Grau & Angulo
The firm offers legal representation in all areas of Intellectual Property to clients in the textile, fashion, mass consumer goods, high technology, pharmaceutical, sport and leisure, food and beverage, perfumery, IT/telecoms and luxury goods for whom Intellectual Property is an important asset of their business.Show more
In a recent case, Barcelona Commercial Court Number 2 declared that teleshopping ads broadcast by the defendant had infringed the copyright in similar ads created by the plaintiffs. This was an unusual case, as the claim relied on proving the statutory required level of originality for a creation to be copyrightable and the plagiarism of the pre-existing works in a particularly active sector.
The Ministry of Culture and Sports recently fined a website owner under the Consolidated Text of the IP Act for allowing users to download various copyrighted content from Spain. Although several similar websites had been taken down prior to this case, this was the first time that an economic fine of this magnitude was imposed. The main reason for this was that the administrative infringement in this case was classified as 'very severe'.
The Barcelona Court of Appeal recently confirmed a trial court judgment which had sentenced the defendant for a crime against intellectual property in accordance with the Criminal Code. For more than 15 years, the infringer had commercialised various products featuring the FC Barcelona trademarks, which he acquired from an official licensee. However, in 2013 the defendant had also begun commercialising illicitly traded products alongside the genuine products.
Preliminary draft Trademark Act approved: declarations of invalidity and cancellations of registered signsSpain | 05 November 2018
The Council of Ministers recently approved a preliminary draft law which will partially amend the Trademark Act in order to incorporate the EU Trademark Directive. Ahead of the parliamentary approval procedure, various consulting bodies provided their opinions on the draft text. In this regard, the Economic and Social Council and the General Council of the Judiciary both highlighted certain aspects of the preliminary draft law which they believe could be improved.
Barcelona Commercial Court Number 5 recently dismissed a preliminary injunction request filed by Merck Sharp & Dohme (MSD) regarding the commercialisation of generic medicinal products. The defendants had opposed the request by alleging the invalidity of MSD's supplementary protection certificate (SPC) on the basis that it was invalid according to the EU SPC for Medicinal Products Regulation.
The Zaragoza Court of Appeal recently issued a ruling confirming a trial court judgment which had sentenced two defendants for importing several thousand counterfeit t-shirts from China. In their appeal against the trial court's condemnatory judgment, the defendants had argued that the trial court erred in assessing the evidence, that there had been a break in the custody chain of the seized goods, that one of the defendants had not participated in the importation and that there had been no consumer error.
The Madrid Court of Appeal (Section 28) recently confirmed the dismissal of a patent infringement action filed by PERI GmbH against Spanish company Sistemas Técnicos de Encofrados (STEN). The court held that a patent's scope of protection is determined by its claims and that the patent description and drawings must be considered in an interpretation of the claims. In light of this, the court concluded that STEN's scaffolding did not infringe PERI's patent.
The Barcelona Commercial Court Number 4 recently dismissed a patent infringement action brought by Novartis against the first generics in Spain of its valsartan and amlodipine medicinal product for the treatment of hypertension. The court upheld the defendants' counterclaim for invalidity of the asserted patent. Novartis has appealed this decision before the Barcelona Court of Appeal.
Appeal court confirms revocation of ex parte preliminary injunctions against oxycodone/naloxone genericsSpain | 11 June 2018
The Barcelona Court of Appeal recently issued two decisions confirming the Barcelona Commercial Court Numbers 1 and 4 rulings revoking the preliminary injunctions that they had granted ex parte at Mundipharma's request against the first generics in Spain of its oxycodone/naloxone medicinal product for the treatment of pain. In its decisions, the Barcelona Court of Appeal concluded that Mundipharma's patent was prima facie invalid due to added subject matter, as argued by the defendants.
The Barcelona Court of Appeal recently dismissed the writ of appeal filed by an online seller of counterfeit shoes against a trial court judgment, confirming the judgment in its entirety. Notably, the trial court had applied the damages criterion provided for in Article 43.2.b of the Trademark Act as opposed to that provided for in Article 43.2.a, which is more commonly applied in criminal cases and comprises the profits which a trademark owner would have made had a counterfeiting offence not occurred.
