, indicates, from a negative standpoint, that the informed user is not thewell-informed and reasonably observant and circumspect averageconsumer who normally perceives a design as a whole and does not proceed to analyse its various details. In the same line, it adds that he isalso not an expert or specialist capable of observing in detail theminimal differences that may exist between the designs in conflict. Itgoes on to specify that the qualifier ‘informed' suggests that, withoutbeing a designer or a technical expert, the user knows the variousdesigns which exist in the sector concerned, possesses a certain degreeof knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, showsa relatively high degree of attention when he uses them. It also pointsout that the concept of the informed user may be understood asreferring, not to a user of average attention, but to a particularlyobservant one, either because of his personal experience or hisextensive knowledge of the sector in question". The Court, in its judgment, admits that the appellant was correct insaying that the first instance judge could hardly be classed as an"informed user" for the purpose of assessing the general impressionproduced when comparing a category of product "that is not a massconsumer product; nor is it ordinary or habitual". However, itimmediately adds that "a technical expert or specialist cannot beconsidered as an "informed user". Faced with the opinion of an industrial engineer and that of the firstinstance judge, the Court, in the appeal proceedings, opted fortestimony by a witness, namely, the exclusive distributor of theplaintiff's products in Spain. That witness attended the trial where sheexplained the similarities between the vibrators. n n n 3. REMARKS. The nature of certain products sometimes puts the
institutions to the test and reveals that concepts established in case-law
do not always fit all scenarios.
Establishing infringement of a registered Community design calls forprior identification of the informed user, according to whose criteria E L Z A B U R U
the comparative analysis must be carried out. In the absence of any
other reference point, the first instance judge or the justices making up
the Appeal Court may take on the role of "informed user" in order to
make the assessment and decide whether or not the same overall
impression is produced. However, what happens if the design concerns
an atypical product such as a vibrator?. This judgment shows that the
procedural method followed in design infringement proceedings
cannot be neglected. The comparison must be made between the
graphic representation of the registered object and the infringing
product, and should not be conducted on the basis of the plaintiff's
product as it appears on the market. Also, the expert's eligibility must
be in keeping with the notion of "informed user", as established by
case-law. Antonio CASTÁN
prove novelty and individual character.of theCommunity  Trademark  and  Design  Court  of  25  March n n n 1. BACKGROUND. Tous, S.L. and Tous Franquicias, S.A.U. brought
proceedings for trademark and unregistered Community design
infringement against Arturo Rodríguez e hijos, S.L. and Mr. Lázaro. The
unregistered design referred to a piece of jewellery applied to earrings,
pendants and bracelets.
The complaint was fully accepted in the first instance, and the decisionwas appealed by Mr. Lázaro.
n n n 2. FINDINGS. In its judgment, the Community Trademark Court
examined the legal requirements for the protection of unregistered
Community designs and the conditions for bringing proceedings for
infringement of such designs.
Under the provisions of Art. 85.2 of thethe court considered that the design holder (the plaintiff ininfringement actions) must demonstrate that its design satisfies thevalidity requirements of novelty and individual character. That party must also indicate what constitutes the individual character of itsdesign, i.e., it must set forth the reasons why its design produces on the informed user a different overall impression from that produced bydesigns that had previously been made available to the public. Failure to prove the novelty and individual character of the design, orfailure to indicate what constitutes such individual character should,according to the court, lead the design to be considered invalid andthus unprotected. Applying that doctrine to this case, the Court disagreed with the firstinstance decision on the grounds that the plaintiffs had not submittedany proof whatsoever of the novelty and individual character of theirunregistered design; nor had they made any statement in the complaintas to what constituted its individual character. On the contrary, they hadmerely described it in simple terms and stated that it was new andpossessed individual character. Since the unregistered design's lack of novelty and individual characterwas one of the grounds for the appeal, the Court accepted same andoverturned the lower court's finding in that regard.
n n n 3. REMARKS. In this judgment, the Community Trademark Court
applied Art. 85.2 of the in a strict
manner. That provision places an additional burden of proof on the
plaintiff in proceedings for unregistered design infringement, which
calls for a special effort to be made when preparing the complaint. This requirement contrasts with the presumption of validity conferredon registered Community designs by Art. 85.1, which shifts the burdenof proving a lack of novelty or individual character onto the defendantin the event that the validity of the design is challenged. It is nevertheless unlikely that the legal requirement concerning
unregistered designs will go so far as to force their holders to
demonstrate that their design differs from each and every design that
has been disclosed previously, since that would constitute probatio
diabolica that would undermine the actual protection of this kind of
design. Carlos MORÁN
E L Z A B U R U
n n n 1. BACKGROUND. This judgment resolves an appeal lodged
against the decision issued by Community Trademark and Design Court
no. 2 on 12 September 2014. In the appealed decision, the court had
accepted a complaint filed by Mr. Serafín and Mr. José Enrique against
the company Smash 2005 for infringement of Community design
registration no. 001720145-0001 for women's clothing, garments andskirts by the latter's marketing of skirt designs which, in their view,produced the same overall impression as the design relied on. The Courtdismissed Smash 2005's counterclaim seeking the invalidation of theaforementioned Community design on the grounds that the previouslydisclosed skirt designs were not reversible; nor were differentcombinations possible, as was the case of the contested design,according to the explanation given in the description of theregistration. In those circumstances, the defendant filed an appeal withthe Community Trademark and Design Court in Alicante.
