SPANISH COMPANIES CAN REVIEW THEIR EMPLOYEES MAILS, SAYS THE SPANISH CONSTITUTIONAL COURT

The Spanish Constitutional Court has recently extended the right of Spanish companies to review their employees’ mails.

Traditionally, Spanish Courts accepted that companies may review their employees’ company e-mails, if they were previously informed, in written, that:

(i)           They were not allowed to use said mails for personal (not professional) purposes; and

(ii)          The company would review the e-mails and other correspondence.

The Spanish Constitutional Court has now allowed the companies to control the e-mails, without previously informing their employees.

1.- The Employee was informed that the company was controlling his e- mails

The Constitutional Court bases its Decision in the existence of a “Collective Bargaining Agreement”, with a Clause forbidding the “use of computers owned by the company for means other than complying with the working obligations”.

The Court considers this information to be enough. The employee could not have a reasonable expectation of confidentiality, when sending e-mails through the company’s computer’s accounts. Accordingly, the right of privacy in the communications has not been infringed, because there is not a “reasonable expectation” of confidentiality.

2.- Justified reasons to investigate

The case refers to the e-mails of an employee, suspected of committing acts of Unfair Competition. The company could reasonably think that he was preparing his departure from the company and he was going to work for the competition: transmitting confidential information and data. The Court states that controlling the e-mails was:

Justified. The company had “suspicions of an irregular activity of the employee”.

Suitable. Controlling the employee’s communications was necessary, to verify that he was really committing the suspicious activities: sending confidential information to third parties.

Necessary. The content of the e-mails was a clear evidence of the irregular activity of the employee.

3.- Investigating the company’s PC and telephone used by the employee

The company initiated its investigation, analysing the employee’s PC’s. The Constitutional Court argues that this was reasonable. And it was done with all guarantees: an independent specialized computer expert and a notary. The information obtained proved that the employee was transferring confidential information.

Later, the company investigated the employee’s professional cellular phone (owned by the company). However, this information could not be used by the company against the employee: the Collective Bargaining Agreement does not say anything about controlling the cellular phones. So, all the case was based on the information obtained in the computer.

4.- Evidence of unfair competition activity

The company could prove, through the PC, that the employee was leaking confidential information to a competitor; and he was expelled from the company. The Constitutional Court considers that this obtaining of information, and its use to expel the employee, was constitutionally acceptable, and was not infringing his right of privacy in communications.

The Constitutional Court argues that obtaining (and using) this information was constitutional. Because the employee should have known that the company’s employees had no right to use the company’s mails for their personal needs. And this was the case.

This Decision is very important, for many areas of Spanish Law, especially in Unfair Competition (Passing Off) cases. The companies frequently have to obtain evidence that the employee is preparing his transfer to the competition, sending confidential information via e-mail. And can be more easily controlled, from now on.

Santiago Nadal

THREE-DIMENSIONAL TRADEMARK OR REGISTRATION OF DESIGN

Three-dimensional (3D) trademark protects the shape of products. The holder or holders of a 3D trademark are able to prevent competitors from using packaging or products with a three-dimensional shape that can confuse consumers with theirs.

3D trademark registration is appropriate for those types of products, or parts of them,whose 3D appearance adequately identifies the trademark. This is what happens with the Coca-Cola bottle, the ColaCao can and the Toblerone packaging.

The guarantee of this trademark, as ascertained in the legal definition of the Trademark Law’s Article 4.1, is that goods or services bearing it have been manufactured or supplied by a company which is responsible for its quality.

The essential part is the distinguishing feature that identifies a company’s product or service and its qualities. The susceptible graphical representation marks that constitute the trademark fulfill this function.

The key point is to avoid risking any confusion, since it is essential to be able to distinguish the trademark products and services in the market, so that the average consumer does not confuse them with others and wrongly associates them with another business source.

In this aspect the label, the back label and packaging, and product shape are unquestionably included. We refer to the three-dimensional trademark.

Recalling the definition of trademarks given in the Trademark Law’s Article 4.1 which highlights its distinctive feature, it is a logical conclusion that labeling and packaging areincluded within this sphere; currently, rather than ordering a product from a sales person, the consumer can choose it instantly in supermarkets or department stores, so that the external appearance is of far reaching differentiating importance: it is the distinctiveness of the trademarks packaging, with or without labeling.

The law, based on different rulings, has provided protection to bottle and label packaging-(Bayleys alcoholic beverage) in 19 May 1993 and 29 October 1994 Judgments; the packaging, shape and colour of the can (COLA-CAO) in 23 February 1998 Judgment; and specifically addressed, although the risk of confusion was not appreciated, in 8 May 1997(the case ofPOMPADOUR/BEN-HUR) and 5 June 5 1997 Judgments (the case of VIDALSASSOON).