Foreseeing possible conflicts between the companies participating in the Mobile World Congress 2018, the Barcelona commercial courts adopted a specific protocol to protect technology patents, industrial designs, trademarks and copyright and defend against unfair competition and unlawful advertising acts in relation to products and materials displayed at the event. The judges recently issued a report regarding the protocol's application, results and implementation, as well as the proposals to be made in this regard.
Barcelona Commercial Court Number 5 recently revoked a preliminary injunction which had been granted ex parte at the request of Merck Sharp & Dohme BV (MSD) for alleged patent infringement. This case is notable, as the defendants' product – which is the first competitor of MSD's contraceptive vaginal ring, NuvaRing – is manufactured in Spain and sold in several European countries where other patent infringement proceedings are being prosecuted in parallel.
The Supreme Court recently confirmed the revocation of the collective trademark BARCELONA due to its lack of distinctiveness. The Supreme Court confirmed the Catalonia High Court of Justice's judgment that the trademark contravened its required function as a collective trademark (ie, the identification of the business origin of goods and services). The trademark also contravened the protected goods' guarantee function, as its registration had indiscriminately been sought in all classes of the Nice Classification.
Commercial court upholds Nestlé's infringement action of its patents relating to Nescafé Dolce Gusto capsulesSpain | 19 February 2018
In January 2016 Nestlé filed a patent infringement action with a preliminary injunction motion against Fast Eurocafé, which had imported, offered and sold capsules for a beverage compatible with Nestlé's well-known Nescafé Dolce Gusto system. Last month, Barcelona Commercial Court Number 5 upheld Nestlé's patent infringement action against Fast Eurocafé, declaring that claims must be interpreted according to their descriptions.
The next Mobile World Congress will be held in Barcelona from February 26 to March 1 2018. Foreseeing possible conflicts between the companies participating in the event, the Barcelona commercial courts have agreed to adopt a specific protocol which contains effective measures to protect technology patents, industrial designs, trademarks and copyright and defend against unfair competition and unlawful advertising acts in relation to products and materials which are displayed at the event.
In 2017 the EU Trademark Regulation and the Spanish Patents Act entered into force. Both pieces of legislation have affected EU trademark and Community design litigation in Spain, including by extending the deadline to respond to EU trademark and Community design claims and extending the exclusive competence of EU Trademark Courts 1 and 2 of Alicante, among other changes.
A much debated issue among Spanish legal practitioners concerns which party should be held responsible for the costs associated with storing and destroying IP infringing goods which are the object of judicial proceedings. There have been contradictory judgments in criminal proceedings. Recently, some logistics companies have tried to apply this discussion to other jurisdictions.
Barcelona Commercial Court Number 4 recently lifted the preliminary injunctions that it had previously granted ex parte at the request of Gilead against Mylan and Teva for the alleged imminent infringement of Gilead's supplementary protection certificate (SPC) for the combination of tenofovir disoproxil and emtricitabine. The defendants successfully opposed the preliminary injunctions, alleging the invalidity of the SPC and invoking the applicable European Court of Justice case law.
The Catalonia High Court of Justice recently revoked a Spanish Patent and Trademark Office decision which had granted the registration of an industrial design featuring an image of the Camp Nou stadium. The court considered that the alleged ground for refusal to be assessed was whether the design included the prior trademarks owned by Futbol Club (FC) Barcelona. It concluded that the design's registration would lead to a paradox, as the owner could contest FC Barcelona's use of its own image.
The Supreme Court recently acknowledged a US company's legal standing to file claims on the basis of Articles 13 (trade secret infringement) and 14 (misuse of an industrial or business secret) of the Unfair Competition Act. The Supreme Court's interpretation has favourably clarified that active foreign companies doing business in Spain have legal standing to sue for certain acts of unfair competition.
The Barcelona Court of Appeal recently upheld the appeal filed by Sistemas Técnicos de Encofrados, SA against a Barcelona Commercial Court Number 4 order, in which PERI GmbH had successfully opposed the exception of lis pendens (ie, a pending legal action) on the principle of preclusion provided for in the Civil Procedural Act. The court ruled that a rigid and inflexible interpretation of the act, as intended by PERI, is contrary to the right to effective judicial protection provided for by the Constitution.
