Spain: A New Criminal Code Reform

On 27 March 2015, after no more than five years of the last reform, the Spanish Parliament passed a new reform of the Criminal Code which will presumably be into force in July 2015.  This reform includes a few important changes in the intellectual property field affecting, among other things, to the penalties and the criminal conducts based on the unauthorised use of trademarks. In short, the reform increases the criminal penalties as compared with the current law, and provide a clearer (?) structure in the definition of the criminal conducts. It also incorporates new procedural rules that will increase the effectivenes of the enforcement of intellectual property rights.

According to the new wording of the Criminal Code (Article 274), it shall be punished with the penalties of one to four years in prison and a fine of twelve to twenty four, whoever, with industrial or commercial purposes but without the consent of the owner of a registered trademark under the applicable trademark law (i.e. not extendable to mere used trademarks, even if they are well-known) and with knowlege of such registration (i.e. intent):

a) manufactures, produces or imports products that incorporate an identical or confusingly similar mark, or

b) offers, distributes or trades wholesale products or services incorporating or using an identical or confusingly similar mark, or store for any of those purposes, provided such products or services are identical or similar to the products or services for which the trademark is registered (is this "provided" meant to only affect this latter conducts or also manfufacturing, producing or importing as set out in a)? - readers welcome to comment).

The Criminal Code also shall punish with the penalties of six months to three years in prison whoever, with commercial or industrial purposes but without the consent of the trademark owner and with knowledge of such registration, offers, distributes or trades retail products or services incorporating or using an identical or confusingly similar mark, provided such products or services are identical or similar to the products or services for wich the trademark is registered. The same penalty will be imposed on whoever reproduces or imitates an identical or confusingly similar mark which is meant to be used in any of the conducts above described. (Again, readers' comments are welcome: this "confusingly similar" does not seem to be taken from the trademark civil law, does it?).

A third change is in the third comma in Article 274 Criminal Code. The peddling or occasional sale of those products will be punished with penalties of six months to two years of prison. However, in view of the characteristics of the offender and the low amount of revenue, the Judge may hand down the punishment of a fine to one to six months or community services during thirty one to sixty days, provided the unlawful act is not serious in terms of damages or of significant economic importance, the offender does not belong to a criminal organization or is under eighteen.

Other important changes related to the criminal procedural rules are set out in the new reform, such as the early destruction and judicial administration of the seized goods as well as the confiscation of ilicit goods even where the offender is or cannot be sentenced under the criminal law.

Posted by: Fidel Porcuna @ 18.33
Tags: criminal code reform,
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WIPO Roving Seminar -- on its way to Torino
On 21 April the World Intellectual Property Organization (WIPO) is taking its Roving Seminar team to Turin (which sounds much nicer when pronounced as the Italians pronounce it, as Torino) for a one-day seminar which it is putting on with the support and cooperation of the Italian Patent and Trade Mark Office. This seminar provides an excellent opportunity for users of WIPO's trade mark and design services to become more familiar with them and to gain a better understanding of how to make the most of them, as well as a chance for those who are less familiar to discover how much WIPO, and indeed the Italian Patent and Trade Mark Office, can do for them.
You can get all the details you need by clicking here.
Posted by: Jeremy Phillips @ 03.14
Tags: WIPO Roving seminar, Turin,
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Stolichnaya, Moskovskaya belong to Russian state, rules Dutch court

According to a Bloomberg media release last week, Russia has won back the rights to the Stolichnaya and Moskovskaya vodka brands after fighting businessman Yuri Shefler in Dutch courts for more than a decade. Both trade marks belong to Russia, according to the Rotterdam District Court. Shefler’s Dutch company Spirits International has now been ordered to hand over the trade mark rights to the country or pay a penalty of 100,000 euros and face an additional daily fine of 50,000 euros in the event of non-compliance

The ruling, which can be appealed, will force Shefler’s company to stop the sale of Stolichnaya and Moskovskaya vodka in the Netherlands, Belgium and Luxembourg.

Actions between Shefler's company and the Russian state are still pending in various other jurisdictions, including the U.S, Australia, Switzerland and no fewer than 12 European Union countries, said Joris van Manen (of MARQUES member Hoyng Monegier LLP, the law firm which represented Russia).

