In the case, the applicant sought to extend the protection of the afore mentioned trademark to the territory of the European Union for goods in class 10 of the Nice Agreement, in particular ‘X-ray apparatus for dental purposes’ once it was granted international protection by virtue of a WIPO decision dating 22^nd December 2008.

After the application for protection of the trademark “3D eXam” in the territory of the EU was rejected, the applicant lodged an appeal before the OHIM. Such an appeal was dismissed on the basis of articles 7(1)(b) and (c) and (2) Regulation 207/2009 on the Community trade mark. The examiner found the trademark “3D eXam” descriptive of the goods covered, X-ray apparatus for dental purposes, according to Article 7(1)(c) and devoid of distinctive character, as the relevant and targeted public (that is, the public in the medical field, particularly dentists) will envisage the trademark “3D eXam” as referring to an X-ray examination in three dimensions, taking into consideration Article 7(1)(b).

Regarding article 7(1)(c) the OHIM stressed that “indications or signs which are descriptive of the characteristics of the goods or services in respect of which registration is sought may be freely used by all”. Also, it was put forward that allowing registration of signs that may be used to designate characteristics of the goods or services for which registration is sought cannot develop the essential function of a trademark – e. i. identifying its commercial origin. Therefore, the applicant’s plea that the decision of denial of registration infringes article 7(1)(c) was rejected by the General Court

Regarding the claim put forward by the applicant that the confronted trademark is distinctive in the sense of article 7(1)(b) of the Regulation, the OHIM states that “a word mark, such as ‘3D eXam’ which is descriptive of characteristics of goods or services is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services”. By analogy, we can quote Judgement of 14 February 2004, C‑265/00, “Campina Melkunie”. Therefore, the General Court also rejected this plea.

As third plea, the applicant claimed that the OHIM failed to take into consideration the fact the trademark ‘3D eXam’ was granted protection in Germany, Japan and the United States, reason why it had to be granted protection in the territory of the EU. In this regard, the Board of Appeal stated that the Community trade mark regime is an “autonomous legal system” and therefore it must be applied independently from any other trademark legal system. Furthermore, account must be taken strictly to the relevant Community legislation when protection in the EU is sought, no matter where the trademark applied for has been granted protection. Accordingly, the judgment finishes by adding that “neither OHIM nor, as the case may be, the Courts of the European Union are bound by decisions adopted in a Member State, or a third country, finding a sign to be registrable as a national trade mark”.

For all the above, the Sixth Chamber of the General Court concluded the OHIM was right in rejecting to grant protection in the territory of the EU to the sign “3D eXam”.

The Special 301 report represents a thermometer that measures how well U.S. trading partners are doing in both, protection and enforcement of IPR. Such study is conducted by the USTR in compliance with Section 182 of the Trade Act of 1974, as amended by the Omnibus Trade and Competitiveness Act of 1988 and the Uruguay Round Agreements Act.

As result of the so mentioned Report, U.S. trading partners move from one list to another according to how well they have implemented their national law regarding protection and enforcement of IPR and how effective their measures for combating piracy are in the eyes of USTR. For classification purposes, the so mentioned governmental body has created three lists: the “Priority Watch List”, the “Watch List” and the “Monitoring List”.

In this regard, it is to be highlighted that the USTR, Mr. Ron Kirk, has acknowledged how well Spain is doing regarding the protection and enforcement of IPR and complimented “its adoption of regulations implementing a law to combat piracy over the internet”. Thus, Spain has managed to be removed from the “Watch List”.

Spain has not been the only “awarded” U.S., trading partner. Malaysia has also been congratulated by Mr. Kirk. Such congratulations are preceded of significant efforts to strengthen copyright protection, such as the adoption of amendments to the Copyright Law, the promulgation of IPR regulations, etc.

On the other hand, and according with the results shown by the Report, there is still much left to be done by other US partners. 13 countries remain on the “Priority Watch List” and 27 on the “Watch List”. These countries will be facing bilateral negotiations during next year, and they will be encouraged to make the necessary changes to revert their situation, so that IPR are strengthened trough implementing protection and enforcement measures into their national law.

To understand why the USTR makes so much emphasis on this matter, we must take a close look at the figures mentioned in the “Intellectual Property and the U.S., Economy: Industries in Focus”. Such study, made by the Commerce Department, puts forward that almost 30% of all U.S. jobs are either directly or indirectly related with IP intensive industries.  Having said this, it makes sense that the USTR tries hard that its trading partners implement their trade agreements entered into with the US. In the mean time, the Special 301 Report will help enhance IPR protection and enforcement abroad.