Difference between a three-dimensional trademark and a community design
Two forms of protection are possible.

A design is protected if it meets the legal requirements for novelty and individual character at the time of submission. Design protection covers the shape, line and configuration of a product in which the design is incorporated or applied.

The granting of a 3D trademark takes place if it is considered that the product has marks that distinguish the applicant’s products from those of another similar company.

The protection afforded to a 3D trademark is related to the distinctive character rof the marks themselves compared to reproductions and identical marks with visual, phonetic or conceptual similarities that could lead to confusion.

For example, a package can be protected as a 3D trademark and as a registered design if it meets legal requirements: a novel shape becomes synonymous with the products of a company and can therefore be registered as a trademark, as well as being protected as design for its uniqueness and novelty.

Both registrations, 3D trademark and industrial design, are not the same. Industrial design protects the aesthetic quality of the objector product. The 3D trademark protects the trademark identification through shape and visual image.

Three-dimensional trademark protection compared to design

Registration of a 3D trademark protects the distinctiveness of the trademark compared with other existing marks that are being used for the same goods or services, while the design protects the novelty and uniqueness of the products.

Avery original shape cannot be registered as a 3D trademark if it does not fulfill the condition of being distinctive with respect to the products or services which have been submitted.

A product, to which a design has been applied, that has been marketed years before submitting the registration, will be registered but any third party could declare the registration null for lack of novelty.

In fact, the novelty feature is not applied to trademarks and the distinctive feature is not applied to designs.

Duration of protection in each case
Trademarks do not have any time limit (they can be renewed indefinitely for periods of 10 years), while registered designs have a maximum duration of 25 years from the date of application for registration.

THE TIMES THEY ARE A-CHANGING - BOB DYLAN

Come gather ’round people
Wherever you roam
And admit that the waters
Around you have grown
And accept it that soon
You’ll be drenched to the bone
If your time to you is worth savin’
Then you better start swimmin’ or you’ll sink like a stone
For the times they are a-changin’

Come writers and critics
Who prophesize with your pen
And keep your eyes wide
The chance won’t come again
And don’t speak too soon
For the wheel’s still in spin
And there’s no tellin’ who that it’s namin’
For the loser now will be later to win
For the times they are a-changin’

Come senators, congressmen
Please heed the call
Don’t stand in the doorway
Don’t block up the hall
For he that gets hurt
Will be he who has stalled
There’s a battle outside and it is ragin’
It’ll soon shake your windows and rattle your walls
For the times they are a-changin’

Come mothers and fathers
Throughout the land
And don’t criticize
What you can’t understand
Your sons and your daughters
Are beyond your command
Your old road is rapidly agin’
Please get out of the new one if you can’t lend your hand
For the times they are a-changin’

The line it is drawn
The curse it is cast
The slow one now
Will later be fast
As the present now
Will later be past
The order is rapidly fadin’
And the first one now will later be last
For the times they are a-changin’

Copyright © 1963, 1964 by Warner Bros. Inc.; renewed 1991, 1992 by Special Rider Music

Read more: http://www.bobdylan.com/us/songs/times-they-are-changin#ixzz2hPTB4ZRK

REGISTRAR LOS DISEÑOS DE ROPA, COMO DISEÑOS, SE HA PUESTO DE MODA

Los diseñadores de moda están pidiendo el registro de sus diseños, para proteger sus modelos de ropa y sus accesorios, según Reuters.

Este verano, marcas super conocidas, como Alexander Wang, Balenciaga o Tod's han registrado diseños en la Oficina de Patentes y Marcas de EEUU, para accesorios. Diane von Furstenberg ha registrado diseños de un bolso, igual que Celine. 

Los diseños registrados protegen el aspecto externo de un producto, a diferencia de las patentes que protegen el modo en que un producto funciona o es usado. 

Las grandes marcas de moda están registrando los diseños que prevén serán grandes líneas de estilo y tendrán un vida de un par de años, por lo menos.

Registrar el diseño protege a los diseñadores, frente a imitadores, durante bastantes años. Además, ayuda a los diseñadores a proteger sus secretos, hasta que los productos están en el mercado.

For Reuters Article Click Here

START-UPS DE UNIVERSIDADES Y HOSPITALES Y PROPIEDAD INTELECTUAL CUESTIONES IMPORTANTES, PARA EVITAR CONFLICTOS

Un investigador universitario o de un hospital está buscando inversión, como fundador de la start-up, y comparte el proyecto con la Universidad o el Hospital. ¿Qué lado defenderá?