Barcelona courts lift preliminary injunctions previously granted ex parte in oxycodone/naloxone caseSpain | 02 October 2017
Through two recent decisions, Barcelona Commercial Court Number 4 and Barcelona Commercial Court Number 1 lifted the preliminary injunctions that they had previously granted ex parte in relation to the imminent market launch of two oxycodone/naloxone generic medicinal products. This is the first time that a preliminary injunction has been revoked or refused in Spain based on indicia of invalidity of the asserted patent due to added matter.
The Barcelona Court of Appeal recently confirmed a first-instance decision which had dismissed the patent infringement action filed by Novartis against several generics for alleged infringement of its European patent relating to a therapeutic transdermal system for the administration of rivastigmine. In its decision, the court reiterated the importance of interpreting a claim in light of the description of the patent, which in this case clearly supported the defendants' understanding of its scope.
In 2013 Teva Pharma, SLU and ratiopharm España, SA filed a revocation action challenging the validity of an EU patent due to lack of novelty and an inventive step. In 2015 the Barcelona Commercial Court Number 5 found in the plaintiffs' favour and revoked the relevant patent claims due to lack of an inventive step. The Barcelona Court of Appeal recently confirmed the first-instance decision in its entirety.
The 8th Section of the Alicante Court of Appeal, acting as the EU Trademark Court of Appeal, recently confirmed that the use of third-party trademarks of reputed perfumes to advertise, offer and market so-called 'smell-alike' perfumes amounts to trademark infringement and unfair competition. Notably, the defendant's argument was based on the need to use the trademarks of other perfumes to inform consumers about the fragrance of its smell-alike perfumes.
The EU Trademark Court recently revoked in full the Commercial Court of Alicante Number 1 first-instance judgment, which had dismissed all of the claims filed by H-D USA, LLC (Harley-Davidson) against a third party for its unauthorised use of the Harley-Davidson bar and shield sign to identify and promote its bar restaurant. The court sentenced the defendant to pay Harley-Davidson damages and bear the costs incurred in the first instance.
In January 2016 Nestlé filed a patent infringement action with a preliminary injunction motion against Fast Eurocafé, which had imported, offered and sold capsules for a beverage compatible with Nestlé's well-known Nescafé Dolce Gusto system. Barcelona Commercial Court Number 5 dismissed Nestlé's preliminary injunction motion, holding that the urgency requirement had been undermined. The Barcelona Court of Appeal recently revoked the commercial court's order and granted a preliminary injunction.
In 2016 Novartis sued several companies for the alleged infringement of its EU patent and sought preliminary injunctions to prevent the imminent launch of their valsartan and amlodipine generics. Barcelona Commercial Court Number 4 granted ex parte preliminary injunctions against some of the defendants in December 2016 and January 2017. However, on the defendants' opposition, the court recently revoked the preliminary injunctions.
The new Patents Act, which recently came into force, aims to modernise the Spanish patent system and bring it further into line with EU and international legal frameworks. One of the most notable amendments regarding patent litigation is the introduction and regulation of protective letters in Spain for the first time. As of April 2017, protective letters will be accepted by all competent courts handling patent cases.
Distinctive signs are principally governed by the Trademark Act (17/2001), which replaced the former Trademark Act (32/1988) and was complemented by Royal Decree 687/2002. In 2006 the Trademark Act was further amended by Act 19/2006, which implemented the EU IP Enforcement Directive (2004/48/EC). Civil actions for trademark infringement are comprehensively covered in the Trademark Act, while criminal actions for infringement are defined in the Criminal Code.
The General Council of the Judiciary's agreement which exclusively assigned competence to hear IP matters that arise under the Patent Act 24/2014, the Trademark Act 17/2001 and the Industrial Design Act 20/2003 to certain commercial courts in Catalonia, Madrid and Valencia was recently published in the Official State Bulletin. The agreement has accomplished the long-awaited consolidation of the Spanish commercial courts' specialisations in IP matters.
Barcelona Commercial Court Number 7 recently dismissed in its entirety Niled SAE's and Ridelin's action against Sofamel SL which required Sofamel to cease the manufacture and commercialisation of its TTGA terminals, claiming that they constituted a slavish copy of Niled's TTP terminals and infringed the specific Ridelin patents for which Niled claimed to be the exclusive licensee. The court based this decision on Niled's TTP terminals' lack of competitive singularity.