For all the above, it seems that the recently passed “Ley Sinde” (in Spanish) although controversial, places Spain on the right track, at least in the eyes of the USTR; nevertheless, there are many other “obscure IP- related aspects” that need to be implemented not only in Spain, but also in other countries that, according with USTR are not taking the necessary steps to prevent IPR infringements. If these countries do not try harder to protect IPR, their trading partnership with the USA, may be at risk, given the fact that, according to Mr. Kirk´s own words: “When trading partners don’t protect IPR, they threaten those critical jobs and exports”. Such a sentence may serve as an incentive.

Wintersteiger, is an Austrian company that makes and sells ski-related products under the Austrian trademark WINTERSTEIGER. The trademark is also registered in Germany. Product 4U is a competitor based in Germany that makes accessories for Wintersteiger’s tools. Without Wintersteiger’s authorisation, Products 4U registered ‘Wintersteiger’ as a Google AdWord in respect of searches carried out via the top-level domain “.de” (Germany). Every time someone enters “Wintersteiger” into the “google.de” search engine, a sponsored link appears on the right-hand side of the page with a link to Product 4U website. Such sponsored link is not displayed when the word ‘Wintersteiger’ is entered into “google.at” (for Austria). Certainly nothing impedes residents in Austria to access the “google.de” search engine.

Wintersteiger brought an action for an injunction in Austria, together with an application for protective measures, requiring Products 4U to stop using the trade mark WINTERSTEIGER as an AdWord on the google.de search engine. The Oberster Gerichtshof (Austrian Supreme Court) stayed proceedings and referred a preliminary question to the CJEU because there were doubts on whether Austrian courts had jurisdiction to hear about the dispute on the basis of the forum delicti commissi in Art. 5 (3) R. 44/2001 (“the courts of the Member State where the harmful event occurred”).

The Court was very concise in its decision: “Article 5(3) must be interpreted as meaning that an action relating to infringement of a trade mark registered in a Member State because of the use, by an advertiser, of a keyword identical to that trade mark on a search engine website operating under a country-specific top-level domain of another Member State may be brought before either the courts of the Member State in which the trade mark is registered or the courts of the Member State of the place of establishment of the advertiser”.

In Salvador Ferrandis and Partners we have studied the judgement in deep and we have extracted very interesting conclusions from the reasoning of the Court:

a) the unathorized use of a trademark in a website with a ccTLD of a country different from that of the Member State where the trademark is registered does not preclude the infringer from being sued in this latter Member State;

b) in any case, the question on whether such a use constitute an infringement falls within the scope of the examination of the substance of the action that the courts of that Member State will undertake in light of the applicable substantive law;

c) in disputes concerning AdWords and similar Internet-services, the event giving rise to the damage is the activation of the display process. The place where such event occurs for the purpose of Art. 5 (3) is where the establishment of the advertiser is located, not where the server belonging to the operator of the search engine used by the advertiser is located.

d) the recent interpretation of Art. 5 (3) in “eDate Advertising” is not applicable in actions for infringement of IPR. In this decision the CJUE declared that for cases of infringement of personality rights in the Internet, the courts of the residence of the victim can hear about the whole of the infringement, regardless of the place where the harm was caused.

The referred bill, popularly nicknamed after the name of the Colombian Minister of Interior as “Ley Lleras 2.0”, deals with the exploitation of copyright in the digital environment and the role of Internet Service Providers (ISPs). The bill has been highly criticized not only for the allegedly limitations that it implies for civil liberties of Internet users, but also because of the speed with which it has been passed – its adoption only took two weeks. Such speedy procedure was due to the fact that the “VI Cumbre de las Americas” was right around the corner, and that some of the most influential Head of States of America were going to attend it, Mr. Barack Obama among others. Thus, the goal set by the Colombian government was to have it passed as quick as possible, so that it could be shown as a success during the summit.

Among other aspects, the “Ley Lleras 2.0” rules the liability of ISPs in a way which seems quite similar to the regulation provided by the US Digital Millennium Copyright Act. Particularly controversial is article 13 that prohibits the broadcast of TV signs via internet, whatever their nature is, without the due author´s consent. It also establishes the penalties the infringer will have to endure. Also, the public at large feels pretty unhappy regarding this new Law, as it makes the storage of copyrighted contents, punishable, even if it is temporary. We are looking forward to seeing how the Law will be applied, but the general feeling of the Colombians is that “third generation entertaining tools” such as “Dropbox” may make them copyright infringers, and therefore, endure severe fines.