El inventor universitario / hospitalario ha creado la start-up, con la ayuda de la Oficina de Transferencia de Tecnología (OTRI). La compañía está empezando a funcionar. El investigador podría conseguir ayuda financiera. ¿Para qué la usará? ¿Para la start-up o para su investigación universitaria / hospitalaria?

El investigador universitario / hospitalario dedica a la start-up mucho más tiempo del apropiado. ¿Cómo se controla ese tiempo?

El investigador universitario / hospitalario está participando en diferentes acuerdos de consultoría con terceros. Aunque son calificados oficialmente como “investigación subvencionada”. ¿Cómo se puede evitar?

Un investigador que ha constituido una start-up no tiene despacho, fuera del laboratorio. Utiliza a los empleados del laboratorio o recibe correspondencia sobre la start-up a través de los mails de la Universidad o el Hospital. ¿Es correcto?

Estos conflictos pueden convertir a las OTRIs en “controladores” de start-ups, más que promotores. Sin embargo, las OTRIs son esenciales, para solucionar esos problemas.

Algunas de las cuestiones esenciales, a tener en cuenta:

-      Una política de protección de la Propiedad Industrial / Intelectual.

-      Fijar modelos de funcionamiento: controlar la información confidencial

-      Respetar las normas estatutarias de hospitales / universidades.

-      ¿Qué es lo que nunca se puede hacer?

-      Estructura de la start-up y relación con la universidad / el hospital.

-      Separar las funciones universitarias / hospitalarias y de la start-up.

-      Relación económica: capital, socios …

-      Redactar la licencia con la start-up, teniendo en cuenta el uso que hará.

-      Acuerdos de investigación / consultoría con terceros.

-      Gestionar la consultoría, que desarrolle la start-up con terceros.

-      Tiempo y dedicación al hospital / universidad y a la start-up

-      Sistema de comunicación entre start-up y hospital / universidad.

-      Proteger a hospital / universidad / OTRI, frente a usos indebidos de fondos.

-      Usos de equipo, espacio, personal, bases de datos … de universidad / hospital

La colaboración entre las OTRIs y los investigadores es esencial tanto en el momento decrear una start-up como para su buen funcionamiento posterior.

Santiago Nadal

DESPERTAD, LEVANTAOS - EMPEZAMOS 2013 - 2014 - J. S. BACH NOS EMPUJA, NOS AYUDA

Esta semana, empezamos el Curso 2013 - 2014. 

Un buen momento, para oir la Cantata BWV 140 de Juan Sebastián Bach: "Wachet auf, ruft uns die Stimme" (Despertad, levantados, una voz nos llama).

http://www.youtube.com/watch?v=Lz0FmmNrTck

PATENTES FARMACÉUTICAS Y GENÉRICOS. ¿NEGOCIO O SALUD? / PHARMACEUTICAL PATENTS AND GENERICS: BUSINESS OR HEALTH?

Patented drugs

It is a well-known fact that pharmaceutical products can be patented.

Pharmaceutical patents raise doubts about access to drugs which our society are provided with and ultimately, therefore, our access to the right of health.

You cannot separate the ability to obtain appropriate medical treatment from the need to use appropriate medications that allow access to proper medical care. Without admittance to appropriate drugs, no right to health is worthwhile.

The patent protects exclusive use by the owner over a period of 20 years from the date of registration.

Focusing on the pharmaceutical patent, this protection period may cause an adverse effect: a rise in retail prices of drugs.

Obviously, it is undeniable that certain economic benefits have to exist forpharmaceutical companies so they can continue in the research and development of new drugs, but what is not so sure is that these economic rights should be reconciled with the right to health, promoting access to drugs in our society.

Consequences in pricing

The fact that patented drugs have such a high cost is explained by the high costs which they have to endure up to the point when the patent is obtained.

In fact, R & D activities which pharmaceutical companies have to sustain are very expensive and deserve to be compensated. Especially, when taking into account the length of time the pharmaceutical patent ‘shortens’ practical effects.

The reality of pharmaceutical patents is that from the time of the invention and patent request to exploitation and product distribution of the product on the market can be approximately 12 years. That presumes that the effective duration of the patent is reduced from 20 to 8 years. A great loss, from the business standpoint.

Consequently, the inflated price of patented drugs is justified by the need to recuperate the investment.

This argument will never please society, since Social Security manages drug acquisition through funding obtained from citizens, and the high prices of drugs do nothing but raise public budgets on these items.

