On November 2, the government approved Royal Decree-Law 24/2021, which transposes, among other things, Directive 2019/790 on copyright in the digital single market (the DAMUD Directive).

The purpose of these regulations is to provide digital content with greater opportunities to compete in a single digital market.

Notable among the new features are the following:

• The scope of the exception for educational and scientific research purposes is expanded. Thus, Article 68 recognizes that prior authorization from copyright holders will not be required for the use of their works for educational purposes via digital media, provided that such use is carried out by teachers in the formal education system, by university staff, and by research organizations, in a secure electronic environment (such as a virtual classroom), and that the source is cited with the author’s name whenever possible. Furthermore, these acts shall be deemed to have taken place on Spanish territory, even if the recipients are not located there.
• Another of the most important changes is the requirement that intermediation service providers take appropriate measures to ensure the protection of such content. They will be liable for unauthorized acts of public communication, unless they can demonstrate:
• That they have made every effort to obtain authorization and to ensure that the works are not available.
• They have acted promptly in response to notices from rights holders requesting the removal of works or content, preventing them from being uploaded again in the future.
• The right of authors and artists, performers, or interpreters to adequate and proportionate remuneration when they enter into exploitation contracts for their works is recognized, in order to compensate for the imbalance that arises between them. To this end, a transparency requirement is established for licensees or assignees of exploitation rights, who must provide annually updated information on the exploitation of the work, the revenue generated, and the remuneration.

Other significant amendments to the Intellectual Property Law introduced by Royal Decree-Law include:

• Furthermore, in the event that, following the execution of the contract for the assignment of rights, there is a clear disparity between the initially agreed-upon remuneration and the total revenue derived from the work, Article 47 of the Intellectual Property Law (LPI) introduces a provision for revision due to unequal remuneration, pursuant to which the contract may be revised.
• A right of revocation is introduced in Article 48-bis, granting the author the authority to rescind the authorization or assignment, or to terminate its exclusivity, in the event that the work is not being exploited.
• The new wording of Article 58 stipulates that, through the publishing contract—in which the author assigns the right of reproduction and distribution to the publisher—the publisher acquires the right to equitable compensation under Article 25.
• The amendment to Article 32, paragraph 2, which eliminates the so-called “AEDE Levy”—a mandatory and non-waivable collective management fee. This levy affected content aggregators and search engines, which were required to pay it to Spanish newspapers. The new provision does not establish any formal requirements regarding the management of this right, and rights holders will be able to negotiate authorizations either individually or through a collecting society.
• Finally, through the addition of a new Article 129 bis, publishers of press publications and news agencies are granted an exclusive right of reproduction and making available to the public with respect to the online use of their press publications by information society service providers.

Authors: Mabel Klimt, Javier Fernández-Lasquetty, Claudia Fernández, and Clara Collado

(Supreme Court Landmark Case No. 157)

On June 30, 2021, the Supreme People’s Court of the People’s Republic of China issued the 28th batch of guiding cases, of which Case No. 157 concerned the protection of applied artworks.

Highlights of the ruling

For a work of applied art to be protected under copyright law, it must be original, possess a certain artistic value, and that artistic value must be clearly distinguishable from its practical function. Furthermore, intellectual property law protects only the aesthetic character of the work, not its technical utility.

Background

In 2009, Crosplus Home Furnishings (Shanghai) Co., Ltd. (hereinafter “Crosplus”) designed a traditional Chinese-style cabinet that it named the “Tang Yun Cabinet.” Between September and October 2011, it was displayed on a third-party website, and on December 10, 2013, Crosplus registered the copyright for the “three-dimensional design of the Tang Yun combination cabinet” through the China Copyright Protection Center.

In 2013, Crosplus discovered that Mengyang Furniture Sales Center (hereinafter “Mengyang”), a distributor of Beijing Zhongrong Hengsheng Wood Co., Ltd. (hereinafter “Hengsheng”), was selling a cabinet manufactured by Hengsheng that was substantially similar in appearance to “Tang Yun.” Crosplus then sued the Mengyang Sales Center and Hengsheng for copyright infringement of its work of applied art, the “Tang Yun Cabinet.”

The court rejected the plaintiff's claims, and the decision was overturned by the appellate court.