As previously mentioned, the adoption of Bill 201/12 is one of the last hurdles for the entering into force of the FTA Colombia-US. Such agreement covers all areas of trade between both countries. In particular, chapter 16 refers to Intellectual property, including trademark registration, geographical indications, domain names, copyright, neighboring rights, and so on. Its purpose is to ensure that IPR of companies from not only the other contracting party companies but also from any other WTO Member State, are effectively protected in Colombia and the US.

With regards to trademark registration, it is surprising how the agreement permits registration of trademarks that are not visible, allowing registration of sound trademarks or even smell trademarks. We cannot forget the Spanish Trademark Law only allows registration of signs that can be represented, according to art. 4 LM 17/2001.

Regarding domain names and trademark piracy on the internet, it is equally surprising how the agreement establishes the country- code top- level administrators must set out means for solving potential controversies. This may be particularly relevant in cases of cybersquatting.

The “Ley Lleras 2.0” is not the only measure adopted by Colombia to adapt its legislation to international standards. Other measures include the Resolución 21447 de 11 de abril de 2012 (in Spanish) of the Superintendencia de Industria y Comercio del Ministerio de Comercio, Industria y Turismo that amends titles X and XI of the Circular Única from that Superintendencia. In the meanwhile the Colombian Supreme Court has declared the compatibility (in Spanish) of the Legislative Acts that declares the accession of Colombia to the Madrid Protocol.

If no contingencies occur, the FTA is expected to come into force in June this year, binding both countries in a long- standing relationship. In Salvador Ferrandis and Partners we believe that the entering into force of the agreement constitutes a departure from the old regime, but also a new opportunity for Colombia to regulate “grey aspects” of intellectual property, such as the registration of non-visible trademarks or the conflicts that arise when a trademark is used by a third party as part of a domain name. We shall remain expectant as to how the agreement will be applied by the courts.

The Court of Second Instance dismissed the appeal brought by the defendant and confirmed the decision of the Court of First Instance issued on 9 of June 2011, declaring that by importing 2250 suitcases identified by the sign “OMEGA JAPAN” and seized at the customs the defendant infringed the trademark rights of the plaintiff and took unfair advantage of the reputation and well-known character of the registered trademarks of OMEGA S.A.

The Court indicated that there is a high degree of similarity and likelihood of confusion between the trademarks registered by OMEGA S.A. and the sign “OMEGA JAPAN”. The court stressed that the additional element “JAPAN” confers no special distinctiveness to the sign and that where the registered sign consists of “OMEGA Ω”, it is clear that the dominant element of the sign is the word “OMEGA”.

Moreover, the Court acknowledged the well-known character of the plaintiff´s trademarks and recalled the basic principle in Trademark Law according to which the more reputed and distinctive is the trademark the higher the likelihood of confusion.

Regarding the argument of the counterpart that there can be no risk of confusion if the goods are of visibly worse quality, the Court concluded that it is relevant when dealing with a well-known mark and that one of the ways of damaging the reputation of a mark is precisely to use the infringing sign on goods of poor quality.

By confirming the ruling issued in the first instance, the defendant was ordered to cease the importation of the suitcases bearing the sign “OMEGA JAPAN” in the territory of the European Union, to refrain in the future from performing acts of importation, distribution and commercialization of such products and to withdraw from the commercial traffic and destroy the infringing goods, as well as all the materials and publicity documents related thereto.

At present, it is not clear whether the European Parliament will finally give its consent to ACTA. The voting in the Plenary is scheduled for next June. The draft opinion of the rapporteur for the Legal Affairs Committee recommends passing the agreement. However, the rapporteurs for the Industry, Research and Energy Committee and the International Trade Committee (in this latter case is the personal opinion of the rapporteur himself) have expressed their opinions for the rejection of ACTA. The same opinion is shared by the Social Democrats and so it is by the members of the Pirate Party.

The opinions against ACTA raised by these members of the European Parliament are certainly justified. ACTA has raised general discontent upon the inaccuracy inherent to several key aspects of its wording, namely the vague definition of “commercial scale”, the role which is to be played by ISPs (Internet Service Providers) or the possibility of interrupting the transit of generic medicines, just to name a few. Also, the secrecy surrounding the signing of ACTA sowed mistrust among a significant part of the EU society and EU institutions. Because of this, the European Commission recently asked the Court of Justice of the European Union (CJUE) to issue an opinion on whether or not such international treaty is respectful with civil liberties and fundamental rights under the EU law.