EU Trademark Court Number 2 of Alicante recently upheld the lawsuit filed against Equivalenza for its use of trademarks belonging to Hugo Boss, Gucci and Lacoste in its sale of alleged smell-alike perfumes. Despite an earlier conviction for third-party trademark use, Equivalenza did not change its business model. Consequently, the court ordered it to cease and desist offering, marketing and promoting its perfumes using the plaintiffs' trademarks, among other things.
Barcelona Commercial Court 4 recently dismissed a preliminary injunction motion filed by medac against Accord in a patent case regarding a particular formulation of the active ingredient methotrexate. The court analysed the patent's inventive step using the cited prior art and concluded that it would have been obvious to a person skilled in the art to optimise the volume of the injection in order to reduce pain by increasing the drug concentration.
A 2014 Tarragona Court of Appeal decision marked a radical departure from the court's former jurisprudence regarding the consumer error theory. Section 16 of the Madrid Court of Appeal and Section 1 of the Lleida Court of Appeal recently followed this trend by maintaining a favourable stance towards the principle that in order to classify a wilful act of trademark counterfeiting as a criminal offence, the end consumer must have been deceived while purchasing the counterfeit product.
The EU Trademark Court Number 2 of Alicante recently upheld a lawsuit against Yodeyma Parfums SL for offering and marketing smell-alike perfumes identified by using comparison lists containing the plaintiffs' well-known trademarks. This decision is clearly in line with the findings of the EU Trademark Courts Number 1 and 2 and the EU Trademark Court of Appeal.
Barcelona Commercial Court Number 4 recently dismissed an action filed against several generic drug companies which alleged infringement of two patents claiming manufacturing processes for the active ingredient drospirenone. The court upheld the defendants' arguments and held that when determining the scope of protection conferred by a patent, claims must be interpreted in light of the patent's description.
Registered trademarks that are cancelled due to non-use in the market should not prevent rights holders of a subsequently registered mark from using it in the same market, as this is not considered to be an infringement of IP rights or an act of unfair competition. In a recent case, the Madrid Court of Appeal recognised a company's right to use its registered CONTINENTE trademark after confirming the cancellation of CONTINENTE trademarks that had previously been registered in the same sector.
The English Cut, SL filed an application for the registration of the EU word mark THE ENGLISH CUT. El Corte Inglés, SA filed an opposition based on the Spanish word mark EL CORTE INGLÉS and two EU figurative marks. The EU General Court recently confirmed the EU Intellectual Property Office First Board of Appeal's decision to grant the registration. This resolution is worthwhile, as few EU General Court decisions consider Article 8(5) of the EU Trademark Regulation.
The Constitutional Court recently upheld in part an action challenging the constitutionality of certain taxes relating to the administration of justice, including those which must be paid in civil and contentious administrative proceedings regarding IP matters. The court considered that the disproportionate values of the taxes violated the fundamental right of citizens to effective judicial protection and deterred them from turning to the courts to exercise this right.
Barcelona Commercial Court Number 1 recently upheld Martin Lloveras SA's claim against Sollich KG in its entirety and nullified Sollich's patent for its lack of inventive step. The decision was reached following the European Patent Office's method for analysing inventive step, which includes determining the closest prior art, establishing the objective technical problem and assessing whether the claimed invention would have been obvious to a skilled person.
Appeal court confirms that use of names similar to well-known ORANGE trademarks constitutes infringementSpain | 24 October 2016
The EU Trademark Court recently confirmed a judgment declaring that the use of a mark as well as corporate and domain names that were similar to the plaintiff's well-known ORANGE trademarks constituted infringement. The court held that the appellant had failed to prove that it had used its names before the registered marks became well known in Spain.
The Barcelona Court of Appeal has issued a judgment confirming the dismissal of a patent infringement action filed by Pfizer against sildenafil generic competitors in Spain. Pursuant to its October 2014 decision in the Escitalopram case, the appeal court has now confirmed its new case law regarding the Agreement on Trade-Related Aspects of IP Rights and pharmaceutical patents filed before October 8 1992.