Conclusion

 The appellate court reviewed the case in two steps:

1. Was the “Tang Yun Cabinet” a work protected under the Intellectual Property Law?

Article 2 of the Implementing Regulations of the Copyright Law of the People’s Republic of China provides that “the term ‘work’ as referred to in the Copyright Law means original intellectual creations in the literary, artistic, or scientific fields, provided that they can be reproduced in tangible form.”
Article 4, paragraph 8, of the Implementing Regulations stipulates that “’works of art’ are two-dimensional or three-dimensional works of the visual arts created through lines, colors, or other means that produce an aesthetic effect, such as paintings, calligraphic works, and sculptures.”

Therefore, any original intellectual work that can be reproduced in tangible form is protected by the Copyright Act as a “work.”

Although China’s Copyright Law does not explicitly mention “works of applied art,” in practice they are generally protected as works of art. For an industrial product to be considered a “work of applied art,” it must—in addition to meeting the general requirements for a work (independent creation and creative expression)—have an aesthetic effect. Furthermore, the scope of protection under the Copyright Law is limited to the author’s expression and does not protect technical utility. Therefore, the protection of a work of applied art under the Copyright Law also requires that its artistic and functional aspects be clearly distinguished.

In this case, the plaintiff’s cabinet met both aesthetic and functional requirements. On the one hand, the plaintiff’s creative work is reflected in the choice of materials, patterns, and the specific placement of the accessories. The color of the furniture panels is not the natural wood grain itself, but rather imitates the color and elements of traditional Chinese furniture reimagined using abstract techniques; furthermore, the front cabinet doors, drawer handles, and drawers feature handcrafted solid brass hardware, among other characteristics.

On the other hand, the artistic nature of the closet can be clearly distinguished from its practicality, since modifying its artistic elements would not affect the closet’s practical function, which is the storage and display of clothing.

Based on the foregoing, it was confirmed that the plaintiff’s wardrobe can be considered a work of art eligible for protection under the Copyright Act.

2. Does the manufacture and sale of a product that is substantially similar in appearance to a work of applied art infringe the copyright of the latter?

To determine whether a product infringes the copyright of a protected work, the court must examine and decide whether that product is “substantially similar” to the protected work and whether the infringer had “access” to it.

As noted above, the Copyright Act protects only the artistic nature of works of applied art; therefore, the comparison between the infringing product and the protected work must be limited to the “artistic aspect.”

After comparing the two works, the court found that their creative elements were substantially similar, based, among other things, on the cabinet’s overall L-shape, the similar arrangement of the doors, the decorative accents, the pattern of the panels, and the overall shape.

Given that the defendant did not provide evidence to show when the design of the infringing products was completed, nor did it provide information about the designers—coupled with the fact that the defendant and the plaintiff were competitors in the same industry—the court found that there were grounds to believe that the defendant had “access” to the plaintiff’s works.

Based on the foregoing analysis, the court ultimately ruled that the products in question infringed the copyright in the work protected by the plaintiff.

Author: Dan Liu

On September 9, the Court of Justice issued a judgment in Case C-783/19, ruling on a preliminary ruling requested by the Provincial Court of Barcelona in connection with an action for infringement of the “Champagne” designation of origin brought by the Comité Interprofessionnel du Vin de Champagne (CIVC) against several tapas bars operating under the name “Champanillo.”

The Commercial Court of Barcelona had dismissed the case at first instance, ruling that there was no infringement of the designation of origin because the term “Champanillo” was not used to refer to an alcoholic beverage, but rather to hospitality services that were not comparable to Champagne wine.

When ruling on the appeal filed by the CIVC against this decision, the Provincial Court of Barcelona had some doubts regarding the interpretation of the applicable European Union regulation —Regulation No. 1308/2013—and decided to refer these doubts to the Court of Justice through a preliminary ruling.

The first of these questions concerned the possibility of protecting designations of origin, pursuant to Article 103(2) of that Regulation, against the use of designations that evoke a protected designation to identify services that are not comparable to the goods designated by the latter.

In accordance with the opinion expressed by the Advocate General, the Court has addressed this issue by stating that “the Regulation protects PDOs against conduct related to both goods and services.” In its view, the Regulation establishes “broad-ranging protection intended to cover all uses that constitute an unfair exploitation of the reputation enjoyed by products covered” by PDOs.

The Barcelona Regional Court also referred two questions to the Court of Justice regarding the criteria to be used in determining whether a designation of origin is“evoked,”within the meaning of the Union regulation. In particular, the questions focused on the relevance, for those purposes, of comparing the product protected by the PDO with the product or service designated by the disputed designation.