Generic Drugs

The promotion of generic drugs has attempted to alleviate the previous mentioned controversy.

The term ‘generic drug’ refers to those drugs that are exchanged with patented drugs, and whose production starts immediately after the patent which has protected them, expires. It is born when the original drug is already widely known and its safety and efficacy have been proven in medical practice for many years.

It should be equivalent, therapeutically, with respect to the patented product and is substantially cheaper.

The generic manufacturer does not have to bear the costs of R & D that the innovator manufacturer must cover. For that reason, much lower prices can be offered and it can compete effectively in the market.

Obviously, the financial sustainability of a country’s public budgets will increase if they choose to buy these drugs, ensuring the same medical results as patented drugs.

The entry of generic drugs on the market produces beneficial competition to the consumer. Manufacturers have to reduce the price of drugs if they want to be competitive.

As an example, we can look at the case of India, which in 2006 held a dispute with a pharmaceutical company regarding the patentability of a drug used to treat leukemia. The result was overwhelming, because the price offered by the drug company was 15 times higher than that offered by the generic manufacturer.

Relationship between the original drug and the generic

In spite of the above, we cannot speak of a binomial between the original and generic drug because without the original, no generic exists. The generic drug only occurs when an original drug’s patent expires.

They therefore depend on each other. The generic depends on the expiry of the original, and the original is forced to evolve because of the existence of the generic, which can take over its market position.

The goal should be to find a balance with economic benefits to the pharmaceutical industry that encourage further innovation and the use of generic drugs which allow easy access to all kinds of drugs at affordable prices.

Problems with the introduction of generic drugs

We cannot forget that there are many factors that affect the marketing of pharmaceutical products and, therefore, competition in the market and the final price to be paid by the patient.

By way of example, we can briefly describe a few of them:

1.-The doctors who prescribe drugs to patients are one of these factors. The former, in their work, do not usually consider economics in the choice of medication neither considering that the final price will be paid by Social Security nor by other external factors.

In some countries, malpractices of some pharmaceutical industries have been exposed which seek to decisively influence the decision of physicians through payment in kind, such as trips to prestigious conferences, among others.

2.- Another noteworthy factor that makes consumers choose certain products without assessing their high price is the absence of information.

In fact, advertising efforts on behalf of pharmaceutical companies have managed to create high brand loyalty in the consumer.

Although this effect has gradually reduced over the years and access to information is increasingly global, the consumer has the feeling that the ‘branded’ drug has some benefits over the generic drug. This belief is induced, without any basis of justification, in alleged advantages or benefits.

This explains why the pharmaceutical industry invests huge amounts of money on their advertising strategies, even above those resources devoted to R & D.

Conclusion

It is of crucial importance that a return to compensatory mechanisms is made that incentivize the discovery of new medicines, review patterns of R & D in thepharmaceutical sector and give necessary importance so that they continue innovating.

The activities of pharmaceutical companies should be re-directed away from focusing their research on profitable illnesses that do not necessarily report the best therapeutic results, while energies in R & D in other diseases are not exploited because of their low economic return.

The cornerstone of the patent system lies in the remuneration to the inventor, in exchange for the disclosure of his invention for the benefit of society. Therefore, we must not forget that the welfare of society is the basis of the whole system.

The objective of a patent system must achieve compatibility with an improvement in access to drugs and, therefore, the right to health.

Jordi Farré

www.snabogados.com

ARBITRATION IN TRADEMARK LAW

The following article analyses one of the main developments which the Spanish Trademark Law 17/20011 introduced: arbitration as a solution to legal disputes following the registration of a trademark.

1.- ARBITRATION IN THE 2001 TRADEMARK LAW

In 2001, the legislature incorporated arbitral institution within Trademark Law, as had already been done in other sectors regulated by special legislation. This incorporation has facilitated a simple,quicker and more economical avenue, so that citizens can resolve conflicts.
The Trademark Law arbitral framework poses as a provision of private Law. It distances itself, therefore, from administrative arbitration regulated by Public Administration and General Administrative Procedures Law 30/1992 dated 26th November.

1.- Differences with previous regularisation: Art.28 of Trademark Law 2001

The idiosyncrasies envisaged by the Trademark Law are contained in Art.28.

1.1. The Subject Matter of Arbitration Art.28. 1 and 2.

The general rule which the subject matter of arbitration refers to is stated in Art.28.1. Disputes generated throughtrademark registration will be subject to arbitration. This general rule is complemented in the following paragraph, confining those disputes which make reference to the bans in the Trademark Law’s Articles. 6.1.b, 7.1.b, 8 and 9 to arbitration.

