NEWSLETTER

July 2002

TELECOMMUNICATIONS

Telecommunication base stations using non-guided electromagnetic waves in Navarra
Regional Law 10/2002, of May 6, 2002, for the regulation of the telecommunication base stations using non-guided electromagnetic waves in the Territory of Navarra, published in the BOE of May 30, 2002.

Regional Law 10/2002 applies to all telecommunication base stations installed in Navarra that use non-guided electromagnetic waves with radiant systems capable of generating electromagnetic waves within the frequency spectrum between 0 Hertzs and 300 Gigahertzs.

Regional Law 10/2002 sets out reference levels of exposure to electromagnetic fields, which are stricter than those set out by Royal Decree 1066/2001, of September 28, in locations considered especially susceptible in view of the higher frequency of human presence, such as education centers, health centers, hospitals, elderly houses and public parks, taking as a reference the locations contained in the Recommendations of the Council of Health Ministers of the European Union, of July 12 1999, regarding the exposure of the general public to electromagnetic fields.

Regional Law 10/2002 also addresses environmental protection issues, placing limits on the level of impact on the landscape and stating that these facilities must be appropriately concealed in order to reduce their visual impact. Thus, the Regional Law complements the provisions on this matter set out by the General Law on Telecommunications (Article 16.3) and the Regulations for the Use of the Public Radio-electric Domain (Article 8), which require the location of the antennae and base stations to comply with the applicable regulations on environmental protection.

Regional Law 10/2002 entered into force on May 23, 2002.

Availability of the pre-selection facility in consumer lines connected to analogic central stations
Resolution of May 8, 2002, of the Presidency of the Telecommunications Market Commission, which publishes Circular 1/2002, of May 8, 2002, of the Commission for the Telecommunications Market, on the availability of pre-selection in consumer lines connected to analog central telephone stations, published in the BOE of May 24, 2002.

In accordance with the duty established by Law 12/1997, of April 2, 2002, on Liberalisation of Telecommunications, to adopt the measures necessary to safeguard the wide range of services, access to telecommunication networks by the operators, network interconnection and network supply as an open network, and the price and commercialisation policy by the service operators, the Telecommunications Market Commission has decided that “Telefónica de España, S.A.U.” must install in its networks the mechanisms necessary to offer pre-selection facilities in all consumer lines connected to analogic central telephonic stations, within the time limit of six months after the entry into force of the Circular. Once this term has elapsed, operator pre-selection in consumer lines connected to analogic central stations shall be available for long-distance, fixed to mobile, and local calls, under the same conditions that pre-selection is offered in lines connected to digital central stations, and through the same administrative procedures.

Circular 1/2002 entered into force on May 25, 2002.

AUDIO-VISUAL

Rating signs corresponding to television programmes
Royal Decree 410/2002, of March 3, 2002, which implements paragraph 3 of Article 17 of Law 25/1994, of July 12, amended by Law 22/1999, of June 7 (the so-called “Law On Television Without Frontiers”), and sets out uniform criteria for the classification and signalling of television programmes, published in the Spanish Official Gazette (“BOE”) on March 23, 2002.

Royal Decree 410/2002 imposes on television broadcasters under Spanish jurisdiction the obligation to inform the viewers of the rating of the programmes they are viewing and, in particular, to inform them as to whether they are suitable for minors.

In particular, the public is informed by inserting certain visual symbols and acoustic tones that indicate whether the programme (i) is especially suitable for minors; (ii) is suitable for all viewers; (iii) is not recommended for minors under seven (7) ; (iv) is not recommended for minors under thirteen (13); (v) is not recommended for minors under eighteen (18); or (vi) is an adult rated programme or film.

A visual symbol corresponding to each of the aforesaid categories, which must be perfectly legible and sufficiently perceptible by the general public, should remain on the screen for at least five (5) seconds at the beginning of each programme and after each commercial or telesales break.

In addition, where the programmes are not recommended for minors under eighteen (18) or are adult rated films, an acoustic tone lasting one second must sound simultaneously with the corresponding visual symbol.