n n n 2. FINDINGS. The Appeal Court commenced its analysis by
indicating the importance of differentiating between the design and
the product. In that regard, it pointed out that the exclusive right refers
not to the product to which the design is applied but to the registration
concerned. This led the Court to conduct a comprehensive assessment
of the factors to be taken into account when carrying out a comparative
analysis for the purpose of determining whether infringement has
occurred and, ultimately, to establish the actual scope of protection of
registered designs.
In that regard, in order to determine which factors should be taken intoaccount when establishing aspects such as a design's individualcharacter, the Court stated that the most important requirements for aregistered design are the graphic representation and identification ofthe product to which the design is to be applied. It also pointed outthat whilst the purpose of identification is to "enable third parties tosearch registered design databases", the purpose of the graphicrepresentation is to "enable third parties to accurately identify all thedetails of the design". It specified that aspects of the registration suchas indication of the product or the description should not affect thescope of protection of the design, which shall be limited to theappearance of the product "resulting from its graphic representation".
Those arguments led the Court to consider that the description of thedesign does not fall under the scope of protection, and so it rejectedthe reasoning set forth in the appealed judgment, according to whichthe previously disclosed designs differed from the contested Communitydesign because there was no evidence that those skirt designs werereversible or that they permitted various combinations, as specified inthe description provided in the Community design registration. The judgment therefore concluded that "what matters is thecomparison between the graphic representation of the two registereddesigns, which reveals their identity; or between the graphicrepresentation of the design as registered and the design incorporatedinto a product". On that basis, the Court accepted the appeal and thusthe counterclaim. n n n 3. REMARKS. The main idea that can be extracted from this
judgment is that, regardless of the fact that it is possible to provide
clarification by means of a simple description in the application, the
scope of protection of a registered design will ultimately be limited to
its appearance and, essentially, to the graphic representation provided
in the registration. However, such a reading could prove risky, since it
has to be asked whether the Community Trademark and Design Court
in Alicante would have arrived at the same conclusion had the case
involved an aesthetic description, for instance, in designs that aregraphically represented in black and white, where the description caneven reveal the specific colours of the design, instead of the technicalor functional description at issue here. There are therefore cases in E L Z A B U R U
which the description might come to play an essential role in
establishing the scope of protection of designs. Joaquín ROVIRA
28. Limitations  on  banking  secrecy  in  the  investigation  of n n n 1. BACKGROUND. In January 2011, Coty Germany, the holder of
an exclusive licence for the Community trademark DAVIDOFF HOT
WATER, acquired a bottle of perfume bearing that trademark on an
Internet auction platform. It paid the sum corresponding to the price
of the product into the bank account opened with Stadtsparkasse
Magdeburg which had been provided by the seller. After finding that
the product that it had purchased was counterfeit, Coty Germany asked
the auction platform to provide it with the real name of the holder of
the user account, who had sold the perfume under an alias. The personnamed admitted to being the holder of that account, but denied havingsold the perfume and refused to provide further information on thebasis of her right not to give evidence. Coty Germany asked the Stadtsparkasse Magdeburg bank to provide itwith the name and address of the holder of the bank account intowhich it had paid the amount corresponding to the price of thecounterfeit perfume, but the bank refused to furnish that information,invoking banking secrecy. In view of this situation, Coty Germany brought civil action before theRegional Court of Magdeburg, which ordered the bank to provide theinformation requested. That court's judgment was quashed by theHigher Regional Court of Naumburg on the grounds that the bank was E L Z A B U R U
entitled to refuse to give evidence in civil proceedings under Germancivil law. Coty Germany lodged an appeal on a point of law before theFederal Court of Justice, which stayed the proceedings and made areference for a preliminary ruling to the CJ concerning whether Germanbanking secrecy legislation was compatible withon the enforcement of intellectual property rights.
n n n 2. FINDINGS. The CJ establishes limitations on national laws that
protect bank secrets and states thatprecludes a
national provision which allows, in an unlimited and unconditional
manner, a banking institution to invoke banking secrecy in order to
refuse to provide a court with information concerning the name and
address of an account holder within the context of proceedings for
intellectual property infringement.
The CJ finds that a national provision, taken in isolation, which allowsa bank to refuse, in an unlimited manner –since its wording containsno conditions or specification whatsoever– to provide informationconcerning the name and address of account holders involved inactivities which infringe intellectual property, does not respect thefundamental right to an effective remedy and to intellectual property,and it therefore prevents the competent national authorities frombeing able to order the disclosure of information provided under Art.
8(1)(c) of the aforementioned Directive. n n n 3. REMARKS. This matter highlights the need to strike a balance
between the right to an effective remedy, and to intellectual property,
and the right to personal data protection.
