NEWSLETTER

March 2002

TELECOMMUNICATIONS

Principal operators in the national fixed and mobile telephone markets
Resolution of January 2, 2002 of the Council of the Commission for the Telecommunications Market, ordering publication of the Agreement of December 20, 2001, establishing and publishing the list of operators who, to the extent provided by Article 34 of Royal Decree-Law 6/2000, of June 23, are considered as principal operators in the National Markets of Fixed and Mobile Telephone Services, published in the Spanish Official Gazette (BOE) on January 30, 2002.

In accordance with the provisions of Article 34 of Royal Decree-Law 6/2000, of June 23, of Urgent Measures to Intensify Competition in the Markets of Goods and Services, and of Article 3.1 of Royal Decree 1232/2001, of November 12, the Council of the Commission for the Telecommunications Market has declared the following to be the principal operators in the national markets of fixed and mobile telephone:

(1)     Fixed Telephone: Telefónica de España, S.A.U.; Retevisión, S.A.U.; Lince Telecomunicaciones, S.A.U.; Jazz Telecom, S.A.U. and Aló Comunicaciones, S.A.

(2)     Mobile Telephone: Telefónica Móviles España, S.A.U.; Airtel Móvil, S.A.; Retevisión Móvil, S.A. and Xfera Móviles, S.A.

Consequently, the limitations and restrictions provided for in subparagraphs one and four of Article 34 of Royal Decree-Law 6/2000, of 23 June, as well as the obligations provided for in subparagraph four of the aforesaid Article 34 of Royal Decree-Law 6/2000 shall be applicable to the direct and indirect shareholders of the aforesaid principal operators, until the subsequent annual determination.

Dominant operators in the national fixed telephone, circuit rental, mobile telephone and interconnection services market
Resolution of January 8, 2002 of the Council of the Commission for the Telecommunications Market, ordering the publication of the Agreement of October 4, 2001, establishing and publishing the list of the operators who, to the extent provided by the General Telecommunications Law, shall be considered dominant in the national fixed telephone, circuit rental, mobile telephone and interconnection services markets, published in the BOE of January 31, 2002.

In accordance with the provisions of Article 23.2 of the Law 11/1998, of 24 April, General Telecommunications Law, the Council of the Commission for the Telecommunications Market has declared the following to be dominant operators in the fixed telephone, circuit rental, mobile telephone and interconnection services markets:

(1)     In the fixed telephone market: Telefónica de España, S.A.U.

(2)     In the circuit rental market: Telefónica de España, S.A.U.

(3)     In the mobile telephone market: Telefónica Móviles España, S.A. and Airtel Móvil, S.A.

(4)     In the interconnection services market: Telefónica Móviles España, S.A. and Airtel Móvil, S.A.

The provisions of the telecommunications legislation concerning operators with dominant character shall continue to apply to the aforesaid operators, until the subsequent annual determination.

Submission of reports and certifications by radio-communication service operators
Order of the Ministry of Science and Technology 23/2002, of January 11, establishing the conditions for the submission of certain studies and certifications by radio-communication service operators, published in the BOE of January 12, 2002.

The Regulation which establishes the conditions for the protection of the radio-electric public domain, restrictions to radio-electric emissions and health protection measures against radio-electric emissions, approved by Royal Decree 1066/2001, of September 28, sets out in points 1, 2, 4 and 7 of Article 8, point 3 of Article 9 and subparagraph 1 of the sole transitional provision, the obligation to the operators which set up support nets for sound radio-diffusion and television services and the holders of class B2 and C2 individual licenses to submit a series of reports and certifications verifying compliance with the provisions related to maximum exposure levels to radio-electrical emissions set out in the aforesaid Royal Decree. The Order of the Ministry of Science and Technology 23/2002, of January 11, sets forth homogeneous format and structure for the different certifications and reports which must be submitted to the Ministry of Science and Technology by all radio-communication service operators.

Order 23/2002 sets forth, on the one hand, the minimum information which must be contained in the reports to be submitted to the Ministry of Science and Technology by all operators who establish new support nets for sound radio-diffusion and television services and holders of class B2 and C2 individual licenses, showing theexposure levels to radio-electric emissions in areas neighbouring their premises where people may habitually remain. The studies will have to be incorporated to the project or technical proposal which is required in order to apply for the authorisation of radio-electric premises, in accordance with the provisions of chapter I, title III, of the Order of March 9, 2000, which approves the Regulations for the development of the Law 11/1998, of April 24, General Telecommunications Law, in connection with the use of the public radio-electric domain.

