European Union

Copyright Doesn’t Wear Prada

By Maria Sol Porro. Trademarks Lawyer and University Professor.

After determining last year that the taste (of cheese) is not susceptible (for now) to be protected by copyright, the Court of Justice of the European Union (CJEU) resolves again in another conflicting case related to this right, this time about the textile design.

The conflict in question began with the demand of G-Star Raw CV (“G-Star”) against Cofemel- Sociedades de Vestuario S.A. (“Cofemel”) -both companies dedicated to the design, production and marketing of clothing- for the infringement of the ¨copyright¨ of its design models related to the marketing of its jeans, sweatshirts and t-shirts. Specifically, G-Star highlighted that its clothing items were original creations and should be classified as works that are subject to copyright protection.

Before this claim, submitted by the Superior Court of Portugal, the CJEU conducted an analysis of the degree of originality required of the designs to be susceptible to copyright protection and, in particular, whether the circumstance of generating a ¨ visual effect of its own and considerable from the aesthetic point of view¨ constitutes a fundamental element to grant copyright protection.

In this context, the Court of Justice of the European Union recalls …

The CJEU gives a “like” to Data Protection

By Maria Sol Porro. Trademarks Lawyer and University Professor.

Last August, the CJEU settled a new conflict about the processing of personal data, Facebook and the popular “like” icon. The conflict took place when ¨Fashion ID¨, a German e-commerce company that sells clothing, inserted the “like” Facebook button on its website. This insertion seems to have the consequence that, when a visitor visits the “Fashion ID” website, personal data of that visitor is transmitted to Facebook Ireland. As it was analyzed in this ruling, this transmisión of data is made without the said visitor being aware of it and regardless of whether they are a member of the Facebook social network or if they clicked on the “like” button.

For this reason, ¨Verbraucherzentrale NRW¨, a German public association defending the interests of consumers, made a complaint against ¨Fashion ID¨ for having transmitted to Facebook Ireland personal data of visitors to its website, on one hand, without the consent of the latter and, on the other, breaching the information obligations established in the provisions related to the protection of personal data.

Having reached the conflict in the German Court of First Instance, the matter was finally sent to the EU …

The three stripes controversy

By Maria Sol Porro, Trademarks Lawyer and University Professor.

Last June, the General Court of the European Union (EGC) announced one of its most resounding decisions to date, as it confirmed the nullity of the Adidas Community trademark, consisting of three parallel bands, due to the fact that the German company did not demonstrate the distinctive character of it throughout the territory of the European Union (EU).

The legal battle for the three stripes is part of the dispute that Adidas and the Belgian company, Shoe Branding Europe BVBA, began in 2009, when the latter tried to register their two lines against the European Union. In this case, Adidas objected before de European Union Intellectual Property Office (EUIPO) on the grounds that they closely resembled its three parallel bands and, based on this claim, the EUIPO denied registration to the Belgian company on two occasions (2015 and 2016). It is important to remark that Adidas had not proceeded to register its three lines before the EU until this point.

Once this judicial contest was won, Adidas decided to request in December 2013 the registration of the famous three parallel bands as a community trademark before EUIPO, which gave its …

 7th International IP Congress: Recent IP Developments in Europe

By Maria  Sol Porro

Last June, 7th, the Seventh International Congress of Intellectual Property called ¨Recent IP Developments in Europe¨ was held at the University of Maastricht, Netherlands, organized by the Queen Mary University of London, the Autonomous University of Madrid and the host, the University of Maastricht.

Each year different speakers of the mentioned universities attend this event in order to make brief presentations about the most recent developments in the main areas of intellectual property law in Europe. In this way, new laws, legislative proposals, notable new resolutions or recent doctrines on trademark law, patents, copyright, geographical indications, designs, etc. are analyzed and exposed.

In summary, the topics addressed this year were the following:

1- Multimedia Trademarks

They are those represented by the presence of an audiovisual file that contains the combination of image and sound. These trademarks are starting to be taken into account within the European registers, although they are usually registered as services and not as goods. However, they have two problems: a- Having so many elements involved, often lack the distinctive character required for the trademarks and b- many of these brands are usually video games whose central themes often clash with morality …

PERSONAL DATA IS NOT FOREVER

By Maria Sol Porro, Trademark Lawyer

Protection of personal data is an issue that has gained relevance in the last year in all parts of the world. An example of this phenomenon is the implementation of the General Regulation of Personal Data (GDPR) in the European Union in 2018 or the new laws, modifications to the current ones or judicial decisions on the matter, that Latin American countries began to implement to be in accordance with the community regulations.