Although this judgment clearly supports national laws that ensure a fairbalance between the various fundamental rights at issue, it also impliesa serious limitation on banking secrecy in the investigation ofintellectual property infringements. In view of the opacity of the seller of counterfeit goods on the Internet,it is extremely important to identify the holder of the bank account intowhich payments are made in order to discover the perpetrator of theinfringement. As the Advocate General pointed out in hisf 16April 2015, in Germany it is impossible to bring civil proceedings againstan unidentified person, and so in a clear-cut case of infringement,identifying the infringer is clearly justified. In Spain, we need to wait until this judgment has gained greater
significance in respect of civil jurisdiction, this being the jurisdiction
within which the banking secrecy which may be invoked was limited,
and to a lesser extent in criminal jurisdiction, where examining
magistrates already hold broad powers in the investigation of offences
and the denial of fundamental rights. The judgment is a huge step
forward when it comes to dealing with the uncontrolled phenomenon
concerning sales of products bearing counterfeit trademarks on the
Internet. Juan José CASELLES
and  placed  under  the  duty  suspension  arrangement without  the  consent  of  the  trademark  holder.  The trademark  holder's  right  to  oppose  that  placing.
n n n 1. BACKGROUND. The request for a preliminary ruling was made
within the context of two sets of legal proceedings involving TOP
Logistics BV, Van Caem International BV and Barcardi, concerning goods
produced by Bacardi.
In 2006, at the request of Van Caem (a company active in theinternational trade in branded goods), several consignments producedby Bacardi were transported to the Netherlands from a third State andstored in the facilities of TOP Logistics (a company active in the storageand transhipment of goods) in the port of Rotterdam. All of the goods were initially placed under an arrangement for externaltransit or customs warehousing. Subsequently, some of the goods werereleased for free circulation and placed under the duty suspensionarrangement. Accordingly, those goods left the customs suspensionarrangement and were placed in a tax warehouse. Bacardi considered that its trademark rights had been infringed andapplied to a court in Rotterdam for an order to confiscate the goods onthe grounds that it had not consented to the introduction of the goodsinto the EEA and that the product codes had been removed from thebottles in the consignments concerned. E L Z A B U R U
In 2008, the Rotterdam court held that Bacardi's trademark rights hadbeen infringed. However, TOP Logistics appealed that decision in TheHague Court of Appeal, which also granted Van Caem leave tointervene in the appeal proceedings. In 2012, the Appeal Court ruled that the goods that had been placedunder the arrangement for external transit or customs warehousing didnot infringe Bacardi's trademark rights. It nevertheless requested apreliminary ruling with regard to the goods that had been released forfree circulation and then placed under the duty suspensionarrangement, since although those goods had become Communitygoods, the court was uncertain as to whether the placing of the goodsunder that customs arrangement meant that the sign was being usedin the course of trade, which could be prohibited by the trademarkholder on the grounds that such use adversely affected the functionsof the trademark pursuant to Art. 5 of n n n 2. FINDINGS. The request for a preliminary ruling concerns the
interpretation of the aforementioned Art. 5 of Directive 89/104/EC of
the Council of 21 December 1988, which was the first Directive to
approximate the laws of the Member States relating to trademarks and
was in force at the time of the events in question, although it was laterreplaced byf the European Parliament and of theCouncil of 22 October 2008. The aforementioned Article refers to the exclusive right of thetrademark holder to prevent any third party from using in the courseof trade any sign identical or similar to the trademark which could giverise to a likelihood of confusion among consumers, specifically, byimporting the goods, offering them, putting them on the market or stocking them for those purposes without the rightholder's consent. The CJ indicated in its judgment that the release of the goods for freecirculation gave rise to the payment of import duties, and so as of thatpoint they became imported goods within the meaning of Art. 5 ofof 25 February 1992 on the general arrangements forproducts subject to excise duty and on the holding, movement andmonitoring of such products (now replaced bof16 December 2008). In the CJ's view, the trademark holder is not obliged to wait for therelease for consumption of the goods covered by its trademark tooppose certain acts committed without its consent before that releasefor consumption (specifically, the importation of the goods concernedand their storage for the purpose of putting them on the market). The judgment states that the terms "using" and "in the course of trade"(within the meaning of Art. 5 of Directive 89/104/EC) cannot beinterpreted as referring only to immediate relationships between atrader and a consumer; account must also be taken of commercialcommunications and the commercial activities carried out with a viewto economic advantage. In light of all of the above, the CJ found that Van Caem made use ofthe BACARDI mark in trade by importing the goods without thetrademark holder's consent. It also used the mark by placing thosegoods under the duty suspension arrangement and storing them in atax warehouse. The Court nevertheless pointed out that use could not be inferred fromthe storage services provided by TOP Logistics; rather, that company'sactions merely permitted Van Caem to carry out such use.
Lastly, the CJ indicated that the essential function of the indication oforigin serves to identify the goods or services covered by the mark asoriginating from a particular undertaking, which is the company underwhose control the goods or services are marketed.