In this regard, the Court of Justice clarifies in its judgment that the existence of an evocative connection“on the one hand, does not require, as a prerequisite, that the product covered by a PDO and the product or service covered by the disputed sign be identical or similar; and, on the other hand, is established when the use of a designation gives rise, in the mind of an average European consumer who is reasonably well-informed and reasonably observant and circumspect, to a sufficiently direct and unambiguous link between that designation and the PDO.”

Based on these premises, it will be up to the Provincial Court of Barcelona to determine, in the case at hand and taking into account all the relevant circumstances, whether the use of the name CHAMPANILLO gives rise to that“sufficiently direct and unambiguous link”to champagne that establishes the existence of an evocative association.

Regardless of the decision the Spanish court ultimately reaches, the significance of this ruling lies in the fact that this is the first time the Court of Justice has explicitly ruled in favor of extending PDO protection to cases other than the use of similar designations to distinguish products of a similar nature to those designated by the designation of origin.

Furthermore, although this is not new compared to what the Supreme Court has stated in previous rulings, this ruling delves deeper into the distinction between the analysis of the concept of evocation and the existence of a similarity between the products distinguished by the PDO and those products or services to which the disputed designation applies. The Court thus highlights the distinction, for these purposes, between the criteria for comparison under trademark law.

Ultimately, recognizing the need to protect designations of origin from the exploitation of their reputation in various sectors—whether in relation to products or services—is essential for highly prestigious designations such as the Champagne designation. This ruling represents a significant step forward in that direction.

Author: Carlos Morán

Background

SPATEN-FRANZISKANER-BRÄU GmbH is the owner of two international trademarks, “Franziskaner” (No. G807592) and “Franziskaner Weissbier” (No. G1241072), both of which are licensed to Budweiser Investment (China) Co. Ltd. (hereinafter “Budweiser”) for use and maintenance in China.

On March 7, 2019, Budweiser filed a trademark infringement lawsuit, alleging that Guangzhou Keyuan Import & Export Co. Ltd. had infringed its trademark rights by importing, without its permission, a shipment of beer identical to the two international trademarks mentioned. The defendant argued that the imported beer was a “legal parallel import,” since it was produced in Europe by the trademark owner (SPATEN-FRANZISKANER-BRÄU GmbH) and exported by its affiliate, and therefore did not constitute an infringement of the trademark rights in question.

The Yuexiu District People's Court ruled in favor of the plaintiff at the first instance, ordering the defendant to destroy the infringing products and compensate the plaintiff for its losses. The Guangzhou Intellectual Property Court, however, overturned the first-instance ruling and held that the defendant's products constituted legitimate parallel imports.

The Decision

The Court of Appeals first clarified the definition of “parallel importation of trademarks” as “the cross-border trade in products manufactured or sold abroad by the trademark owner and bearing the trademark lawfully affixed thereto, which are imported into a third country or sold through customs without the consent of the trademark owner or its licensee.” Generally speaking, parallel importation of a trademark is identified by the following five constituent elements.

1. The rights holder has legal authority over the trademark in both the exporting and importing countries;
2. Imported products are manufactured and introduced to the foreign market by the trademark owner or with the owner's consent;
3. Trademark rights in both exporting and importing countries are held largely by the same person or entity;
4. The goods are imported into the target territory without the consent of the trademark owner in the importing country; and
5. The import does not violate the importing country's legal customs control procedures.

In this case, the court found that the beer in question was produced and marketed in Germany by SPATEN-FRANZISKANER-BRÄU GmbH, and sold and exported by INBEV BELGIUM S.A. to OKUNI TRADING BUANGKOK CRESCENT, the authorized importer and distributor of “Franziskaner” beer in Singapore. Subsequently, STARBEV PTE LTD resold the aforementioned goods, which it had purchased from OKUNI TRADING, to the defendant, and OKUNI arranged for shipment from Singapore to China directly in accordance with the sales contracts between OKUNI and STARBEV and between STARBEV and the defendant. The available evidence showed that the manufacturer of the goods, the seller and shipper in Europe, the licensor who authorized the import and sale in Singapore, and the plaintiff in the case were all companies belonging, directly or indirectly, to the Anheuser-Busch InBev NV/SA group.

Therefore, the court found that the parallel-imported goods were genuine.

Second, since the Trademark Law of the People’s Republic of China does not explicitly prohibit parallel imports of trademarks, the court must base its ruling on the legislative intent and the principles of trademark law in each case—that is, to safeguard the function of trademarks and protect the interests of consumers.