Posted by: Jeremy Phillips @ 00.44
Tags: Netherlands, Stolichnaya, Moskovskaya ,
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May the force be with you in General Court

In case T-558/13, the General Court annulled OHIM's decision regarding the following invalidity action :

FSA - applicant

Motokit Veículos e Acessório



Class 9: ‘Cycle helmets’;

Class 12: ‘Bicycle and bicycle parts and accessories thereof, namely: bicycle frames and their parts, bicycle head tubes, bicycle front forks; bicycle wheels, bicycle hubs, bicycle spokes, bicycle rims; bicycle brake assemblies; bicycle cranks; bicycle chains, chain rings for bicycles; seat posts for bicycles, bicycle saddles; quick release devices for bicycle wheels; bottle cage; handlebars for bicycles, bicycle handlebar stem, headset bearings for bicycles; bicycle gears, derailleurs, sprockets for bicycles, bottom brackets for bicycles, axles for bicycles, bearing journals’.


Class 9: ‘Goggles, lenses for goggles; protective face masks; helmets; protective optical goods, headgear and clothing’;

Class 12: ‘Bicycles, parts and fittings for bicycles, including handlebars, handlebar tape, handlebar grips, bar ends, handlebar stems, seats, crank sets, pedals, hubs and rims, air pumps for bicycles, except valve keys and pliers, tyres and inner tubes’.


The Second Board of Appeal of OHIM upheld the CD's decision and found there was a likelihood of confusion between the marks at issue in the mind of the relevant public, within the meaning of Article 8(1)(b) of Regulation No 207/2009. Specifically, it found that the goods in question were identical and that the signs were similar to a low degree visually, to a certain degree phonetically and, for the part of the public understanding the meaning of the word ‘force’, conceptually. In addition, the word ‘force’, which alludes to the durability of the goods in question, was not totally devoid of distinctive character and that the evidence provided by the applicant on the banal nature of the word ‘force’ in relation to the goods concerned on the European market did not cause that word to be totally devoid of any distinctive character. The Board of Appeal also held that the ‘k-force’ part of the contested mark, similar to the earlier mark FORCE-X, still had an independent distinctive role in the contested mark, even though that mark also incorporated the company name of its proprietor, namely ‘fsa’.

In the appeal before the GC, the applicant submitted that the word ‘force’, synonymous with strength, energy and power, is descriptive of a characteristic of the goods concerned and that it has weak distinctive character, due to its banality, on the European market. It relied on several documents, such as printouts of web pages referring to marks for bicycle parts marketed in Europe or for online bicycle shops, which include several marks using the word ‘force’ to describe the characteristics of their products. Furthermore, the applicant criticised the Board of Appeal for not taking those documents into account.

 In the present case, it must be pointed out that the word ‘force’, synonymous with strength and power, can describe one of the characteristics of the goods concerned. Furthermore, for some goods in Class 12, it must be held that that word can also designate one of their purposes. For example, the purpose of the brakes is to offer increased power compared to the power of an ordinary component. Consequently, it must be considered to be descriptive for those goods.

Furthermore, as is apparent from the evidence adduced by the applicant, the word ‘force’ is commonly used, on the European market, in trade marks in the domain of cycling, thus rendering it banal. The Board of Appeal was therefore wrong to find that the documents produced by the applicant were not relevant for the purpose of demonstrating the banality of the use of that word on the European market.

As regards the element ‘fsa’, included in the contested mark, the applicant claims that it occupies, owing to its reputation, a dominant position in the contested mark, precluding a likelihood of confusion between the marks at issue.

In that regard, it must be noted that the evidence adduced by the applicant demonstrates the use and not the reputation of the element ‘fsa’ and in no way enables the relevant public to interpret it as meaning ‘Full Speed Ahead’. Even if it is not inconceivable that the element ‘fsa’ is known in certain professional cycling circles, it is not apparent from the file that it is well known to all the relevant public, composed also of the general public. The Board of Appeal was therefore correct to find, that the reputation of the element ‘fsa’ had not been demonstrated and, therefore, to reject the applicant’s argument.

It follows that all of the elements of the signs at issue must be taken into account. Even though the word ‘force’ has a weak distinctive character, it cannot be disregarded completely for the purposes of the comparison of the signs at issue.