On the other hand, Order 23/2002 sets out the mentions which must be included in the certification issued by a competent technician which the holders of class B2 and C2 individual licences must submit within the first quarter of each year, verifying that the exposure limits set out in Annex II of Royal Decree 1066/2001, of September 28, have been complied with. The Order also sets out the data which must be incorporated to the certifications to be submitted by the operators in connection with the premises authorised prior to October 1, 2001, verifying compliance with the new requirements.

Finally, Order 23/2002 incorporates as annexes models of the relevant reports and certifications.

Order 23/2000 entered into force on January 13, 2002.

AUDIO-VISUAL

Decoders. Royal Decree 136/1997, dated January 31, infringes the European Union Treaty
Decision of the European Court of Justice, of January 22, 2002.

The Decision mainly settles the prejudicial question submitted to the European Court of Justice by the Spanish Supreme Court, intended to obtain a prejudicial decision about the interpretation of Articles 30 and 59 of the EC Treaty (currently Articles 28 and 49 EC, after modification of the same), in connection with Articles 1 to 5 of Directive 95/47/CE of the Parliament and the Council, of October 24, 1995, about the use of rules for television signals transmission. The aforesaid question arose in the context of an administrative claim lodged by Canal Satélite Digital, S.L. before the Spanish Supreme Court with the aim of declaring Royal Decree 136/1997, of 31 January, approving the Technical and Performance Regulations of the Satellite Telecommunication Services, to be null and void. This Royal Decree imposes on the operators the obligation to obtain a certification in order to be able to commercialise the decoders necessary for the reception of the programs, also requiring registration with an administrative registry, subject to the issuance of a technical report by the relevant administrative authorities.

The Decision considers that, although the Member States have the right to establish a prior authorisation procedure with the requirement of obtaining an opinion accrediting compliance with the requirements of the Directive and the national legislation, this must in all cases respect the fundamental liberties guaranteed by the EC Treaty. In the context of the prejudicial question, the European Court of Justice states that the obligation to register with a registry (which, in practice, gives rise to a prior authorisation procedure) imposed on the operators in connection with the commercialisation of the decoders necessary for the reception of their signal, restricts the free circulation of goods and the free rendering of services. This restriction is not justified to the extent that it does not respect the proportionality principle, as this measure, in the case of the decoders commercialised by Canal Satélite Digital, S.L. (which where already being commercialised in Belgium and the United Kingdom) unnecessarily duplicates the controls which have already been carried out in another Member State. The prior authorisation procedure is also not justified, given that an eventual a posteriori control would be sufficient in order to safeguard its effectiveness.

INDUSTRIAL PROPERTY

New Trademarks Law
Law 17/2001, of December 7, of Trademarks, published in the BOE of December 8, 2001.

The more relevant aspects of Law 17/2001, of December 7, on Trademarks, may be gathered in the following categories:

(1)     Novelties regarding material aspects of trademark rights.

(2)     Novelties regarding the registration procedure.

(3)     Novelties regarding other distinctive signs.

(4)     Entry into force and transitional regime.

The new Trademarks Law repeals Law 32/1988, of November 10, on Trademarks, and responds, according to the legislator, to three needs: firstly, to comply with the Decision of the Constitutional Court 103/1999, of June 3, which sets apart the competences of the State and of the Autonomous Regions in industrial property matters; secondly, to incorporate the Community and international regulations on trademarks to which Spain is subject; and, finally, to introduce certain material and procedural regulations in the Spanish legal system, which are advisable due to the requirements of the information society and the experience assembled during the application of the 1988 Trademarks Law, as well as in our neighbouring countries.

(1)    Novelties regarding material aspects of trademark rights.

The new Trademarks Law redrafts the legal definition of trademark on the basis of the concept of trademark in Directive 89/104/CEE of the Council, of December 21, 1988, amending the omission of the requirement of a printed version provided therein. Consequently, it defines the trademark as “any sign or device capable of being represented graphically that serves to distinguish in the marketplace the goods of services of a firm from those of other firms” (Article 4.1). On the other hand, the new Trademarks Law for the first time includes signs consisting of sounds in the catalogue of signs capable of being registered as trademarks (Article 4.2).