The primary function of a trademark is to distinguish the origin of goods. In this case, the trademark used on the allegedly infringing goods was owned by the same rights holder in both the country of origin (Germany) and the final country of import (China). Therefore, for the relevant public in the Chinese market, the allegedly infringing trademark did not disrupt the unique relationship between the trademark owner and the parallel-imported goods, and thus did not give rise to a likelihood of confusion.

Furthermore, both the parallel-imported goods and those authorized for sale on the Chinese market were subject to the same quality control system as the rights holder’s products and had been marketed by the rights holder in accordance with market standards, such that the quality assurance inherent in the trademark can be applied.

In light of the foregoing, the court ruled that the Chinese trademark in question had not been infringed, since the parallel-imported products did not undermine the functions of the Chinese trademark nor create a risk that consumers would mistakenly identify the origin of the products.

Comments

In this ruling, the court took a neutral stance on parallel imports of trademarked goods, holding that the legality of a parallel import must be assessed on a case-by-case basis in light of the circumstances of the specific case. If the trademark rights used on the parallel-imported goods are held substantially by the same person as the trademark rights in the importing country, and the function of the Chinese trademark is not affected, there is no reason to prohibit the parallel import.

Author: Dan Liu

Judgment of the Court of Justice (Fifth Chamber), Case C-762/19

The Court of Justice of the European Union (hereinafter the“CJEU”) has ruled, in Case C‑762/19, on the prohibition against any third party “extracting” or “reusing,” without the manufacturer’s authorization, all or a substantial part of the contents of the database.

The issue at hand concerns the compatibility of the operation of a specialized search engine with thesui generisright set forth in Directive 96/9, a matter that the Riga Regional Court has referred to the CJEU through two preliminary rulings, seeking to clarify, on the one hand, whether the display, in the list of results generated by a specialized search engine, of a hyperlink that directs the user of that search engine to a website provided by a third party—where the content of a database of job listings can be viewed—falls within the definition of “reuse” set forth in Article 7, paragraph 2(b) of Directive 96/9, and, second, whether the information derived from the meta tags of that website displayed by the search engine should be interpreted as falling within the definition of “extraction” set forth in Article 7, paragraph 2(a), of the aforementioned Directive.

To address these issues, we must first clarify the scope and purpose ofsui generis protection. The purpose of the sui generis right is to ensure the protection of a substantial investment in the creation, verification, or presentation of the contents of a database by granting the maker of that database the ability to prevent the unauthorized extraction or reuse of all or a substantial part of the contents, so that the person who took the initiative and assumed the risk of making a substantial investment may be rewarded for it.

It should also be noted that, pursuant to Article 7 of Directive 96/9, the protection of a database under the sui generis right is justified only if the gathering, verification, or arrangement of the contents of that database represent asubstantial investment from a quantitative or qualitative standpoint.

With regard to the criteria for determining whether a user’s act constitutes “extraction” or “reuse” within the meaning of Directive 96/9, “extraction” is defined as “the permanent or temporary transfer of the entire contents or a substantial part of the contents of a database to another medium, regardless of the means used or the manner in which it is carried out.” As for “reuse,” it encompasses “any form of making available to the public the entire contents or a substantial part of the contents of the database through the distribution of copies, rental, online transmission, or other means.” Both concepts must be interpreted to mean any act that consists of appropriating or making available to the public, without the consent of the person who created the database, the results of that person’s investment, thereby depriving them of the revenue that is supposed to allow them to recoup the cost of such investment.

The search engine at issue in this case allows users to search the entire contents of several databases simultaneously—including the plaintiff’s database—through a method different from that provided by the manufacturer of the database in question, thereby making that content available to its own users. By offering the ability to search multiple databases simultaneously, this specialized search engine allows users to access, on its own website, job listings contained in those third-party databases. In this way, users are provided with access to the full content of third-party databases through a method other than that intended by their creators.

In light of the foregoing considerations, the answer to the questions referred for a preliminary ruling is that Article 7, paragraphs 1 and 2, of Directive 96/9 must be interpreted as meaning that an Internet search engine specializing in searching the content of databases, which copies or indexes all or a substantial part of a database freely accessible on the Internet and then allows its users to search that database on its own website according to criteria relevant to its content, engages in “extraction” and “reuse” of that content, within the meaning of that provision, which the maker of that database may prohibit to the extent that such acts cause harm to its investment in the collection, verification, or presentation of that content—that is, provided that they pose a risk to the ability to recoup that investment through the normal exploitation of the database in question.