ACTA has several weaknesses. For instance, it is to be seen whether the concept of “commercial scale” is compatible with the case law of the WTO Dispute Settlement Body. However, some concerns raised are far from being legally founded: nothing in ACTA mandates its contracting parties to modify the actual regime applicable to ISPs. They are not forced by ACTA to help authorities to chase infringers beyond their current obligations in relation thereto. A recent study commissioned by the European Parliament shows the overall compatibility of ACTA with the existing “acquis communautaire”.

ACTA certainly entails an enhancement of the level of protection of intellectual property which might be detrimental for developing countries if they are obliged to adopt it. Without any flexibility in the implementation of these measures to national law, these countries may experience difficulties to ensure access to medicines by the poorest parts of their populations, access to knowledge and innovation, or new obstacles to the development of the agricultural industry might appear. ACTA is not the treaty to solve those concerns. Furthermore, from the point of view of the European Union, we must protect our interests: we must be aware that the European economic model is based on innovation and research (in this sense, Europe2020). If we want our enterprises to compete in the global market, their innovative and research activities must be properly protected both internally and internationally. For that reason, the European institutions should give their O.K. to ACTA.

The first decision was issued by the United States Court of Appeals for the Second Disctrict in “Viacom vs. YouTube”. As it is known, the case concerns the liability of Google (YouTube owner) for the uploading by Internet users of a huge amount of allegedly infringing video clips to the defendant’s website. The question raised was whether Google was liable for those conducts or either could benefit from the so-called “Safe harbors” established in the Digital Millennium Copyright Act (DMCA).

The Court of Appeals agreed with the lower as to the determination of the scope of protection conferred by the DMCA in connection with the so-called “Safe harbors”. Both courts understood that protection conferred by the “Safe Harbors” is not enforceable in those instances where the Internet Service Provider (ISP): a) has either direct or indirect knowledge of any infringing material uploaded by third parties to his website; b) and such knowledge concerns a copyright infringement which must be both specific and identifiable. If the above conditions are met, then the ISP will be held liable for copyright infringement.

However, the Court of Appeals was not in agreement with the lower court in a number of instances and thus asked for the revision of its decision.

Firstly, the higher court disagreed with the lower in the finding by the latter that the defendant was not liable for copyright infringement. That was grounded on the assessment of the above-mentioned condition of “specific knowledge”. The higher court considered that in order to make such an assessment some evidences should have been taken into account, namely internal memoranda and e-mail correspondence, both grounded on the defendant’s website on the amount of unlicensed posted video clips relating the Premier League Soccer as for the defendant to assess the highest potential bid in order to acquire the global rights thereof. As a result, the higher court remanded the case to the lower for further proceedings on the above issue.

Secondly, the Court of Appeals also dismissed the part of the ruling by the lower court related to the meaning of “storage of accused content”, a requirement to benefit from protection under the DMCA’s Safe Harbors. The claimant achieved to sow the doubt into the higher court as to whether the behavior by the defendant was constitutive of “mere storage” or, instead, it was just merely a “business transaction”. As a result, the higher court remanded the case to the lower in order to be determined what had actually happened and, in light of that, assess whether it was regarded to as “mere storage” or a “business transaction”. The former is that kind of storage which is technically-essential to the proper provision of a given Internet service and therefore deserves protection under the DMCA (e.g.: making available video-content to be wirelessly displayed on wireless equipments). Conversely, the latter is that type of storage which goes beyond the above scope and thus in no case it will be DMCA-sheltered.

Last but not least, the higher court also found the defendant to be protected by the “Safe Harbors” concerning the restriction by the latter of the proprietary search mechanisms which were actually provided by the defendant through its website by making them available only to those users who are not recidivist infringers. However, the above must be envisaged in accordance with the following nuances: a) they must have been duly warned (e.g. by means of what is regarded to as “warning letters”) by their respective ISP; b) nuance a) involves, according to Section 512 (c) (3) DMCA, a necessary step prior to the taking down and/or blocking access to the content actually claimed to be infringing upon, of course, its identifiable and specific nature. If both nuances are duly observed by the ISP, then the latter will not be held liable in terms of copyright infringement.

Google´s Adwords System is at the root of the controversy. This application is a tool that allows companies (called “sponsors”) to buy the right to appear in the list of “sponsored links” when someone’s introduces a keyword in the “search” box. When Rosetta Stone´s trademarks or relating services were typed in Google´s search engine, as keywords, certain of the sponsored links displayed in the screen led internet users to counterfeit copies or otherwise improper copies of Rosetta Stone´s products.