Therefore, any third-party act that prevents the trademark holder from exercising its right to control the first placing of the goods on themarket undermines that essential trademark function. n n n 3. REMARKS. The CJ agrees with The Hague Court of Appeal's
ruling insofar as placing goods under a customs suspension
arrangement for external transit or customs warehousing does not in
itself infringe the trademark holder's exclusive rights, as indicated in
the Philips and Nokia judgmentsince for that to occur there would also have to be commercial activity or advertisingtargeting EU consumers. No distinction is drawn between counterfeitand genuine goods ("parallel imports"). E L Z A B U R U
A different assessment is made with respect to goods that are releasedfor free circulation, which are no longer subject to a suspensive customsarrangement and so are considered as Community goods for all effectsand purposes, even if they are not directed at EU consumers, but willbe subsequently exported, for instance. Despite not being explicitly mentioned in the CJ's judgment, the factthat Van Caem removed the codes from the goods clearly underminesthe business origin identification function, since by doing so, it soughtto prevent the origin of the goods from being demonstrated. This judgment further clarifies the right of registered trademark holdersto control the initial marketing of genuine products bearing their mark following the release of the goods for free circulation carried out by a
third party. M. Tránsito RUIZ
30. Data  protection  and  the  right  to  privacy  and  honour.
Blacklists.  Burden  of  proof.  of  the  SpanishSupreme Court of 12 November 2015.  n n n 1. BACKGROUND. In November 2009, Mr. Humberto was
dismissed by Cotronic, S.A. (hereinafter "Cotronic"), a subcontractor of
Telefónica, S.A. (hereinafter "Telefónica"), on the grounds that he had
wrongfully charged a client one hundred Euros for a service that was
free of charge. Mr. Humberto filed a complaint against his dismissal.
The dismissal was declared unfair since the defendant failed to prove
the charges that had been made against Mr. Humberto. In the end,
Cotronic opted to pay compensation to its employee and terminate the
employment relationship.
Mr. Humberto attended a number of job interviews in thetelecommunications sector but was not hired. Finally, he wasinterviewed at Instalaciones de Tendidos Telefónicos, S.A. (hereinafter"Itete"), which even sent him for a medical examination, but thatcompany told him that they could not hire him. Mr. Humberto wasinformed by Telefónica's works council that he had been vetoed atCotronic's request and that, as a result, he could not be hired by anycompanies that worked for Telefónica. Mr. Humberto filed a complaint against Cotronic, in which he petitionedfor a declaration of infringement of his right to honour and his ownimage, and for the protection of his personal data. He also requestedthat all personal data referring to him be removed from Cotronic'srecords and that Cotronic pay him compensation of 653,319.56 Euros. E L Z A B U R U
Cotronic opposed the complaint, contending that once its employmentrelationship with the plaintiff had ended, it notified Telefónica so thatthe latter could cancel the card that it had issued to Mr. Humberto, andit denied having provided Telefónica with information on the reasonsfor his dismissal or any other personal data.
n n n 2. FINDINGS. This judgment first of all addresses the principle
concerning ease of furnishing evidence in certain lawsuits concerning
the infringement of fundamental rights.
The Supreme Court supports Constitutional Court doctrine whereby theplaintiff in proceedings concerning the infringement of fundamentalrights is not exempt from the evidence requirement, given that thatparty must provide what is known as "reasonable grounds" or "primafacie evidence". Once the plaintiff has done this, the defendant mustrefute those grounds or prima facie evidence by means of "rebuttalevidence", or by proving that there are grounds to justify its actions,and so no fundamental rights are infringed. In this case, the plaintiff had submitted evidence that the defendanthad behaved in a way that damaged his fundamental rights byproviding Cotronic with personal data that affected his reputation. Thatevidence consisted of a statement by a member of Telefónica's workscouncil which confirmed his conviction that there was a blacklist, andthe fact that the plaintiff had not found a job in that sector and hadnot been hired by Itete after having gone through the interview processand even attended a medical examination. The defendant, however, having proximity to the evidence, since it argued that it had not placedMr. Humberto on any blacklist and that it had sent a communicationlimited to the personal data necessary in order to cancel the cardprovided by Telefónica (name, surnames, national identity documentnumber and entry and leaving dates), did not submit thatcommunication in order to rebut the plaintiff's presumption. Secondly, the judgment analysed the infringement of the plaintiff'sfundamental rights. The Supreme Court confirmed the opinion given inrepared by the Spanish Data Protection Agency and in theon blacklists prepared by the Article 29 Data Protection Working Party, establishing that since they were personal data filescreated without the consent of those affected, none of the exceptionsprovided underf the Spanish Organic Act on Data Protectionwere applicable to them, and so the transfer of such data was illegaland infringed the fundamental right to personal data protection. Sincethe data in question was also capable of damaging the affected party'shonour, it also violated those fundamental rights. n n n 3. REMARKS. This judgment highlights the problems faced by the
plaintiff when it comes to proving that his fundamental rights have
been infringed, with the plaintiff being required to submit prima facie
evidence of the infringement and the defendant being required to
submit sufficient rebuttal evidence.