Author: Claudia Pérez Moneu

Spanish courts spend a great deal of time on “service of process.” Thus, when a defendant in a patent infringement case files a counterclaim challenging the validity of the patent, the court must serve the counterclaim on the plaintiff. This service of process is of vital importance because it triggers the two-month deadline for responding to the counterclaim. However, this is a symbolic service because the plaintiff already has the document in their possession thanks to the “service between legal representatives.” Wouldn’t it be more logical for the time limit to begin from that earlier service? Practical, yes, but an immediate affront to the principle that the proceedings must be driven and controlled by the court. The solution is simple. At a later stage, the court issues a ruling carrying out a symbolic “service” and initiating the time limit.

So far, so good. However, things became more complicated when the 2015 Patent Act allowed the patent holder to file a motion to limit the scope of the patent in response to the counterclaim. Although this had always been possible under Article 138.3 of the Spanish Civil Procedure Code (CPE), it lacked a specific procedural framework in the Civil Procedure Act, which had led to some improvisation on the part of the courts. Article 120 of the new Act changed all this by specifying that the request for limitation must be filed with the answer to the counterclaim and by setting a two-month deadline for a response. As usual, the court was required to “serve” the request on the counterclaimant, whose deadline for responding, however, began upon “receipt” of the request. This gave rise to a series of academic articles arguing that the start of this new deadline would not be the court’s “service,” but rather much earlier—from the moment of service between legal representatives.

In its order dated February 11, Commercial Court No. 5 of Barcelona ruled on this matter in favor of judicial service:“Any other interpretation of the proposals would mean leaving it up to one of the parties to determine when procedural deadlines begin to run and to drive the proceedings forward, in addition to rendering the provision set forth in the first paragraph of the statute meaningless. Taken to the extreme: if the time limit were to begin running from the moment the request is received—that is, upon transmission between legal representatives or between the parties themselves—what would be the purpose of transmission by the judge or court?” Article 120.5 “in no case authorizes circumventing or delegating the responsibility for driving the proceedings, controlling the timelines, and calculating them by the judicial body.”

Author: Colm Ahern

Barcelona’s commitment to hosting MWC 2021 appears to be firmly in place. Today, May 6, the Protocol between the Commercial Court of Barcelona and the European Union Trademark Court in Alicante was made public to ensure swift action regarding injunctive relief and preliminary proceedings for infringements of industrial and intellectual property rights.

Factors to consider:

1. MWC will be held from June 28 to July 1, 2021.
2. The Barcelona Commercial Court will rule on the same day that they are filed (within24 hours) on whether to accept requests for preliminary injunctions aimed at preventing the issuance of injunctions without a hearing against companies participating as exhibitors at the MWC.
3. Preliminary proceedings or fact-finding proceedings based on copyrights, patents, trademarks, designs, unfair competition, or advertising related to products exhibited at the MWC will be given preferential and priority treatment and will be resolved within two days (48 hours).
4. Requests for preliminary injunctions will also be given priority and will be decided within 48 hours (if granted without a hearing of the defendant) or 10 days (if a preliminary hearing is scheduled after the exhibitor has filed a preliminary brief).
5. Preliminary proceedings and injunctive relief may be sought against both in-person product presentations or displays and those conducted online and/or on any type of virtual platform.
6. Hearings on preliminary injunctions will be held primarily online.
7. Now is the time for companies, depending on their position, to establish their strategies well in advance to ensure an appropriate legal response. ELZABURU’s proven experience from several consecutive editions of the MWC is at your service.

Access the On-Call and Rapid Response Protocol for the 2021 Mobile World Congress.

Author: Enrique Armijo-Chávarri

According to the European Commission, the Digital COVID Certificate (DCC) is a digital credential that will help ensure that currently in-effect restrictions can be lifted in a coordinated manner, facilitating the mobility of European Union citizens. This certificate will include only the necessary key information, such as name, date of birth, date of issuance, relevant information about the vaccine, test, or recovery, and a unique identifier. In principle, the Spanish government intends to have it implemented by June of this year, so that it will be fully functional in time for the summer months.

Since this is a project that has generated some controversy, Ruth Benito, Of Counsel at ELZABURU and a specialist in personal data protection and privacy law, provides the following analysis of the privacy requirements expected of this certificate upon its implementation:

1. Data Protection and Security by Design and by Default

This is the first point for two main reasons:

1. Contrary to popular belief, applying privacy and security criteria from the outset of any project helps ensure its success in terms of both the project’s effectiveness and individuals’ trust, reduces risks to those individuals, and avoids the need for subsequent adjustments.
2. We are concerned that the proposed European Regulation on the Digital Green Certificate (DGC) states that no impact assessment was conducted due to the urgency of the matter, even though such assessments are one of the tools that can instill the most confidence in the public.