Finally, it is important to note that Royal Decree 410/2002 is a basic regulation. Provided the minimum requirements therein are respected, the Autonomous Regions may supplement them with additional requirements concerning broadcasters under their authority.

Royal Decree 410/2002 entered into force on June 23, 2002.

Measures to foment and promote cinematography and for the co-production of films
Royal Decree 526/2002, of June 14, 2002, which regulates measures to foment and promote cinematography and the production of films in co-production.

The Spanish Government has enacted Royal Decree 526/2002, of June 14, 2002, which regulates measures to foment and promote cinematography and the production of films in co-production, implementing Law 15/2001, on Fomenting and Promotion of Cinematography and of the Audio-visual Sector.

This regulation must be analysed in a systematic manner, referring to the other statutory requirements and regulations applicable to the granting of subsidies and state aid and, in particular, taking into account the provisions of the General Budget Law (Articles 81 and 82) and the Regulations governing the procedures to grant public subsidies. Obviously, all the procedures are to be applied subsidiarily within the budgetary limits approved during the relevant financial year.

In particular, Royal Decree 526/2002 provides for the possibility of granting state aid:

- to the producers of Spanish films (as defined in Article 2 of Law 15/2001) (Chapter III), with a special mention of the state aid foreseen for independent producers, i.e., individuals or entities free from the dominating influence of television broadcasting entities, whether for reasons of property, financial participation, or the rules governing such participation;

- in order to promote the distribution of EU films in Spanish cinemas;

- to participate in and promote festivals, in favour of the producers of films selected in official competitions through “A” ranked festivals according to the classification of the International Federation of Film Producers Associations;

- to organise festivals and cinematography contests of acknowledged prestige which are held in Spain;

- for the conservation of film negatives and original film media in Spain;

On the other hand, under the title “Rules for the production of cinematography films in co-production”, Chapter VII of Royal Decree 526/2002 establishes the requirements for a film produced under a Spanish and foreign co-production regime to be considered Spanish, thereby granting access to the same benefits and subsidies intended for Spanish films. In general terms, a Spanish producer who wishes to obtain Spanish nationality for a film produced in co-production must address the Director of the Cinematography and Audio-visual Arts Institute (ICAA) or, where the producer is settled in an Autonomous Region which is competent in this subject, to the relevant body of such Region, for the approval of the project, which shall imply the provisional granting of Spanish nationality for the purposes of applying for the promotion measures in the future. These measures may be applicable thereto, although the definitive recognition of Spanish nationality shall be granted when the film is submitted for classification, provided it conforms to the project approved in due time.

Finally, it should be noted that Royal Decree 526/2002 also addresses the regulation of the collective bodies with jurisdiction to consult on this matter. These bodies are the following: the Committee for Market Analysis and Follow-up, which is part of the ICAA, whose purpose is the study and follow-up of the films produced and broadcasted and the evolution of the market; the Committee of Experts; the Advising Committee on Distribution Aid; and the Jury on Benefits for Script Development. The last three bodies have the duty to directly advise the ICAA General Director in granting the benefits governed by this Royal Decree.

Royal Decree 526/2002 entered into force on July 18, 2002.

INDUSTRIAL PROPERTY

Trademarks consisting of the presentation of the shape of a functional product
Judgment of the Court of June 18, 2002, case C-299/99, Koninklijke Philips Electronics NV v. Remington Consumer Products Ltd.

The European Court of Justice resolved, through its judgment of June 18, 2002, questions that arose during a lawsuit for the infringement of a trademark consisting of the graphic representation of the shape and structure of the head of an electric shaver, comprising three circular heads with rotating blades with the shape of a triangle. The questions presented before the Court deal with (i) the scope of the trademark registration prohibition for lack of distinctiveness, (ii) the shape requirements of the trademarks that use the article they are intended to distinguish as a symbol, (iii) the acquisition of distinctiveness of trademarks of this kind and, finally (iv) the scope of the registration prohibition regarding this kind of trademark where the article in question has a shape attributable only to a technical result.