The catalogue of absolute prohibitions for registration is also affected by the new Trademarks Law. On the one hand, it extends the cases in which the secondary meaning doctrine is applied, stating, in accordance with the provisions of Directive 89/104/CEE and Regulation 40/94, that the absolute provisions which affect trademarks consisting on signs which lack distinctive character, or consisting exclusively of signs which have become usual for designating the goods or services in everyday language or of in bona fide and established trade practice, or, finally, which consist exclusively of terms which describe the characteristics of the good or the service (the only hypothesis which was contemplated for this purpose under the 1988 Trademarks Law), shall not apply when the aforesaid signs have acquired a distinctive character for the products in question due to the use of the same (Article 5.2). On the other hand, the Law introduces the absolute prohibition required by ADPIC regarding wines or spirits which contain or consist of indications of the geographical origin when they do not have the indicated origin. (Article 5.1 h).

Concerning relative prohibitions on registration, the new Trademarks Law defines in Article 6 which trademarks shall be considered precedent for the purposes of such prohibitions, among which remain unregistered trademarks “which are well known” in the sense of Article 6 bis of the Paris Convention. The proprietors of these “well known” trademarks may consequently object to the registration of subsequent misleading trademarks (Article 6.2 d). Among the precedent trademarks priority Community trademarks are also included and the applications thereof, as well as Community trademarks or applications thereof which claim the seniority of a Spanish trademark or a trademark which has extended internationally to Spain.

On the other hand, the new Trademarks Law reinforces the content and scope of trademark rights. For instance, the scope of the exclusive right is extended, expressly stating that the holder of a trademark may object to the use of the same in electronic communication nets, or as a domain name, as well as in media such as packing and labels, or as a decorative instrument in the event such media may be used to carry out forbidden actions (Article 34.3).

In line with the above, the new Trademarks Law reinforces the protection of the well-known and renowned trademark, which it defines in Article 8, respectively, as a well-known trademark in Spain to the sectors to which the goods and services subject to the trademark are directed, and the well-known trademark in Spain for the general public, protecting the well-known and renowned trademarks in Spain beyond the scope of the speciality principle, although in the case of well-known trademarks, the scope of protection depends on the degree of notoriety of the trademark within the relevant interested sector and, for renowned trademarks, it extends its effects to any kind of products and services. Thus, the holder of a well-known trademark in Spain may object to the registration (Article 8) and/or to the use as trademark (Article 34) of identical or similar signs for products or services which are not similar to the ones protected by his trademark (to the extent pointed out above) in the event that, as a consequence of the trademark being well-known in Spain (a) the use of such sign may indicate a connection between the products and services sheltered by the same and the holder of such trademark, or (b) when this use, carried out without fair cause, may imply a misappropriation or an impairment of the distinctive character or the notoriety or renown of such earlier trademark. A similar protection is granted to the well-known or renowned trade name registered in Spain.

The new Trademarks Law maintains the obligation to use the trademark and the related cause of lapse of the trademark due to breach of this obligation, but it introduces a significant reduction of the material scope in which the use of the trademark may be deemed to comply with this duty (among other novelties), for the purposes of complying with the Community requirements on one of the subjects in which the 1988 Trademarks Law differed most. The new Trademarks Law suppresses the adjective “express” in connection with the consent granted to a third-party so that the use by such party benefits the holder of the trademark: this modification, in accordance with the Community regulations, does not allow for any doubts in that the use of the trademark by a third party with only the implied consent of the holder of the trademark right benefits such holder for the purposes of avoiding the lapse penalty. On the other hand, the new Trademarks Law suppresses the paragraph of the 1988 Trademarks Law by means of which the use of a trademark for a certain product or service serves to evidence such use with regard to other goods or services included in the same class of the International Classification or in connection with which a risk of association may arise. In conjunction with the requirement for the accreditation of the use of the trademark as a condition for the exercise of certain faculties, this will increase (in line with what has been usual in the recent past) the cases in which compliance with the obligation of use must be discussed in practice and, as a common result, the cases in which partial declarations of lapse are necessary.