2. Complete transparency

We, as European citizens, have the right to know exactly what information this certificate will contain about us, how it will be handled, and who is involved in that process.

The future publication of the CVD Regulation (currently only a proposal) will provide a great deal of information on this subject, but there will still be many specifics unique to each Member State, particularly with regard to companies, technology, and the security measures implemented in each case.

3. Non-discrimination

One point that several countries have emphasized is that this CVD must not allow for any form of discrimination.

This Certificate is designed to facilitate the safe free movement of European citizens among EU Member States. Therefore, it must be ensured that it will be used solely for this purpose and not for other matters that could involve discrimination—not even by the certificate holder themselves—such as if it were used in job recruitment processes.

It is worth asking whether the CVD is already inherently discriminatory to some extent, given that those who have not yet been vaccinated or had the disease will have to pay for diagnostic tests—the results of which may be included in the certificate or verified through other means—in order to be able to travel.

4. Actual usefulness and effectiveness

The information contained in the CVD must be up to date at all times, but it must also be appropriate for the intended purpose. This is an issue that does not appear to have been fully resolved at this time, as there is still no scientific evidence that immunized individuals—whether because they have had the disease or because they have been vaccinated—do not transmit the disease; in other words, that they cannot infect others.

Furthermore, since it is still too early to tell, it is also unknown how long that immunity will last. Consequently, the information does not appear to be as reliable as would be desirable for the intended purposes, which may conflict with the principle of data accuracy. We understand that progress must be made on this issue and that scientific conclusions and evidence will be taken into account to make the necessary adjustments to the system to ensure its maximum effectiveness while ensuring the proper use of our personal data.

5. Minimize data

Both the data processed “behind the scenes” by the CVD and the data ultimately displayed in the app or on paper when traveling should be limited to the minimum truly necessary to achieve the intended goal.

We do not yet know exactly what information will be displayed when the passport is used, but this is something that must be analyzed in detail. For example, a simple “Approved” or “Not Approved” status might be sufficient for travel, if it were not necessary to know the specific circumstances that qualify the person (being vaccinated, having recovered from the disease, or having a negative diagnostic test result), or it might be necessary to know the specific qualifying circumstance but not, for the purposes of granting entry into the country, to know which specific vaccine was administered or what type of test was performed, etc.

6. Keep an eye on your travel companions

National authorities must assess whether providers of technology, infrastructure, storage, etc., offer sufficient guarantees to ensure that the handling of such sensitive personal information is carried out with appropriate security measures and that there will be no unjustified interference with the rights of European citizens. In any case, we understand that the company or companies selected, with regard to Spain, must comply with the measures required under the National Security Framework.

7. Interoperability

As already stated in the proposed European regulation, uniform conditions must be in place for the issuance, verification, and acceptance of certificates in all EU countries. Otherwise, the mobility of Europeans within the Union would not truly be facilitated.

8. Universal and free of charge

The proposed regulation also rightly stipulates that the CVD must be universal and free of charge, which does not mean that it has to allow us to travel for free all over the world (we wish!), but rather that all Europeans must be able to access the certificate free of charge.

Free access is indeed a prerequisite for the CVD to be universal. However, it must also be ensured that certain vulnerable groups—such as minors (who, moreover, are not currently receiving the vaccine), people with disabilities (accessibility), and those disadvantaged by the digital divide—can effectively benefit from it.

9. Whoever starts it and stirs it up gets a slap in the face

This is not a pie that can be sliced up. Therefore, the authorities and companies involved in the CVD may not, outside of its intended purposes, share Europeans’ health information or exploit it in any way, and cross-border passenger transport service operators that need access to the certificates should not create their own databases containing that information.

10. Don't come here to stay

The CVD only makes sense—and is therefore justified and legitimate—for as long as the pandemic and/or public health emergency lasts. Therefore, once that situation has passed (hopefully sooner rather than later), both the certificate and the technology behind it must be discontinued, and the health information of Europeans that has been stored in the CVD’s systems must be deleted.

Previously published in Confilegal, by Luis Javier Sánchez.

For more information, you can listen to the interview with Ruth Benito on Capital Radio's "Ventaja Legal."