In this case, the defendant failed to sufficiently and adequatelydemonstrate that the acts constituting violation of fundamental rightshad not occurred. The Supreme Court also considered that the unauthorised transfer of
the plaintiff's personal data constituted infringement of the personal
data protection laws and of the right to honour, since the data did not
satisfy the truthfulness requirement and adversely affected the
plaintiff's reputation. Cristina ESPÍN
31. The  right  to  be  digitally  forgotten.  of  the 1. BACKGROUND. This case stems from a news article published by
the newspaper "El País" in 1985 regarding the arrest of A and B for
drug trafficking. The article also made reference to their drug addictionand to the medical treatment that they received whilst in prison in orderto ease their withdrawal symptoms. The newspaper's digital library became accessible to the public free ofcharge in 2007. When the names and surnames of those concernedwere used as keywords in the general Internet search engines, a link tothe website containing the news article appeared among the firstsearch results. E L Z A B U R U
The initial complaint prompting these proceedings was filed when thenewspaper rejected the request to stop processing the personal data ofA and B and the possibility of replacing them with their initials and/oradopting technological measures to prevent information on eventsoccurring many years ago from being indexed in the general Internetsearch engines. Chamber I of the Spanish Supreme Court resolved the appeal on a pointof law lodged by Ediciones El País, S.L. against Barcelona Court ofAppeal's judgment in respect of the ordinary proceedings heard byBarcelona Court of First Instance no. 21.
2. FINDINGS. The Court brought to the fore the scope of liability of
website publishers, specifically digital libraries which contain personal
data enabling news articles to be indexed in search engines. It stated
that such libraries process data under the obligation to abide by the
requirements established by law, specifically, the "data quality
principle" (art. 6 ofand art. 4 ofhe
Supreme Court considered that the passing of time rendered the dataprocessing inadequate with regard to the purpose of the datacollection, thus echoing the CJ's judgment of 13 May 2014, Googlein the "right to be forgotten" case. It also found that the newspaper's refusal to cancel the processing ofthe plaintiffs' personal data infringed their right to personal dataprotection and encroached on their rights to honour and privacy,bearing in mind that the automatic indexing of the informationcontained in the digital library, despite the fact that that informationwas truthful, caused disproportionate damage to the reputation of theaffected parties, since A and B were not important public figures andthe events lacked historical relevance. Such indexing would not becovered by the right of digital libraries to freedom of information,which they exercise to a softer degree in view of the secondary role thatthey perform, as declared by the European Court of Human Rights(ECHR).
The Court also acknowledged the need for the website publisher toadopt technological measures, making use of the pertinent exclusion protocols in order to prevent the affected parties' personal data frombeing indexed and stored on search engine databases. Nevertheless, it overturned the Appeal Court's decision not to publish identificationdetails (neither their names nor their initials) and revoked theprohibition on indexing personal data for use by the digital library'sinternal search engine, thus acknowledging the integrity of digitalarchives protected under Art. 10 of thend supported by the ECHR, which precludes the alteration ofthe content of such archives by removing or deleting data. The Courtanalysed this issue by drawing a distinction between those who moreactively search for information, who must be able to access the newsthrough the digital library's search engine, and the general audience,i.e., search engine users, for whom the news article would be invisible. Lastly, the Court upheld the data subjects' right to compensation. 3. REMARKS. This is the first Supreme Court judgment on the "right
to be digitally forgotten", where the Court establishes the scope and
limitations of that right. Although it acknowledges the relationship
between the passing of time and privacy and accepts the data subjects'
objection to the processing of their personal data, it specifies that this
right does not entitle "each person to custom-build their past". It
confirms the media's liability with respect to news articles stored in their
digital libraries by appropriately weighing up public and private
interests. This judgment is an important step forward in the process of
securing full and effective protection for personality rights in the digital
environment. Paradoxically, the necessary preservation of privacy in an
era of hyperconnectivity can be achieved using technological tools. The
legislative recognition of the "right to be forgotten" could become a
reality if the proposed General Data Protection Regulation is ultimately
approved. That Law, Art. 17 of which regulates the "right to be
forgotten", would be directly applicable in the Member States. Cristina
GARCÍA DE LA RASILLA
32. The  Safe  Harbour  Decision  is  invalid  and  attacks  the n n n 1. BACKGROUND. Maximillian Schrems, an Austrian national, has
been a Facebook user since 2008. It is usual practice for some or all of
E L Z A B U R U
the personal data of users residing in the European Union to betransferred from Facebook's Irish subsidiary to servers located in theUnited States, where it undergoes processing. On 25 June 2013, Mr. Schrems made a complaint to the Irish supervisoryauthority (the Data Protection Commissioner) on the grounds that, inlight of the revelations made by Edward Snowden in 2013 concerningthe United States intelligence services (the NSA and others), the law andpractice in force in that country did not ensure adequate protection bythe public authorities of the personal data transferred there from the EU. The Irish Commissioner rejected the complaint on the basis of the of 26 July 2000, according to which under the "safe harbourscheme", the United States ensured an adequate and satisfactory levelof protection of the personal data that is transferred (the "Safe HarbourDecision"). Mr. Schrems lodged an appeal with the Irish High Court, whichconsidered that the issue raised in those proceedings tied in closely withEU law since, in its view, the Safe Harbour Decision did not satisfy therequirements established in the judgments rendered in casesandEU:C:2014:238.