In this line of strengthening the trademark right, the new Trademarks Law introduces relevant novelties regarding the judicial exercise of the actions resulting from trademark rights: in addition to the actions which were already granted under the 1988 Trademarks Law (cessation of the infringing acts, compensation for the damages sustained, adoption of the necessary measures to prevent continuation of the infringement and publication of the decision), the new Trademarks Law creates an action for the destruction of unlawfully marked products (or their giving away for humanitarian purposes, following a practice which has become common in criminal procedures on forgery crimes and which certainly gives rise to objections from a technical point of view), subject to certain conditions. In the event of the Court decreeing the cessation of the acts infringing trademark rights, the new Trademarks Law provides for the imposition to the defendant of coercive penalty payments until actual cessation, the amount of which shall be determined at the moment of execution of the decision, together with the start-up date of the obligation to indemnify (Article 44).

Regarding the action for compensation for damages, the new Trademarks Law increases the cases in which such compensation is applicable, without the obligation to make a request prior to certain acts of infringement of the trademark right, such as affixing the sign to the goods or to their get-up. The Law also extends the scope of the compensation to the persons liable for the first commercialisation of the goods or services unlawfully marked (Article 42). On the other hand, damages of the good name of the trademark caused by the offender (particularly, damages due to a defective manufacture of the unlawfully marked goods or to an unsuitable presentation of the trademark in the marketplace) are expressly declared recoverable (Article 43.1). Likewise, the new Trademarks Law establishes ex lege and without requiring any evidence a minimum amount of the sums due in the event of infringement of trademark rights (1% of the offender’s revenues obtained by means of the goods or services unlawfully marked), a technically arguable solution which could have been reached with the same efficiency and without damaging the basis of our system of liability for damages, through the doctrine of unfair enrichment.

Concerning the actions of invalidation of a trademark based on causes of relative invalidity, the new Trademarks Law suppresses the lapse of the trademark due to the simple course of time and introduces lapse due to tolerance. In accordance with the foregoing, the holder of a prior right who has tolerated the use of a subsequent registered trademark for a period of five consecutive years shall not, in principle, have the power to request the invalidity of the subsequent trademark or object to the use of the same in connection with the goods or services for which it had been being used (Article 52).

Concerning the actions regarding lapse of the trademark, the new Trademarks Law sets forth certain cases in which the trademark shall not lapse in the event of non-renewal, due to the existence of third-party rights over the trademark (Article 56). Likewise, it expressly provides that, in the event of admission of a claim for the invalidity or lapse of a trademark, the claimant may ask the Court to provide for the preventive recording of the claim with the Trademarks Registry (Article 61). Regarding the date as of which the lapsed trademark registration ceases to produce effects, while the 1988 Trademarks Law distinguished between lapse by virtue of a judicial decision (from the moment in which the decision becomes res judicata) and the remaining cases (from the date on which the events or omission which gave rise to the lapse took place) the new Trademarks Law gives a unitary treatment: the trademarks lapsed, for any reason, cease to produce effects from the moment at which the events or omission which gave rise to the lapse took place. In the event of trademarks lapsed by virtue of a judicial decision, this modification might in practice imply certain problems in determining the relevant date and how a declaration of lapse affects other judicial actions on course before different courts regarding the same trademark and still not resolved by a res judicata decision.

In connection with the exhaustion of trademark rights, the new Trademark Law sets forth that the holder may not forbid third parties from using the trademark for goods placed on the market under that trademark by the holder or with his express consent in the European Economic Space (and not only in Spain, as stated in the 1988 Trademarks Law, or internationally, as could result from the Decision of the Supreme Court of September 28, 2001 concerning the Bacardi affair).

The new Trademarks Law regulates in more detail the trademark as subject to ownership rights and, particularly, its undivided property by two or more people, as well as licences and assignments thereof. In this regard, the Law not only incorporates the provisions of the Trademarks Treaty of 1994 (on registration with the Trademarks Registry), but also sets out presumptions in the absence of agreement by the parties concerning the scope of the licences (particularly, their duration, territorial scope, non-exclusive character and goods or services subject thereto).

(2)    Novelties concerning the registration procedure.

In this regard, the new Trademarks Law introduces significant novelties, which are briefly described below.

In accordance with the  aforesaid Decision of the Constitutional Court 103/1999, of June 3, the Autonomous Regions competent i n industrial property matters shall be, in general, competent to receive and formally examine the applications.

The ex officio examination of the relative prohibitions by the Spanish Patents and Trademarks Office is suppressed, in line with the Community trademark registration system.

The “one trademark, one registration” system is abandoned; a sole application may indicate as many kinds of products and/or services as desired.

Likewise, the specialities for the registration of the derived trademarks are suppressed.