Author: Ruth Benito

On June 28, 2011, Kerry Luxembourg Sàrl (“Kerry”) filed an application for the EU trademark KERRYMAID (word mark) for various goods in classes 29 and 30. The Irish company Ornua Co-operative Ltd. (“Ornua”) filed an opposition based on 18 prior trademarks consisting of the sign KERRYGOLD and registered in classes 1, 5, 29, 30, 32, and 33, pursuant to Articles 8(1)(b), 8(4), and 8(5) of the EU Trademark Regulation.

The Opposition Division upheld the opposition by applying Article 8.5 of the EUTM Regulation and based on the following trademark:

In December 2013, the applicant filed an appeal against the Opposition Division’s decision. However, the proceedings before EUIPO were suspended due to the infringement action filed by Ornua in Spanish courts regarding the marketing of products under the KERRYMAID trademark.

In July 2019, the Board of Appeal ruled on the appeal filed by Kerry, partially overturning the Opposition Division’s decision and upholding the opposition filed by Ornua based on Article 8.1.(b) EUTM Regulation, for all goods covered by the applied-for trademark, with the exception of“meat, fish, poultry, and game; preserved, dried, and cooked fruits and vegetables”in Class 29. The Board of Appeal concluded that the conflicting signs were similar to a moderate degree and, therefore, there was a likelihood of confusion with respect to the goods in Classes 30 and 29 that were identical or similar to the goods covered by the earlier trademark. Furthermore, the Board noted that the peaceful coexistence of the conflicting signs in Ireland and the United Kingdom did not allow for the conclusion that there was no likelihood of confusion for a portion of the relevant public that is unaware of the geographical reference contained in the term “kerry.”

Kerry’s appeal before the General Court (GC) is based on a single ground: the alleged violation of Article 8(1)(b) of the EU Trade Mark Regulation by the Board of Appeal’s decision. Kerry argues that the Board erred in concluding that there was a likelihood of confusion between the marks at issue and challenges the Board of Appeal’s findings regarding the relevant public’s perception of the geographical name “kerry,” the distinctiveness of the earlier mark, and the similarity of the signs at issue.

In its judgment of March 10, 2021 (T‑693/19), the General Court dismissed Kerry’s action and upheld the decision of the EUIPO Board of Appeal based on the following findings:

• That Kerry did not provide any evidence that could call into question the Board of Appeal’s finding that there was no clear indication that the non-English-speaking public in continental Europe would understand the term “kerry” as a geographical indication for the designated goods.
• That Kerry did not provide any evidence that could call into question the Board of Appeal’s finding that the term “kerry” included in the earlier mark had, for the majority of the relevant public—with the exception of the Irish public and, possibly, the public in the United Kingdom—distinctive character in relation to the goods for which the mark was registered.
• Although it might be argued that the relevant public as a whole perceives the term “kerry” as a geographical indication when used in connection with the goods covered by the earlier mark, there is no basis for challenging the Board of Appeal’s conclusion that the word element “kerrygold” is the dominant element of the earlier mark, insofar as—contrary to Kerry’s assertion— that conclusion was not derived exclusively from the presence of the term “kerry” in the word element “kerrygold,” but rather from the position and size of that element and the lack of distinctiveness of the figurative elements of the earlier trademark.
• The Chamber did not err in failing to find that the figurative elements of the earlier mark were not the dominant and distinctive elements of the sign, insofar as, as the Chamber noted, the depiction of a grazing cow appearing in the earlier mark, in connection with dairy products, will be perceived by consumers as a descriptive element of the nature of the designated goods, and that the other figurative elements of the sign (the flowers, the green background, the white lines, and the typeface used) will be perceived as merely decorative elements that do not serve to convey any message that consumers might remember.
• That the signs in question are visually and phonetically similar to a moderate degree due to the common element “kerry” located at the beginning of the word elements of the signs; therefore, the Chamber correctly concluded that, although the conflicting signs are not conceptually similar, the signs are similar as a whole.
• That, in light of the foregoing considerations, the Board correctly concluded that, in its overall assessment of the likelihood of confusion, in the present case, with respect to the goods covered by the applied-for mark that are similar or identical to the goods in Class 29 covered by the prior mark, there may be a likelihood of confusion on the part of the relevant public that is unaware of the geographical reference contained in the term “kerry,” which constitutes a large portion of the relevant public.