On 17 July 2014, the Irish High Court referred the following questionsto the Court of Justice (CJ) in order to obtain clarification on the subject: "1) Whether in the course of determining a complaint which has beenmade to an independent office holder who has been vested by statutewith the functions of administering and enforcing data protectionlegislation that personal data is being transferred to another thirdcountry (in this case, the United States of America) the laws andpractices of which, it is claimed, do not contain adequate protectionsfor the data subject, that office holder is absolutely bound by theCommunity finding to the contrary contained in [Decision 2000/520]having regard to Article 7, Article 8 and Article 47 of [the Charter], theprovisions of Article 25(6) of Directive [95/46] notwithstanding? 2) Or, alternatively, may and/or must the office holder conduct his orher own investigation of the matter in the light of factual developmentsin the meantime since that Commission decision was first published?" In theof the Advocate General (Yves Bot), the fact that anundertaking holds a safe harbour certification does not mean that itautomatically satisfies the personal data transfer requirementsestablished in the Community Directive on data protection. This argument had previously been put forward in Communicationsand n n n 2. FINDINGS. On 6 October 2015, the CJ ruled that the Safe
Harbour Decision was invalid, and that the Irish supervisory authority
should have thoroughly and diligently examined Mr. Schrems' complaint
in order to determine whether the transfer of personal data by
Facebook's European subsidiary to Facebook servers in the United States
was in conformity with data protection principles and the protection of
the fundamental rights of EU citizens, in view of the evidence thatsuggested that the practices in that country did not ensure an adequatelevel of protection of Mr. Schrems' personal data.
3. REMARKS. Considering that the Irish High Court was the court that
made the reference for a preliminary ruling which gave rise to this
decision, it will likely be the first court to decide whether US companies
will have to: (a) compile and process all personal data on EU citizens
within the European Union; or (b) undertake to effectively protect EUcitizens' personal data, by preventing the US intelligence agencies fromaccessing or interfering with same. The CJ's conclusions on safe harbour will also likely apply toundertakings that operate under a BCR (Binding Corporate Rules) ormodel contract scheme system. However, Art. 26 ofstablishes the exceptions on which US companies could rely when it comes to continuing to process EUcitizens' personal data (for example, the consent of the data subject,the need to transfer the data in order to perform a contract entered into with the data subject, etc.). This decision by the CJ sends out a warning to foreign companies which
process EU citizens' personal data, whereby they must protect such data
in accordance with reasonable standards from the standpoint of the
pertinent EU laws. Cristina ESPÍN and Alba Mª LÓPEZ
E L Z A B U R U
n n n 1. BACKGROUND. The Estonian courts held Delfi AS, the leading
Internet news portal in the country, responsible for the defamatory
comments posted by its users.
Delfi decided to take the case to the ECHR, since it considered that asmeasures for removing comments had been put in place on its portal(automatic filters and a notice-and-take-down system), the court's rulinginfringed its right to freedom of expression. In the first instance, the ECHRthe Estonian decision on thegrounds that the restriction on Delfi's freedom of expression wasjustified and proportionate. Delfi lodged an appeal against thatdecision with the Grand Chamber of the ECHR.
n n n 2. FINDINGS. The legal findings established by the Grand
Chamber address essential issues such as legality and restrictions on
freedom of expression.
The Court proceeded to verify whether, by virtue of Estonian law, it wasforeseeable to conceive that freedom of expression could be restricted,since a citizen can only regulate his/her conduct accordingly when heor she learns the consequences of an action. Delfi argued that there were no rules in that regard, since Europeanlaw precluded intermediaries from being held liable by virtue of n Electronic Commerce. The ECHR nevertheless pointed out that Delfi, being one of the largestnews portals in Estonia, should be familiar with national law, and so itcould potentially be held liable. The Court then analysed the restrictions on freedom of expression, towhich end it took account of the commercial and professional natureof the portal and its economic interest in receiving as many commentsas possible. In view of the above, and given the degree of control possessed by Delfi,the Court ruled that it could not be considered as a mere intermediary.