On the other hand, the interested parties may submit to arbitration certain controversial questions which arose during the trademark registration procedure (excluding questions regarding the existence of formal defects or absolute prohibitions for registration).

Finally, another relevant novelty is the regulation by the new Trademarks Law of the conversion of international registration and Community trademark applications or registrations into national applications.

(3)    Novelties regarding other distinctive signs.

Business signs are excluded from the scope of the new Trademarks Law. Signs already registered or subject to an on-course application are subject to a transitional regime (with the possibility of a final seven-year renewal and an extra-registry protection of the cancelled business signs) without prejudice to their protection by the general law provisions on unfair competition (in accordance with third and fourth transitional provisions).

In connection with trade names, the new Trademarks Law, unlike the 1988 Trademarks Law, makes no reference to the optional character of registration, only pointing out certain issues regarding registration and rights granted by the same, and suppressing the reference contained in the 1988 Trademarks Law which stated that trade names may only be transferred together with the undertaking as a whole.

(4)    Entry into force and transitional regime.

The new Trademarks Law shall enter into force, in general terms, on July 31, 2002. However, the following provisions came into force on December 9, 2001 (the day after publication in the BOE): (a) Title V, concerning the content of trademark rights (effects of registration, obligation of use, actions arising from infringement and regulation of the trademark as object of ownership rights); (b) Article 85 (subsequent declaration of nullity or lapse of a national trademark which is the basis of the seniority of a Community trademark); and (c) additional provisions three (modification of the Patents Law), four (compliance with proceedings with expiration dates on a Saturday), eight (use of electronic media) ten (contractual and National Budget regime of the consultation to the data bases, made by the Spanish Patents and Trademarks Office), eleven (rendering of information services by means of electronic communications nets), thirteen (modifications of Law 17/1975, of May 2, creating the Autonomous Body “Industrial Property Registry”), fourteen (prohibition to grant corporate names which may be misleading regarding registered or well-known trademarks or trade names), and fifteen (co-operation between the Spanish Patents and Trademarks Office and foreign offices).

The new Trademarks Law sets forth a transitional regime by means of which: (a) the registration procedures started prior to its entry into force shall be handled and resolved in accordance with the provisions of the previous law (first transitional provision); (b) trademarks and trade names granted under the previous legislation shall be regulated by the new law, except, in certain cases, the payment of quinquenal fees (second transitional provision); and (c) business signs shall be regulated by the aforesaid transitional regime.

Community Models and Designs
Council Regulation No. 6/2002, of December 12, 2001 on Community models and designs, published in the Official Journal of the European Communities (DOCE) of January 5, 2002.

Council Regulation No. 6/2002, directly applicable in all Member States, creates a unified system of Community models and designs to which uniform protection is given throughout the entire Community.

The object of the new regulation is the appearance of the whole or a part of a product resulting from the special features of the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation, establishing as requirements for the protection of its individual character and novelty. The components of a product which are not visible during normal use of the same do not enjoy this protection

The protection granted as model or design does not exclude the protection based on the industrial property regulations of the Member States (and, particularly, based on the national provisions on models and designs) or on any other industrial property title acknowledged by the Member States, as well as in the regulations about unfair competition. Likewise, the principle of accumulation of the protection as Community model or design and as intellectual property is expressly set forth, allowing the Member States to freely establish the scope of the protection as intellectual property and the conditions in which it is granted.

Regulation 6/2002 provides for two kinds of protection, which shall also apply to any other designs and models which do not produce a different general impression on informed users:

(1)     a protection of the unregistered model or design, which grants only the right to prevent copies of the same for a period of three years from the moment in which it is made available to the public for the first time in the Community; and

(2)     a protection of the registered model or design, for a period of five years as from the filing of the application (renewable for successive five-year periods up to a maximum of twenty-five years) which grants its holder the exclusive right to exploit the industrial model or design and prevent its use by third parties without its consent.

Regulation 6/2002 sets forth a complete legal regime of protection of the Community model and design, expressly regulating its ownership, limitations (which include acts carried out privately and for non-commercial purposes, as well as acts carried out for experimental purposes), the exhaustion of the right (which applies throughout the Community), the rights of prior use regarding a registered Community design or model, the causes of nullity, their regime as subject to ownership (by means of the assimilation of the Community model and design rights to national rights), their assignment etc. Likewise, the registration procedure for industrial models and designs, as well as the appeals regime before the Office for the Harmonisation of the Internal Market, the jurisdiction rules and the procedure for legal actions regarding Community models and designs are regulated in detail.