As for the above, the Fourth Circuit of Appeal on April 9 2012 declared that such activity on behalf of Google constituted:

1.- Direct trademark infringement: “a reasonable trier of fact could find that Google intended to cause confusion in that it acted with the knowledge that confusion was very likely to result from its use of trademarks”.

2.- Contributory trademark infringement: the Court found that there was enough evidence to hold Google responsible for contributory trademark infringement on the grounds that “It (Google) allowed known infringers and counterfeiters to bid on the Rosetta Stone marks”. Therefore, and on the bases of the evidence submitted, since Google was aware that sponsors were buying Rosetta Stone´s marks to redirect internet users to websites where counterfeit Rosetta Stone´s products were being sold, was sufficient evidence to hold Google accountable.

3.- Trademark dilution. Rosetta Stone brought before the Court a claim for trademark dilution on the basis that “if customers or prospective customers see the plaintiff´s famous mark used by other persons in a non-confusing way to identify other sources for many different goods and services, then the ability of the famous mark to clearly identify and distinguish only one source might be diluted or weakened”. Thus, the Court finally held that lower court erred when it held that Rosetta was required to show that Google used the Rosetta Stone’s marks as identifiers for Google´s own goods or services. Therefore, the Court remanded this issue back to the lower court for findings on, for instance, fair use, among others.

Thanks to the amended regulation personal data experiences a positive enhancement of protectionism insofar the use of so-called cookies is significantly restricted to the benefit of the final user. Cookies are small files that store information of the websites actually visited by the final user. Once gathered, these cookies reveal lots of valuable information concerning the personal profile of the latter. That information becomes priceless for traders using advertising techniques such as “behavioural advertising” in order to achieve a more accurately targeting of the prospective user and/or consumer of Internet-related services. However, the unlimited use of cookies may imply serious risks for user’s privacy.

New Art. 22.2 LSSI states that Internet Services providers can make use of cookies as far as users have given their consent after clear and complete information about the objective of these cookies have been provided. In addition, informed consent is subject to revocation by the user at any time. In practice, most of the times, both the consent to receive cookies and its revocation can be implemented by means of a menu available in the Internet browser permitting to disable cookies.

Since there is no rule without exception, according to Art. 22.2 in fine, the informed consent of the user is not needed in those cases where the use of a cookie is essential to the proper provision of a given Internet-related service that has been expressly solicited by the user.

All in all, in Salvador Ferrandis & Partners we do believe that the underlying idea behind the legislative amendment at stake cannot be other than conferring the final user more self-responsibility whilst making him less defenceless in such a potentially-hostile environment as it is the cyberspace.

In this case, the General Court found that the OHIM was right in not allowing registration of the CTM “BEATLE” for the following reasons:

1.- The similarity (at visual, phonetic and conceptual level) between the signs at issue, that is, the applicant´s sign “BEATLE” and those earlier signs property of Apple Corp, “BEATLES” and “THE BEATLES”. Despite the fact that the sign applied for did not contain a final letter “s” and although the earlier marks contained a “the” at the beginning, that was not sufficient for the relevant public to differentiate between both trademarks.

2.- The strength of the earlier trademarks. Upon the documentation provided, the Eight Chamber considered that the signs “BEATLES/ THE BEATLES” enjoy a tremendous reputation for goods such as “sound records, video records and films”. While it is admitted that such trademarks do not have a reputation for other kind of goods, such as toys, it is still true that they have acquired a distinctive character of their own. Therefore when people are faced with both signs, they will immediately think of the music band “THE BEATLES”. It cannot be argued that such strength still exists nowadays.

3.- The nature of the goods. Despite the fact the nature of the goods covered by the earlier CTMs and by the sign applied for is not alike (sound records and electric aids for elderly people with reduced mobility are not goods of the same nature, use or purpose), the General Court considered in its ruling (just like OHIM), that by allowing registration of the sign “BEATLE” an overlap of the relevant public takes place, since the public targeted by the CTM applied for is the elderly who, no doubt, knew the band “THE BEATLES”. Therefore, and despite the lack of similarity of the goods in question, there is an undeniable link between the signs in question that will evoke the British band to the public.

In Salvador Ferrandis and Partners we consider the denial of registration of the Community trademark “BEATLE” applied for by You-Q BV for goods in class 12 is according to law. Allowing such a registration would permit the applicant incur in an unfair competition behavior, given the memories the CTM “BEATLE” will evoke on the targeted people. Also, and given the strength of the earlier trademarks “BEATLE/THE BEATLES”, it is also true that the applicant would introduce its trademarks on the market much easier, without any need of incurring in advertising cost, etc.