The Trademark Law forbids holders of trademarks or identical commercial names, identical products or services to submitany dispute to arbitration arising from their registration.

1.2 The subjective side: Art.28.3

Art.28.3 specifies who will have to be part of the arbitration agreement. It must be signed by the applicant of the trademark and by:
-   The holders of the previous trademark which caused the trademark refusal (or who had opposed its registration)
-   The licensees. This should be exclusive and with a licence signed in the Spanish Trademark and Patent Office.
-   The other parties in the administrative proceedings opposing registration of the trademark.
As regards the last paragraph of this article, it is essential to take into account that according to Art.31 of Law 30/1992 interested third parties can invoke a higher appeal. If someone has already entered into appeal, it will have to be part of the arbitral agreement.

1.3  At the time of finalizing the arbitration agreement and notification: Art.28.4

OEPM (the Spanish Trademark and Patent Office) must be notified of the arbitration agreement by all interested parties once the administrative proceedings of registering the trademark are concluded, but before the administrative act has been firmly adopted. We find ourselves with a time-limit. The period of time to enter into higher appeal is a month; the maximum period to issue and notify the resolution submitted is three months.

1.4 Effects of arbitration agreement on administrative appeals:Art.28.5

Once the arbitration agreementis signed, the rule expressly states that it will not be fitting to lodge an appeal about the question submitted to arbitration, while an agreement is ‘live’. However, some questions arise at the time of interpreting it.

1.5 Effects of the arbitral award: Art.28.6

The rule insists on theeffectsof a firm arbitral award being enforceable in accordance with Art.37 of theArbitration Law, applicable where not provided for in this article. That the award produces enforceable effects, differing to administrative arbitration, is of great importance. This is justified, because this arbitration has been conceived as an alternative to administrative appeals and through the route of legal proceedings. The award will be pronounced on the compatibility of the signs at issue, thesebeing the limits of the final decision.
The consequence of this is that OEPM (the Spanish Trademark and Patent Office) will take responsibility for its implementation.

1.6 Proceedings and time period to communicate the award to OEPM: Art.28.7

Art.28.7 states that the firm arbitral award should be communicated faithfully to OEPM within six months from receiving notification of the arbitral agreement being finalised. Therefore, the starting date is the notification datereceived by OEPM. As the law does not specify who should send this notification, it would be convenient for this question to be specified within the arbitration agreement.  It is possible that the arbitrator could be assigned to carry out this notification.
It is from this date thatthe time period of six months will be calculated in order to communicate the arbitration award. We find ourselves with a deadline. The Law states that, beyond this date, it will not proceed to implement the arbitration award.

ll. CONCLUSIONS

On incorporating arbitration so as to resolve questions relating to conceding a trademark, the 2001 Trademark Law opened up a new possibility.

1.Advantages

The advantages of using arbitration proceedings are based mainly on achieving the fastest solution to the conflict as well as the security of the question in dispute being resolved by industrial property experts.
Likewise, arbitration can be assigned to an Arbitration Chamber or Court. The additional advantage of this is based on the fact that it is not necessary that the parties agree in detail which procedural avenue the arbitrators will have to follow until they make the award. The institution usually has its own rule which will be applicable in these cases.

With arbitration,questions can get sorted outwhich, in practice, could create greater problems. For example, if, the parties involved are dealing with an international matter, arbitration has to find ‘neutral ground’.

Allthese questions mean the possibility of arbitration is even more convenient so that the interested parties can resolve legal disputes and prove the trademark registration.

2.- Criticisms

Even so, there is definitely a need to raise certain criticisms on this regulation which legislaturehas adopted:

2.1 Arbitration closerto realitycould be established for the interested parties in conflict,so as to deal with all types of disputes arising in trademark registration now that the questions raised can be analysed by arbitrators with reputable knowledge of Trademark Law and of the real marketplace. But this action has been limited to disputes on certain prohibitions; conflicts are excluded with identical signs, which are dealt with in articles 6.1.a and 7.1.a. of the Trademark Law. This may lead to clear damage, for the defence of holders of trademarks or commercial names which could be affected by this, which would then have to be submittednecessarily to the jurisdiction body.

2.2 It makes the implementation of an arbitral award (which, furthermore, grants weight to the final decision) dependent onnotifying OEPM within a determined period of time. It can generate a lot of problems, of a practical nature, at the time of the arbitral processdeveloping.

Whatever the case, the possibility of extending the extrajudicial resolution of conflict to a new sphere is always welcome.