Regulation 6/2002 shall enter into force on the sixtieth day following its publication in the DOCE (which took place on January 5, 2002).

Inventions made within public research entities
Royal Decree 55/2002, of January 18, on the exploitation and assignment of inventions achieved within public research entities, to the extent provided by Article 20 ofLaw11/1986, of March 20, on Patents, published in the BOE of January 30, 2002.

Article 20 of the Patents Law sets forth the legal regime for inventions made by university professors, providing for the possibility to extend such regime to the inventions achieved by the investigating personnel of public entities, which extension is carried out by Royal Decree 55/2002.

For the purposes of Royal Decree 55/2002, CSIC, CIE-MAT, INTA, INIA, IEO, IGME, Carlos III Health Institute, the Canary Islands Astrophysics Institute, the El Pardo Channel of Hydro-dynamic Experiences, the Spanish Metrology Centre and the Centre for Studies and Experimentation of Public Works shall be considered public research entities. Civil servants assigned to those institutions who perform research activities, and employees of the same under labour law, shall be considered research personnel.

Pursuant to Royal Decree 55/2002, the ownership of the inventions made by the research personnel of the aforesaid entities corresponds to the relevant public entity, and the way in which, if so provided, a patent shall be applied for such inventions is set forth, and the benefits obtained by the public research entity for the exploitation of the invention shall be distributed as follows: (a) one third for the entity; (b) one third for the author or authors of the invention; and (c) one third following the criteria of the entity’s Regulating Council in accordance with certain parameters.

Distinctive character of three-dimensional trademarks
Decision of the Community Court of First Instance (Fourth Chamber) of February 7, 2002 (Mag. Instrument Inc. vs. OHIM).

The Decision settles the appeal lodged against the decision of the Office for the Harmonisation of the Internal Market (OHIM) not to register certain Community three-dimensional trademarks consisting of cylindrical lantern shapes on the basis of their lack of distinctive character.

The Court of First Instance points out that Regulation 40/94 does not distinguish between different kinds of trademarks regarding their distinctive character. Although all relevant elements regarding the specific circumstances of each case are involved in the appreciation of such character, it may not be excluded that the nature of the trademark which has been applied for may affect the perception thereof by the target public.

In the case in question, the Court of First Instance states that, in view of the fact that the trademarks distinguish lanterns (i.e., general consumer goods) which correspond to common forms in the marketplace, and do not attract the attention of the average consumer by their aesthetic properties, these trademarks lack distinctive character. On the other hand, the Community Court of First Instance points out the autonomous character of Community trademarks regime, the above statements not being affected by the practice of certain national offices.

Differences between industrial models and utility models
Decision of the Supreme Court of December 4, 2001.

In the course of a procedure for infringement of industrial property rights on a utility model and an industrial model concerning certain bedspreads, the defendant counter-claimed alleging the nullity of the models. The Provincial Court of Valencia declared the models to be null and void on the basis of a reasoning which treated both of them equally (calling them “industrial utility models” and applying an identical legal regime to both of them).

The Supreme Court sets forth the differences between utility models (“little inventions” which bring about a utility or an advantage) and industrial models (creations which, even if not resulting in a material advantage, have an original presentation in their approach, but with no direct utility other than an ornamental one) pointing out the confusion caused by the declaration of an industrial design to be null and void while acknowledging the novelty of its aesthetic creation.

Objective liability for the infringement of rights under a utility model
Decision of the Supreme Court of December 7, 2001.

An infringement of a utility model whose object was an educational ability game (Uniflip) having been carried out by means of manufacture of the same without any contractual relationship sheltering such manufacture, the Supreme Court states that, in accordance with Article 64 of the Patents Law, the manufacture of objects protected by a utility model gives rise “in all cases” to liability for the consequent damages, this liability being objective for the inherent damages. The Supreme Court further states that the obligation to repair damages arises as “an unavoidable fact and without the strict need to quantify the relevant amounts, which may be postponed until the stage of execution of the judicial decision”, the cause of which damages may be presumed without needing to provide evidence of their actual existence, since they are taken as evident (in accordance with the Decisions of the Supreme Court of February 23 and July 27, 1997).

INTELLECTUAL PROPERTY

Distribution right: lease of compact discs
Decision of the Supreme Court of December 12, 2001.