As regards the first question, and based on the essential purpose of the trademark (to indicate the origin), the Court pointed out that there are no prohibitions for the registration of trademarks for lack of distinctiveness other than those set out in Articles 3.1 (b) to (d). In particular, the prohibition of registering symbols that cannot qualify as a trademark for their incapability of distinguishing products or services specified in Article 3.1 a) of Directive 89/104/CEE is equivalent to the absolute prohibitions on registration for lack of distinctiveness provided in Articles 3.1 (b) to (d).

On the other hand, regarding the second question, the Court stated that, in the case of trademarks that use the article they are intended to distinguish as a symbol, the shape of the article in respect of which the sign is registered does not require any capricious addition such as an embellishment which has no functional purpose, in order for the sign to be capable of distinguishing an article.

The third question also refers to the distinctive character of trademarks, addressing the acquisition of distinctive character by using symbols that imitate the shape of the articles they are intended to distinguish. The Court stated that where a trader has been the only supplier of particular goods to the market, extensive use of a symbol that consists of the shape of those goods is sufficient to give the sign a distinctive character in circumstances where, as a result of that use, a substantial proportion of the relevant class of persons associates the shape with that trader only, or believes that goods of that shape come from that trader.

The fourth question addresses the prohibition of registering a product specified in Article 3.1 e) of Directive 89/104/CEE, the purpose of which is, as the Court pointed out, to prevent the obtaining of a monopoly in a particular technical result by means of trademark protection. Therefore, the Court stated that a sign consisting exclusively of the shape of a product is not capable of being registered as a trademark if it is established that the essential functional features of that shape are attributable only to the technical result.

Concept of conceptual likeness: “gold pages”, “golden pages”
Decision of the 3rd Chamber of the Supreme Court of April 25, 2002.

The decision of the 3rd Chamber of the Supreme Court of April 25, 2002, addresses the registration compatibility of the trademarks “páginas de oro” (gold pages) and “páginas doradas” (golden pages) for identical products and, to this end, defines the concept of conceptual likeness with respect to trademark rights.

In this regard, as the Court points out, conceptual likeness is an undefined legal concept (“concepto jurídico indeterminado”) which has not developed any case-law.

In this context, the Court sets out that a conceptual likeness shall exist where the trademarks produce “in a person of average IQ or culture, the feeling that it consists of the same pages, some golden, some gold, but both with the colour gold, bright yellow...”. Therefore, in view of the fact that the trademarks protect the same products, the Court concluded as evident that the trademarks in question can confuse the consumers.

Generic character and subsequent use of the trademark
Decision of the 1st Chamber of the Supreme Court of May 9, 2002.

The Supreme Court determines in its decision of May 9, 2002, that the trademarks “Puente Aéreo” (“Shuttle Service”) of Iberia are generic for the purposes of carrying passengers between Madrid and Barcelona, advertising said service and selling the corresponding tickets in travel agencies. In reaching such conclusion, the Court referred to the fact that the holder of the aforementioned trademark expression had not created anything new and to the definition that the Dictionary of the Spanish Royal Academy of Language provides for such expression.

The fact that there has only ever been one transportation system of this kind since 1974 in Spain, and that, accordingly, the expression “Puente Aéreo” may be colloquially assumed to identify the airline that provides the shuttle service between Madrid and Barcelona that holds the trademark, in the Court’s view, did not impede the trademark being rendered void.

Accordingly, the Supreme Court stated that, although the subsequent use of a trademark which is “descriptive” (and, therefore, prohibited by Article 11.1 (c) of the Trademarks Law of 1988), may cause the trademark to be qualified as distinct and thereby impede its declaration as null, in the case of generic signs (those provided for in Article 11.1 (a) of the Trademarks Law of 1988), the subsequent use of the trademark does not affect, in any event, the nullity of the trademark.