It is thus significant that although Delfi had put in place measures forfiltering the comments, they proved to be insufficient both in respectof the prior automatic filtering system (the detection of inappropriatewords) and the subsequent notice-and-take-down system (thepossibility of reporting inappropriate comments), since it took six weeks for the offending content to actually be removed. The Court considered that there would be no conflict if there were nodelay in the removal of the comments. It is interesting to note how theCourt classifies the controversial comments as being clearly unlawful,branding them as hate speech. In view of all this, the Grand Chamber found that the Estonian approachdid not constitute a disproportionate restriction on the exercise offreedom of expression. The Grand Chamber therefore ratified the judgment using argumentsthat were essentially very similar to those put forward in the firstinstance. It is worth noting that in contrast to the previous judgment,this one was not unanimous.
n n n 3. REMARKS. The Delfi judgment merits particular attention,
since it is the first of its kind to analyse the potential violation of the
freedom of expression of online news portals.
The ECHR's reasoning suggests that news portals can hold culpa invigilando, and can be held liable for readers' comments, even withouthaving received a prior complaint. It thus follows that the comments posted on such portals should bemonitored from the point when they are published and taken downfrom the outset. Note that this decision cannot be extrapolated to other cases in ageneral manner, since it merely considers cases involving clearlyunlawful comments made within the context of a professionallymanaged portal operating for commercial gain. E L Z A B U R U
It therefore does not apply to other Internet forums where third-party
comments are posted and where Internet users can freely express their
ideas on any subject, without the administrator of the forum
contributing anything to the discussion for the purpose of directing it
(for instance, a discussion forum, an electronic notice board, or a social
media platform where the provider of the platform does not offer any
content and where the content provider can be an individual who
operates another website or blog as a hobby). Fernando DÍAZ
the  protected  designation  of  origin  Champagne.
f  Granada  Court  of  Appeal  of  28  October n n n 1. BACKGROUND. Comité Interprofessionnel du Vin de
Champagne (C.I.V.C.), a French company responsible for looking after
Champagne producers' interests and defending the designation of
origin throughout the world, filed legal proceedings against the owner
of an establishment named "Café Jazz La Champagnería" for
infringement of the Champagne designation of origin.
The establishment in question was a wine bar that specialised inChampagne but served all kinds of drinks, including cava and otherwines and spirits. The defendant had registered a trademark with theSpanish Patent and Trademark Office covering "restaurant services" andconsisting of the sign "CAFÉ JAZZ LA CHAMPAGNERÍA" together witha device representing piano keys, a bottle of Champagne and thebubbles characteristic of this kind of wine: E L Z A B U R U
In the legal proceedings brought by C.I.V.C., the following relief was sought: invalidation of the aforementioned trademark registration; adeclaration of infringement of the Champagne designation of origin;and an order to cease use of the sign "LA CHAMPAGNERÍA". Thecomplaint was fully accepted at first instance and the defendant lodgedan appeal against the judgment.
n n n 2. FINDINGS. In its appeal, the defendant argued that the
protection conferred on designations of origin by(now replaced bywas limited
exclusively to goods and did not extend to services such as the
restaurant services offered by the defendant in his establishment.
Against that interpretation of the provision, the Court considered that
the protection of designations of origin not only covered the product
itself, but also extended to the service that could be rendered under a
designation of origin or similar term, or one deriving directly from it,
in trade. That was the case of the defendant's establishment identified
by the term CHAMPAGNERÍA, the Spanish word for an "establishment
where Champagne is sold or served".
The Court therefore concluded that the use of a mark similar to adesignation of origin as the name of an establishment in order to takeadvantage of that designation of origin's reputation to attract theattention of potential customers, and offering products not onlypertaining to the designation of origin but also different products, aswell as a restaurant service, is an unlawful act prohibited under Art. 118quaterdecies of Regulation (EC) no. 1234/2007. That provision protectsdesignations of origin against all direct or indirect commercial use of aprotected name, insofar as such use takes advantage of the reputationof a designation of origin or a geographical indication. The Court therefore confirmed the declaration of invalidity of thetrademark "CAFÉ JAZZ LA CHAMPAGNERÍA" on the grounds that itinfringed the Champagne designation of origin and thus fell within thescope of the bar to registering signs that are contrary to law, and itprohibited its holder from using it. The judgment is final.
n n n 3. REMARKS. The issue of extending the protection of the
Champagne designation of origin to the use of same on bar and
restaurant services, over and above use on products that compete
directly with those designated by the designation of origin, had alreadybeen considered in the judgment of Alicante Mercantile Court no. 1 of17 April 2008 in the case Bar Champagne. In that judgment, the courtconsidered that the use of the geographical indication to identifyestablishments was not permitted since it could weaken the indicationand take unfair advantage of its aura of prestige and distinction. Granada Appeal Court's judgment of 28 October 2015 has delivered thesame ruling in a similar case. Arguments in favour of restricting theprotection of designations of origin exclusively to the kind of productthat they cover have been explicitly rejected by the Spanish courts,which thus prevents undertakings from encroaching on the image of quality and prestige of designations of origin such as Champagne inorder to promote unrelated goods or services to the public. Basically, as has been confirmed in this judgment by Granada Court of
Appeal, under no circumstances can free riding on the reputation of a
designation of origin in order to attract customers to goods or services
not covered by that designation be deemed a lawful act. Carlos
MORÁN
35. Cancellation  of  a  domain  name  due  to  breach  of registration  rules.  Decision  by  Red.es  of  14  December2015, VOGUE.
n n n 1. BACKGROUND. The international publisher Condé Nast, owner
of the famous VOGUE fashion magazine, learned that a third party was
operating a website under the domain name voguezapatillas.es. Sports
shoes of different famous brands were being sold on that website.