Several phonogram producers claimed in 1994 against “City Digital, S.A.” for its activity consisting of leasing compact discs to the public from its premises. The application of the 1987 Intellectual Property Law and the fact that the phonogram producers have a distribution right over their phonograms being uncontroverted, the matter under discussion was the interpretation of Article 19.2 of the 1987 Intellectual Property Law.

The Supreme Court states that, under the regime of the 1987 Intellectual Property Law, the transferee, by sale of copies of phonograms, did not have the power to exploit them through the exercise of a commercial lease activity without the consent of the holder of the distribution right. The Supreme Court reaches such solution on the basis of doctrinal opinions on the matter, the joint analysis of Articles 19 and 56.1 of the 1987 Intellectual Property Law, the parliamentary efforts on the drafting of Article 19.2 of said law and the solution provided by Directive 92/100/CEE (incorporated into the Spanish legal system through Law 43/1994).

E- COMMERCE

International personal data transfers. Standard contractual clauses
Decision of the European Commission of December 27, 2001 on standard contractual clauses for the transfer of personal data to processors established in third countries, under Directive 95/46/EC, published in the DOCE of January 10, 2002.

The Decision’s purpose is to establish a series of standard clauses which shall be deemed appropriate and sufficient for the Member States’ authorities to authorise the transfer of personal data to non EU countries which do not grant an adequate level of protection, in accordance with the provisions of Article 26.2 of Directive 95/46/CE, of the European Parliament and the Council, of October 24, 1995, on the protection of individuals concerning the processing of personal data and the free circulation of such data, which has been incorporated into our legal system trough the Organic Law 15/1999, of December 13, on Personal Data Protection.

The Decision requires the Member States not to refuse to acknowledge that the contractual clauses provided therein grant the adequate guarantees, which shall not in any way affect other contract clauses, and must be understood without prejudice to the authorisations that may be granted by the authorities of each Member State in accordance with the applicable national laws implementing Article 26.2 of Directive 95/46/EC.

The Decision shall not apply to the transfer of personal data by controllers established in the Community to recipients established outside the Community who act only as processors.

Finally, the Decision provides for certain circumstances under which the Member States shall be able to prohibit international data flows to non EU countries under this Decision.

The Decision shall enter into force on April 2, 2002.

Statute of the public business entity Red.es
Royal Decree 164/2002, of February 8, approving the legal statute of the public business entity Red.es, published in the BOE of February 16, 2002.

The approval of the statute of the public business entity Red.es complies with the legal mandate contained in the law creating such entity. The Statute specifies the duties to be carried out by Red.es, and establishes the legal framework for its activity.

Red.es is created as an instrument to promote the development of telecommunications and the Information Society in Spain, developing its activities in different areas, and having been assigned five main duties:

(1)     To manage the registration of Internet domain names and addresses under the country code corresponding to Spain (.es).

(2)     To participate in the entities which co-ordinate the management of the Registries of names and domains of the Internet Corporation for the Assignment of Names and Numbers (ICANN).

(3)     To act as an observer for the telecommunications and Information Society sectors in Spain.

(4)     To draft studies and reports and, in general, to assess the Spanish Public Authorities on all matters regarding telecommunications and the Information Society.

(5)      To promote and develop the Information Society.

The governing bodies of the entity shall be the President, the Board of Directors and the Managing Director. The President of the entity and of the Board of Directors shall be the Secretary of State for Telecommunications and the Information Society. The Board of Directors shall be composed of the President, the Managing Director and 10 to 17 members appointed by the Ministry of Science and Technology, certain high-rank officers of such Ministry being ex officio members. The Managing Director, the entity’s executive body, shall be appointed by the Board of Directors at the proposal of the President. Likewise, a General Secretary of the entity is created, which will be responsible for the legal counsel for Red.es, among other duties.

Red.es shall set up an observatory to compile statistical indicators allowing for the evaluation of the development and evolution of the market and the introduction of new technologies in society and making them available to the public. For such purposes, it shall act in conjunction with the different public authorities and will have the collaboration of public bodies such as the National Statistics Institute and the Commission for the Telecommunications Market, and sector associations and bodies which have been working on this matter.

The main duty of Red.es shall be, in any event, the setting up of programmes to promote the development of the Information Society in Spain (many of which are reflected among the emblematic actions of the Action Plan of Initiative INFO XXI).

Royal Decree 164/2002 entered into force on January 17, 2002.