The GC therefore annulled the contested decision on the grounds that the Board of Appeal did not take into account the fact that, due to the specific technical characteristics of the goods in Class 12 and the protective objective of the cycle helmets in Class 9, the relevant public’s level of attention, in respect of those goods, is higher than average. Similarly, it must be noted that the word ‘force’, due to its descriptive character and its banality on the European market, has a weak distinctive character in respect of the goods concerned. Consequently, the marks at issue, taken as a whole, have only a low degree of similarity.

Thus, despite the identity of the goods covered by the marks at issue, there is no likelihood of confusion between those marks.

Posted by: Laetitia Lagarde @ 17.14
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The protection of luxury: not a luxury but a necessity

MARQUES is conducting a Luxury Brands Symposium, "The Protection of Luxury Brands in a Fast Moving World", on Thursday 25 and Friday 26 June 2015. The venue is the Hotel Baur au Lac, Talstrasse 1, 8022 Zurich, Switzerland. Zurich is an appropriate venue, since the city is said to be one of the richest of the world. Its wealth can be best seen in the famous Bahnhofstrasse, the home of many Swiss banks and many shops with jewellery, watches and other luxury goods. 

As MARQUES members know, luxury brands are a phenomenon with particular issues -- its profit margins tempt some of the most enterprising and determined infringers, while brand loyalty among consumers is a value asset that demands passion and determination in terms of brand protection. This symposium provides brand owners, marketing experts, lawyers and others dealing with luxury goods with the chance to exchange their experience and views on the main issues of luxury brands.

The registration fee for this meeting is €750.

You can check out the full day's programme here and register for it here.

Posted by: Jeremy Phillips @ 20.29
Tags: Luxury Brands Symposium,
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Meet the Irish Judges: another MARQUES attraction

"Meet the Irish Judges on Trade Mark Litigation", on Friday 5 June 2015, is another in the popular series of MARQUES events that bring together trade mark owners, practitioners and members of the judiciary for a chance to share news and views on a subject that is of concern to them all -- trade mark litigation.

The venue, somewhat inauspiciously, is the Criminal Courts of Justice, but this blogger is sure that all the participants will 'acquit' themselves admirably. These good souls are Uwe Over (Chair, MARQUES) plus Mr Justice Sean Ryan (President of the Court of Appeal), Patricia McGovern (DFMG Solicitors, MARQUES Anti Counterfeiting and Parallel Trade Team), Mr Justice Frank Clarke (Supreme Court), the legendary Ms Justice Fidelma Macken (formerly Judge of the Court of Justice of the European Union and of the Supreme Court), Mr Justice Peter Charleton (Supreme Court) and Maureen Daly (Beauchamps Solicitors).

But that's only the star attractions before lunch.  After lunch, it all starts over again with the following participants: Mr Justice John Cooke (formerly Judge of the Court of First Instance of the European Communities and of the High Court), Mr Justice Peter Kelly (Court of Appeal), Ms Justice Mary Finlay Geoghegan (Court of Appeal), Ms Justice Caroline Costello (High Court), Anne Bateman (Philip Lee Solicitors) and Shane Smyth (FR Kelly, MARQUES Council and member of the MARQUES Education Team). 

This blogger can't recall ever seeing so many judges offering their time and their support to a national Meet the Judges event. This is a real tribute to the importance of trade mark law in the Irish economy and to the efforts of the organisers to put together such an attractive panel.

Full details of this programme are available here.  To register, click here.

Posted by: Jeremy Phillips @ 10.02
Tags: Meet the Judges, Ireland,
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OHIM's IP Mediation Day: now you can register!

Class 46 is delighted to tell readers that the IP Mediation Open Day, organised by our friends at the Office for Harmonisation in the Internal Market (OHIM), is now open for registration.  The date is 15 June and the venue is OHIM’s very own headquarters in Alicante, facing the sparkling Mediterranean sea. Just click here and you will be instantly transported to the registration page, where you will find a programme for the day and as many details as you could possibly need.

It is even half as much fun as last year's outstanding IP Mediation Conference (if you want a flavour of this event, click here, here, here and here for reports of some of the sessions), this promises to be an interesting event, with a wide range of experienced activity leaders and activities focused on IP mediation and its uses, with hands-on sessions featuring experienced mediators, mock mediations and detailed information about the mediation process.

OHIM looks forward to seeing you there. If you have any further questions about the event, please email on the somewhat ungainly but definitely functional address of

Posted by: Jeremy Phillips @ 00.01
Tags: OHIM IP Mediation Open Day,
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