Nevertheless, the website did not provide any contact details to enablethe person operating the site to be located. It appeared to be a businessthat was involved in the sale of counterfeit goods. Furthermore, thedetails that appeared on the domain name registration's "Whois"report were scant and strange: an extravagant name and email addresswere given for the holder; the registrar was a company located in India; and the hosting service provider was a company located in China. Consequently, the only way in which to contact the owner of thewebsite and domain name was through the email address thatappeared on the Whois database. Condé Nast therefore sent a ceaseand desist letter to the holder of the domain name by email, notifying E L Z A B U R U
that party of its exclusive rights in the VOGUE trademark and warningthem that use of the domain name voguezapatillas.es could infringe itstrademark rights; it also urged the holder of the domain name toimmediately cancel their domain name registration or change it so that it no longer contained the term VOGUE. As was to be expected, thatletter went unheeded. Despite this (or perhaps precisely because of this), the apparentlyunlawful nature of the activities being carried out on the websitevoguezapatillas.es and the virtual lack of information on its ownersuggested that the person or persons hiding behind the site and domainname in question were trying to conceal their identity, and that thescant information given on the Whois database was or could be fake.
In that regard, the(NPIDN) –the provision applicable to the system for assigning domain names –sets out a series of obligations deriving from the assignment of domainnames. In particular, Art. 13.1 of that Plan establishes that "applicantsfor a domain name shall provide their identification details, beingresponsible for their accuracy and truthfulness". Taking the above into account, Condé Nast decided to file a request tocancel the domain name registration voguezapatillas.es with Red.es(the authority responsible for assigning and managing ".es" domains)on the grounds that its holder had breached the obligation laid downin Art. 13.1 NPIDN to furnish accurate and truthful identification details. Red.es provided the holder of the domain name with the request forcancellation so that that party could submit the pertinent allegationswithin a period of 10 days. Nevertheless, the domain name holder didnot make any allegations. n n n 2. FINDINGS. The decision first of all pointed out that the use of
a domain name is subject to the obligations and conditions established
in the NPIDN. It indicated that, effectively, one of the obligations
imposed on domain name applicants is that they provide their
identification details, and that they be responsible for the truthfulness
and accuracy of those details. It stated that any breach of those
obligations would prompt it to cancel the domain name (either ex
officio or ex parte).
Red.es went on to indicate that the party requesting the cancellationof the domain name voguezapatillas.es had satisfied the formalrequirements for commencing the cancellation procedure, and that thedomain name holder had not made any allegations against thecancellation request. Red.es therefore concluded that it had not beenvalidly demonstrated that the holder of the domain name had compliedwith the condition for assigning domain names cited by Condé Nast inits cancellation request. On that basis, Red.es found that registration of the domain namevoguezapatillas.es breached Art. 13.1 NPIDN and ordered its cancellation.
That authority also granted Condé Nast a 10-day period in which topreferentially request the transfer of the domain name in question.
n n n 3. REMARKS. Disputes arising from the registration by a third
party of a domain name that contains an earlier trademark registration
are commonplace in trademark law. In order to recover a domain name,
the trademark holder can essentially go down three different paths,
namely: the administrative path (bringing UDRP proceedings
administered by ICANN); arbitration; or the courts of law. Each of those
options has its advantages and disadvantages, depending on the
claimant's level of interest and the specific case concerned, but all of
them involve time and money.
In the case under analysis, the problem with pursuing any of the aboveremedies lay in the fact that it was impossible to identify and locate the holder of the domain name, which often occurs in cases whereintellectual property is infringed online. In those circumstances, CondéNast went down a different route, one which was not based directly onits trademark rights but rather on breach of the procedural rulesrelating to the registration of domain names. It effectively resorted totheegulated by Red.es. This procedure can be initiated by a simple request that is filed online on Red.es' website, andit involves setting out the allegations and causes of breach of theprocedural rules by the domain name in question in a concise form. A favourable ruling was issued on the request within just 15 days. Over and above its uniqueness, this case shows how problems cansometimes be solved in a practical manner by going down secondary E L Z A B U R U
pathways that are no less effective than directly resorting to the typical
actions and remedies (which are not always feasible). María CADARSO
CJ: Court of Justice
CTMR: Community Trademark Regulation
EPC: European Patent Convention
EPO: European Patent Office
EPUE: European Patent with Unitary Effect
OHIM: Office of Harmonization in the Internal Market (Trade Marks
and Designs)
TFEU: Treaty on the Functioning of the European Union
TRIPS: Agreement on Trade-Related Aspects of Intellectual Property
Rights
UPC: Unified Patent Court

Source: http://www.elzaburu.es/images/stories/recursos/documentacion/anuario/anuario-elzaburu-2015-in.pdf

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