With regard to the objections raised by Kerry concerning the Board’s analysis of the likelihood of confusion, the General Court notes:

• That the assessment of the likelihood of confusion conducted by EUIPO necessarily involves an abstract evaluation, which is not based on the circumstances of the marketing of the goods, but rather on the “objective” manner in which the goods designated by the marks at issue are marketed; and, therefore, the manner in which the earlier trademark is used is irrelevant for the purposes of analyzing the likelihood of confusion, and the Board of Appeal was not required to take into account the evidence submitted by Kerry.
• That, in any event, even assuming that taking that evidence into account would have allowed the Board of Appeal to conclude that the term “kerry” had Irish connotations for the relevant public, mere connotations cannot suffice to establish that the relevant public as a whole perceives the term “kerry” as a geographical indication when used in connection with the goods covered by the earlier mark, since this would require a sufficiently direct and specific link between the sign and the goods, enabling the relevant public to perceive immediately, without further ado, a description of the goods in question or of one of their characteristics.
• That the ECJ judgment of January 7, 2004, Gerolsteiner Brunnen (C-100/02, EU:C:2004:11), relied upon by Kerry, is not applicable to the present case because a reading of that judgment does not indicate that the Court of Justice examined whether the term “Kerry,” in connection with the goods at issue, would be understood by the relevant public as an indication of their geographical origin.
• That the Chamber did not err in failing to take into account the judgments of the Provincial Court of Alicante and the EU Trade Mark Court rendered in the context of the infringement action brought by Ornua, insofar as EUIPO is not bound by the decisions of EU trade mark courts rendered in the context of infringement actions, in the context of exercising its exclusive jurisdiction over the registration of EU trademarks and, in particular, when, in doing so, it examines oppositions filed against applications for the registration of EU trademarks.
• That, with regard to the alleged peaceful coexistence of the trademarks at issue, contrary to what Kerry contends, the burden of proof lies with the party alleging the existence of such peaceful coexistence; furthermore, when an opposition to the registration of an EU trademark is based on an earlier EU trademark, peaceful coexistence must be proven throughout the entire territory of the European Union.

In light of the foregoing considerations, the General Court concludes that the Board of Appeal correctly found that there was a likelihood of confusion on the part of the relevant non-English-speaking public between the mark applied for and the earlier mark, within the meaning of Article 8(1)(b) of the EU Trade Mark Regulation, with respect to the goods in question.

Author: Ana Sanz

The court dismissed Heineken's claim and found no evidence of misleading advertising or unfair competition in the advertising for the Spanish brand represented by ELZABURU.

Judgment No. 9/2021, dated January 18, issued by Section 28 of the Provincial Court of Madrid, has upheld the dismissal of the unfair competition lawsuit filed by Heineken against its competitor Mahou in connection with the advertising campaign for the launch of Mahou Cinco Estrellas Radler in the summer of 2018.

The advertisements released as part of that campaign to launch the new product included the slogans“The First Cinco Estrellas Radler”and“The First Cinco Estrellas Radler with Natural Lemon Juice,”along with an image of the bottle or can of the beer in question.

Heineken argued in its complaint that the words “the first” in that advertising slogan could only be interpreted in two ways: in a chronological sense, as the first Radler-style beer to appear on the market; or in a sense of preeminence in terms of quality, above all other Radler-style beers. Since, according to Heineken, neither of these two interpretations was true, the advertisement constituted misleading advertising with an exclusionary tone, prohibited by Articles 5 and 7 of the Unfair Competition Act.

The message conveyed by the controversial advertisement, however, differed from the only two interpretations put forward by the plaintiff. The prominent image of the Mahou beer bottle or can, with its famous “Mahou Cinco Estrellas” brand in the foreground, informed the viewer that this was the brand’s first “Radler”-style beer—or beer with lemon—to appear on the market. The advertisement therefore had a chronological significance, though not an absolute one, and specifically referred to Mahou’s well-known Cinco Estrellas beer.

This was the understanding of both the Madrid Commercial Court No. 12, at the first instance, and the Provincial Court of Appeal. Both courts applied the legal doctrine according to which advertisements must be considered as a whole to assess whether they are misleading.

The analysis proposed by Heineken, which excluded the advertisement’s main graphic element—the image of the beer being advertised—was flawed and led to a misinterpretation of the message conveyed.

The court’s ruling was further supported by a market study submitted by Mahou as part of the proceedings, in which only 3% of respondents spontaneously interpreted the advertisement in any of the ways argued by Heineken, compared to more than 20% who understood it as an advertisement for the first “Radler”-style beer from the Mahou brand.

Access to the article published in Expansión Jurídico.

Author: Carlos Morán