Durán-Corretjer SLP

On 21 December 2017 the Court of Justice issued a preliminary ruling that brought clarification on the legal question of trade mark exhaustion of the global trade mark “Schweppes”, interpreting article 7(1) of Directive 2008/95/EC, read in the light of article 36 TFEU. (Case C-291/16).

The request was made in the course of proceedings on parallel imports brought by Schweppes S.A. against Red Paralela S.L. and Red Paralela BCN S.L., before the Barcelona Commercial Court No. 8 where different owners had rights on identical trade marks within the EEA, as the original proprietor split the trade mark resulting in national registrations belonging to different owners.

In this case, the trade mark Schweppes is owned in all EEA Member States except the UK by one company, the plaintiff of this case: Schweppes S.A., while the owner of the trade mark in the UK is an independent company, i.e: Coca-Cola/Atlantic Industries. The latter company obtained the ownership of the trade mark in the UK by assignment of the plaintiff.

The CJEU decision states that a trade mark proprietor cannot oppose to the import of identical goods bearing the same mark originating in another Member State in which that mark, which initially belonged to that proprietor, is now owned by a third party which has acquired the rights thereto by assignment, when, following that assignment,

– the proprietor, either acting alone or maintaining its coordinated trade mark strategy with that third party, has actively and deliberately continued to promote the appearance or image of a single global trade mark, thereby generating or increasing confusion on the part of the public concerned as to the commercial origin of goods bearing that mark,

or

– there exist economic links between the proprietor and that third party, inasmuch as they coordinate their commercial policies or reach an agreement in order to exercise joint control over the use of the trade mark, so that it is possible for them to determine, directly or indirectly, the goods to which the trade mark is affixed and to control the quality of those goods.

Conclusion

This ruling shows that even in cases of different ownership of the same trade mark in different countries belonging to the EEA, the relationship between the different owners regarding the use of the trade mark may impact in the right of the proprietor to prevent parallel imports within the EEA. Therefore, these aspects must be taken into account when concluding assignment agreements and cooperation agreements of the same trade mark by two or more parties.

In this case, it is now the turn of the Barcelona Commercial Court to apply the ruling and to determine whether all the conditions for exhaustion are met in the pending proceedings.

For the fourth consecutive year, during the month of February and during the MOBILE WORLD CONGRESS dates, Barcelona’s Commercial Court judges have adopted an on-call and rapid action protocol that contemplates, among others, the following measures:

a) To give a preferential and priority treatment to urgent interim injuctions (with or without a hearing) in relation to patents and technological innovations as well as industrial designs whose presentation is expected to take place during the above mentioned Mobile World Congress; as well as trade mark and copyright infringements, protection of competition and unfair competition practices and illicit advertising, in relation to products and materials that are exposed or exhibited during the event.

b) To commit themselves to issue a decision on interim injunctions petitions without prior hearing of the defendant within two days from receipt of the request by the Court; and a maximum period of ten days from receipt of the application to issue a decision on interim injunctions petitions with prior hearing of the defendant, as long as a “protective letter” has been filed.

c) In the context of an eventual conflict with another company regarding industrial or intellectual property rights and where there is a reasonable fear of being subject to an interim injuction petition without prior hearing, to admit the submission of “protective letters” before Barcelona’s Commercial Courts to avoid, when possible, these interim injuctions being adopted without prior hearing of the defendant, which will, on the first place, allow the potential defendant to state their allegations and, secondly, their availability to immediately appear before the Court to resolve any query about the interim injunction petition without prior hearing.

According to the Patent Law, once the protective letter has been filed, the Court will inform the proprietor of the patent of the submission of that letter. Then, he will have a deadline to file the interim injunction petition, which will allow them to access to the content of the protective letter. In case that the owner of the patent does not file the interim injuction, the proceedings will be closed.
The filing of the preventive letter is not binding for the Court. This means that even if the proprietor of the patent files an interim injunction petition, the Court can still decide to grant if without a hearing.

d) In order to determine the required urgency regarding the adoption of such interim injuctions without prior hearing of the defendant, except when such hearing may compromise the proper functioning of the interim injuctions, the plaintiff’s prior behaviour and how quick their response to the knowledge of the infringement has been will be decisive. In this regard, it is relevant that the interim injunction petition has been filed sufficiently in advance so that, in good faith, it does not, prevent the hearing of the defendant, if the proprietor of the allegedly infringed right had had prior knowledge of the potential infringement and was able to file their petition with sufficient time in advance.

Mr. Christian Durán, Attorney at Law and Spanish Patent and Trade Mark Attorney from Durán-Corretjer, S.L.P. was invited, as panelist, to the XX Work Sessions and Administrative Council of ASIPI (Inter-American Association of Intellectual Property), which took place in Panama City between November 26th and 29th 2017.

The topic of the presentation was “From Subtlety to Imprudence: Imitating the Market Leaders (Trade Dress)” and Mr. Christian Durán focused his presentation in the Trade Dress protection from the European Union perspective.

ASIPI is the most important Intellectual Property association in America, and it brings together patent and trade mark professionals from those countries. Mr. Christian Durán is ASIPI’s representative before EUIPO.

Last November 29th, the European Commission adopted a package of measures addressed to reinforce the fight against infringement of Intellectual Property rights, that include:

1. Stepping up the fight against counterfeiting and piracy focussing on big infringers.
2. Ensure an equally high level of legal protection and predictable judicial framework across the European Union, creating a new guidance to interpret the Directive on the enforcement of intellectual property rights.
3. Reduce the volume of counterfeited products reaching the European Union market. To that end, the European Commission proposes to reinforce cooperation programmes with third countries (China, South-East Asia, Latin America) and create a watch-list of markets that are reported to engage in, or facilitate, substantial IPR infringement.
4. Creating a fair and balanced system for Standard Essential Patents.

Indonesia joins the Madrid Protocol. This accession to the Madrid Protocol  brings the number of Contracting Parties of the Madrid Protocol to 100.

On October 1, 2017 new changes on the European trade mark Regulation will enter into force.

Those changes relate to new types of trade marks (position, pattern, sound, motion, multimedia and holograms), new kind of trade marks (certification trade marks) and the possibility to claim subsidiary acquired distinctiveness.

If you are interested in receiving a more detailed information about those changes, you can contact us sending an email at info@duran.es.

The magazine of the European Union Trade Mark Office (EUIPO) “Alicante News” has published an interview with our Managing Partner Luis-Alfonso Duran, where he expresses his views about the development of the trade mark system in Europe and its futur.

You can access to the interview at the following link.

Alicante-news

Our firm has participated in the edition on "The Digital Revolution" recently published by of the famous spanish magazine of the Institute of Economic Studies, with a chapter on the protection through Intellectual Property of products and services in the digital market.

Durán-Corretjer participated in the Seminar organized by the most important Spanish industry organization (CEOE) concerning the new Spanish Patent Act and Brexit, with a presentation concerning the consequences of Brexit in the IP protection systems in Europe, that took place in Madrid on November 23, 2016.

Durán-Corretjer Managing Partner, Luis-Alfonso Durán, was invited to talk about the consequences of Brexit in European IP protection at the 66th Council Meeting of the Asian Patent Attorneys Association (APAA) that took place in Bali from October 8th to 11th, 2016.