It should be noted that this last point has substantially changed with the New Trademarks Law (Law 17/2001, of December 7, 2001). In accordance with this Law, (and in accordance with Directive 89/104/CEE), the acquisition of distinctiveness for symbols that originally lacked such distinctiveness (ad ex. generic signs) may be achieved through the repeated use of said sign. Likewise, it should be noted that the treatment given to the prolonged use of a sign where an operator is the only one who provides the market with certain products is not the same in this decision as in the decision of the Court of Justice of June 18, 2002, mentioned in this newsletter.

INTELLECTUAL PROPERTY

Prohibition of discrimination on grounds of nationality
Judgment of the Court of Justice of June 6, 2002, case C-360/00, Land Hessen v. Ricordi & Co. Bühnen- und Musikverlag GmbH.

During a lawsuit regarding the duration of the protection of Puccini’s opera “La Bohème” a prejudicial issue was raised before the European Court of Justice relating to the application of the prohibition of discrimination on the grounds of nationality.

In accordance with the relevant German legislation, Puccini’s opera “La Bohème” is granted, in Germany, the protection established by international agreements (unlike the works of German authors and other works published in Germany). The Berne Convention is the international agreement applicable to the case in question. The Convention determined that the term copyright protection is to be governed by the legislation of the country where protection is claimed (in this case, Germany), but said term is not to exceed the limit established in the country of origin of the work (in this case, Italy, which provides a protection period of 56 years, which is lower than the German period of 70 years), unless the legislation of that country provides otherwise (which German legislation has not).

In this context, for the determination of the protection period of Puccini’s opera, “La Bohème”, in Germany, the relevant national Court deemed it necessary to decide whether the prohibition of discrimination on grounds of nationality grounds is applicable to this matter.

In this regard, the Court of Justice pointed out that copyright and related rights fall within the scope of application of the EC Treaty and, since copyright may be invoked not only by an author, but also by those claiming under said author, the fact that the author had died when the discrimination prohibition entered into force does not preclude the application of such prohibition.

With respect to the particular provisions of the German legislation applicable to this case, the Court states that the legislation undoubtedly infringes the discrimination prohibition. In accordance with the Phil Collins judgment, each Member State is required to ensure that citizens of other Member States are placed on a completely equal level with its own citizens in situations governed by EU law, such as the present case.

Employment offers are matters of intellectual property as a part of a collective work
Decision of the 1st Chamber of the Supreme Court of May 13, 2002.

The decision of the 1st Chamber Supreme Court of May 13, 2002, established that employment offers published in a newspaper are matters of copyright, as a part of a collective work.

The newspaper in which the offers were published “implies the action of human and material resources, aimed at a concrete end of editing and disclosure, which requires an inevitably co-ordinated activity, where the rights of such collective work, to the creators’ benefit, may not be in favour of their concrete producers” and, therefore, qualifies as a collective work that belongs to its publisher.

As regards the possibility that employment offers can be matters of intellectual property, the Court stated that the drafting of said employment offers implies a creative activity carrying the burden of originality, intended to make the offer attractive for the benefit of the offeror, as well as the applicant and the medium. Accordingly, employment offers are creations protected by copyright.

FOOD LAW

New regulations on labelling and commercialisation of olive oil
Regulation No. 1019/2002, of 13 June, 2002, on marketing standards for olive oil, published in the Official Journal L 155 of June 14, 2002.

By means of Regulation No. 1019/2002, the Commission has set out a clear and uniform regulatory framework for the labelling and presentation of olive oil, regulating, inter alia, the presentation of blends of olive oil and other vegetable oil, and of foodstuff where the presence of olive oil is highlighted on its label.

Since July 2001, the date of adoption of the Council Regulation No 1513/2001, of July 23, 2001, olive oil is classified in four categories: “extra virgin olive oil”, “virgin olive oil”, “olive oil composed of refined olive oils and virgin olive oils” and “olive-pomace oil”.

The new Regulation requires that olive oil be sold in containers of five litres maximum. Such containers shall also be provided with an opening mechanism which is detachable after the first use and appropriate labelling in accordance with the aforementioned descriptions of the different categories of olive oil (Article 2).