The General Council of the Judiciary recently reallocated exclusive competence for IP matters – particularly trademark and unfair competition matters – among the various Barcelona commercial courts. The reallocation means that more commercial courts will handle IP-related cases, which is a further step towards the specialisation of the Barcelona commercial courts in IP matters.
The European Court of Justice (ECJ) has resolved the request for a preliminary ruling raised by the Spanish Supreme Court regarding the compatibility of the Spanish system of fair compensation for private copying financed by the general state budget with EU Directive 2001/29/EC. The ECJ found the Spanish system contrary to EU law since it was impossible to ensure that the cost of this compensation was borne by the users of private copies.
The Supreme Court recently dismissed AstraZeneca's extraordinary appeals and confirmed the nullity in Spain of a European patent regarding sustained release formulations of quetiapine, which protected the blockbuster anti-psychotic drug commercialised by AstraZeneca as Seroquel Prolong®.
The Supreme Court has dismissed La Vallesana and Deva's extraordinary appeals for procedural infringement and cassation against a Barcelona Court of Appeal judgment which dismissed the invalidity of Cointreau's International Trademark 553.499, as claimed by the two companies. The appellants claimed that Cointreau's 'naked bottle' mark lacked distinctiveness and had not been used.
Two recent Alicante Community Trademark Court No 2 judgments have confirmed that the use of a well-known third-party mark as a corporate name or as a domain name constitutes trademark infringement. In both cases, the court took into consideration the use of the infringing names – including whether they had been put to real and genuine use – and ordered the infringing parties to modify them or face dissolution.
Madrid Commercial Court Number 8 recently dismissed a preliminary injunction by Actelion against Accord, Sandoz and Kern in a patent case regarding the drug bosentan. The defendants argued that Actelion could not request a preliminary injunction as Barcelona Commercial Court Number 1 had dismissed a previous motion. The Madrid court agreed with the defendants, as there had been no relevant change in circumstances.
The Barcelona Court of Appeal recently confirmed a previous decision of Barcelona Commercial Court No 4, which dismissed a product-by-process patent infringement action filed by Oatly AB against Liquats Vegetals, SA, manufacturer and retailer of oat milk, and certain of its clients. The court stated that, in regard to a product-by-process claim, it was unreasonable to resolve the infringement case in a different way from the validity case.
Due to the intense competitiveness of the mobile communications sector, industrial or intellectual property rights infringements can sometimes arise. In light of this, the Barcelona Commercial Courts have adopted a protocol for exhibitors at this month's Mobile World Congress that suspect infringement of their rights.
The La Coruna Court of Appeal has upheld a first-instance decision sentencing the owner of around 10,000 items of clothing bearing well-known trademarks, used without the holders' consent, which had been seized in its warehouse. The first-instance decision included a prison sentence, a fine and – with respect to civil liability – the payment of damages to the holders of the infringed trademarks.
The Valencia Court of Appeal recently fully upheld a judgment issued by Valencia Trial Court 8 sentencing the managing director of a company for trademark infringement as set out in Article 274 of the Criminal Code, and also sentenced the company for the damages caused.
A recent Alicante Court of Appeal decision is the first time since the landmark European Court of Justice L'Oreal v Bellure judgment that a Spanish appeal court has ruled extensively on the practice of using a third party's perfume trademark to market an allegedly smell-alike perfume. The court found such acts to be unlawful due to trademark infringement and unfair competition.
The new Patent Act (24/2015) was recently published and will come into force in 2017. The purpose of the new act is to modernise the Spanish patent system and bring it further into line with EU and international legal frameworks. The new act makes substantive examination a mandatory requirement for patent registration and amends patent litigation practice in various ways.
The Supreme Court recently revoked a previous decision of the Burgos Court of Appeal and declared the invalidity of Richter Gedeon's European patent which claimed a single dose of 1.5 milligrams of levonorgestrel and its use as an emergency contraceptive. This appears to be the first time that the Supreme Court has revoked a European patent by reversing a previous appeal decision.