In this respect, in a recent judicial ruling, the Supreme Court of Justice of the Nation of Mexico (SCJN) analyzed the pertinent period to keep personal data within the Law for the Protection of Personal Data in Possession of Obligated Subjects of the State of Guerrero and determined the invalidity of a portion of the regulations since it established generic terms for the preservation of personal data.

In this sense, the Court understood that this generic term was in violation of the right to the protection of these data, since the treatment of them requires individualization in each specific case, so to decide what deadlines to apply should be attended to the applicable provisions in the matter in question.

As a …

GDPR vs. BREXIT

By Maria Sol Porro, Trademark Lawyer

On May 25, 2018 the European Union, after its approval in Parliament and its European Council, came into force the General Data Protection Regulation (GDPR), in order to unify the regulations of all the Member States on the matter. Faced with this new regulation, which affects both, citizens and European companies, the complex exit of the United Kingdom from the Union, for which a new date has been set for October 31st* of this year, is one of the biggest concerns for the community companies that operate in the Anglo-Saxon country.

Faced with this situation, different hypotheses are presented taking into account whether the English House of Commons decides to leave the EU with an agreement, also known as the “Soft Brexit”, or without agreement, giving way to a Hard Brexit”.

In the event that the exit situation happens within an agreement, or the so-called “Soft Brexit”, the GDPR will continue to be applicable during the transition period set by the aforementioned agreement, creating a period of transposition of laws as a result. From that date, the United Kingdom would have until December 31st, 2021 to sign new treaties with the European Union, …

European Union Approves Copyright Directive

By Maria Sol Porro, Trademark Lawyer

Last March the plenary of the European Parliament approved the New Directive on Copyrights, with 348 votes in favor, 274 against and 36 abstentions, after two years of increasingly heated arguments and moods, not just between companies and content producers but also with the same citizens.

The controversial text has received the support of authors of different works and the rejection of different activists and organizations. For the former, the approval of this directive means the acquisition of more efficient tools for the protection of their rights on the internet and simpler ways to obtain redress of their rights when they are violated. On the other hand, those who opposed mainly the approval of the new directive, warned that this situation will affect the freedom of expression, replaced by the reign of censorship.

For a better understanding of the opposing positions, list below what, in our opinion, are the main novelties that the mentioned directive deals with:

* Main affected

The average user is not the objective of this regulation, according to the European Parliament itself. In this way, the legislative institution assured that the proposal for a directive would not be aimed …

McDonald’s Loses Flagship Trademark “Big Mac” in the European Union

By Maria Sol Porro

After years of confrontation with the small Irish supermarket chain, “Supermac”, founded in 1978, the European Union Intellectual Property Office (EUIPO) has revoked the rights to use the “Big Mac” brand in the European Union, registered by the multinational-nal “McDonald’s”.

The conflict began in 2015 when “Supermac” wanted to expand its 100 stores throughout the United Kingdom and other areas of the EU, trying to register the “Supermac” trademark on these sites. However, he found that although none of the products offered by the Irish was called ¨Big Mac¨, the multinational used the similarity between the two trademarks to block the expansion, preventing the registration of “Supermac” in the EU, pointing out that the similarity of both TM could confuse consumers. In this case, the EUIPO agreed with the US multinational due to the similarities between the two signs and the possible confusion alleged by McDonald’s.

Before this blockade by the multinational, the Irish fast food chain presented its claim against EUIPO in April 2017, requesting the revocation of the protection on the trademark “Big Mac”, alleging that “McDonald” registers and retains different denominations to use against its future competitors.

In relation to this new requirement, …

8 Keys to Understand the New European Trademark Directive

By Maria Sol Porro

Nowadays the economic markets experience constant and vertiginous changes in the way in which daily transactions are developed, both of goods and of services. Within these markets, not only material assets have a paramount value, but also the signs used to identify them and to distinguish them from the rest of the competitors, that is, the so-called intangible assets.
Therefore, it is not surprising that the European Union decides to harmonize the laws of each of its members in relation to the type of trademarks that can be requested before the European Union Intellectual Property Office (EUIPO), the requirements of the applications and also of the form of processing.

For this reason, on December 16, 2015, Directive No. 2015/2436 was issued, “on the approximation of the laws of the Member States regarding trademarks”, which entered into force on January 14, 2019. In this sense, it is important to point out that since a Directive is the one that establishes these rules in trademark issues, each European country must dictate a national law to transpose the community regulations to its national scope in order to avoid any type of penalty in case of not doing it.

Based …