Regarding the blends of olive oil and other vegetable oils, the new Regulation prohibits any indication that they contain olive oil on the label of a blend, unless it accounts for more than 50 % of the blend concerned (Article 6.1).

If a producer intends to resort to the positive image of olive oil for the purposes of selling, for instance, margarine, sauce, mayonnaise and certain canned products such as vegetables and fish, and, to this end, wishes to highlight the fact that the product contains or is elaborated with olive oil, the Regulation imposes on the manufacturer the obligation to indicate the percentage of olive oil in relation to the total net weight of the foodstuff, or the percentage of olive oil in relation to the total weight of fats (Article 6.2).

The new Regulation shall enter into force on November 1, 2002, but it provides for a transitional regime which allows for the depletion of the stocks of containers and labels that do not comply with the new requirements. However, the provisions concerning the inclusion of the new definitions and descriptions in the labels shall be applicable as of November 1, 2003.

The Court of Justice issues a judgment on the scope of protection granted by the provisional regime of the regulations on protected geographical indications
Judgment of the European Court of Justice, of June 25, 2002, case C-66/00 “Criminal proceedings against Dante Bigi”.

In its Judgment of 25 June, 2002, Case C-66/00 “Criminal proceedings against Dante Bigi”, the European Court of Justice defined the scope of protection granted by the exceptional regime contained in the Regulations on Protected Geographical Indications (“PGI”). In particular, the Court of Justice declared that this exceptional regime is only applicable to (i) the PGIs registered through a simplified procedure (which requires that the products must already be protected in the Member State, prior to EU protection) and (ii) only for products originating from States other than those that applied for registration.

The EU protection regime of geographical indications, established by a Council Regulation of 1992, provides that, as from the moment a PGI is registered, any use of said indication for products that do not comply with the product specifications is, in principle, prohibited. This regime also provides for exceptional transitional measures. Thus, Member States may allow for the use of certain registered indications for products that do not comply with the specifications. Businesses that have legally commercialised products with the registered indication during the five years prior to the date of registration may continue doing so for an additional period of five years, provided the label clearly indicates the actual origin of the product.

In the present case, the cheese manufactured by Mr. Bigi in Italy did not fall within the scope of the exceptional provisional regime of the PGI Regulations, which only affects the products originating from Member States other than those that apply to register the PGI in question.

Mr. Bigi, legal representative of the company Nuova Castelli SpA, was found guilty by the Courts of Parma for having produced a dried, grated pasteurised cheese in powder form, made from a mixture of several types of cheese of various origins, which does not comply with the PGI specifications for "Parmigiano Reggiano" (in force since 1996) and which may not be sold in Italy.

This cheese, which was intended for marketing exclusively outside Italy, particularly in France, has a label that highlights the word “parmesan” and clearly indicates its true origin.

The Court of Parma raised several questions before the Court of Justice concerning the scope of application of the exceptional regime that governs the products that do not comply with the specifications.

First, the Court of Justice stated that it is by no means evident that the designation “parmesan” has become generic.

Subsequently, the Court analysed whether the transitional regime may be applied to the products that do not respect the PGI and originate from the Member State that obtained the registration of the PGI.

The Court of Justice stated the application requirements of the transitional regime (applicable to PGIs registered through the simplified procedure and only to products originating from Member States other than those who applied for the registration).

Pursuant to the rationale of the Court of Justice, where a Member State applies for the registration of a PGI indication, the products that do not comply with the specifications for such designation may not be legally sold in such State or in other Member States, since this would infringe consumer protection and fair competition.

Consequently, the Court declared that the simple indication of the actual origin of the product that does not comply with the PGI specifications could still confuse consumers. The product marketed in a State other than that which applied for the PGI registration through a company of the PGI product’s State of origin would appear to be a product covered by the registration, but would not correspond to the PGI.

In addition, stating the origin could possibly give rise to unfair competition conditions in a market other than that of the PGI product, which would be beneficial for the manufacturer of the product that does not satisfy the specifications, and detrimental to other manufacturers.