A Barcelona commercial court has dismissed a preliminary injunction motion by Warner-Lambert and Pfizer against generics in a patent case regarding pregabalin (Lyrica). The court found no evidence of alleged patent infringement because pregabalin generics cannot be prescribed or dispensed off label, whereas Pfizer's product Lyrica is the only pregabalin drug which can be prescribed and dispensed to treat pain.
A Barcelona court recently dismissed a patent infringement action brought by Novartis against several companies which sell generics of its rivastigmine patches for the treatment of Alzheimer's. The court rejected Novartis's broad interpretation of the claim of its European patent and found that the defendants' products did not infringe it.
The Barcelona Commercial Court No 1 recently dismissed a preliminary injunction motion in a fenofibrate patent case. Abbott had applied for a preliminary injunction against Kern Pharma for alleged infringement of European patents EP1275387 and EP2050445. However, the court found no infringement of the first patent and indications that the second patent was invalid.
Section 15 of the Barcelona Court of Appeal has partially upheld an appeal declaring that the plaintiff's trademark be cancelled for lack of use and that the defendant's trademark was invalid. However, it also found that the plaintiff's revoked trademark had been infringed by the defendant. The case involved a trademark for goods in Class 25, which covers clothing, footwear and headgear.
The Supreme Court recently dismissed Lundbeck's extraordinary appeals in a patent infringement case regarding escitalopram, the blockbuster anti-depressant commercialised by Lundbeck as Cipralex. In its decision the court stated that the obviousness analysis is not necessarily the same when assessing validity (inventive step) and infringement under the doctrine of equivalents.
The Alicante Community Trademark Court No 2 has upheld a suit filed by Carolina Herrera Limited, Puig France SAS, Gaulme SAS and Antonio Puig SA – all part of Spanish perfume and fashion group PUIG – against the Saphir Group and a supermarket chain which offered for sale and marketed perfumes under the brands Saphir, Caravan and IAP, which allegedly smelled like perfumes identified with the plaintiffs' well-known trademarks.
Alicante Commercial Court No 2, acting as the Community Trademark Court, recently declared the validity of the Spanish trademark HOTEL CATALONIA SAGRADA FAMILIA, and its full compatibility with the earlier Community trademark HOTEL SAGRADA FAMILIA. Both marks referenced Sagrada Familia, designed by Catalan architect Antoni Gaudí and Barcelona's most popular monument.
The Barcelona Commercial Court No 5 recently declared the inefficacy in Spain of various product claims of European Patent 0387077, the basic patent on the drug paricalcitol (Zemplar). Among other things, the judgment confirmed that claim 24 of the patent was affected by the Spanish reservation to the European Patent Convention, as it was not a Swiss-type use claim but rather a product claim.
The Valencia Court of Appeal recently sentenced a defendant responsible for the import of counterfeit components and accessories for PlayStation video games. The defendant was responsible for at least seven previous imports involving the retention of counterfeit products by Customs. As the defendant was a regular importer, the appeal court held that the reduced penalty included in the Criminal Code did not apply in this case.
The Supreme Court has departed from its previous doctrine regarding the enforcement of national and international trademarks against third parties owning later trademarks. A mark owner can now prohibit third parties from using its mark or a similar mark in the trade, regardless of whether they hold a later registered trademark – the later mark need no longer be declared invalid first.
Section 8 of the Alicante Court of Appeal, in its capacity as the Community Trademark Court of Appeal, has partially confirmed the position of Mattel Inc against Erjutoys, SL in a case involving trademark and design infringement and unfair competition. The case centred around Mattel's Community trademarks and designs for its MONSTER HIGH dolls.
A new act has come into force which reforms the consolidated text of the Copyright Act, as well as a particular provision of the Civil Procedure Act. The main purpose of the reform is to adapt the Spanish IP legislation to the social, economic and technological changes of recent years, and to bring it into line with EU law.
The Tarragona Court of Appeal recently issued a ruling which marks a radical departure from its former jurisprudence on the consumer error theory. Previously, the court had held that consumer error should exist in order for intentional counterfeiting to merit a criminal penalty. However, the ruling could mark the start of a move towards the abandonment of this theory.
Section 15 of the Barcelona Court of Appeal, which specialises in IP cases, recently upheld the validity of the ABSENTA BAR trademark, which had been challenged by the owner of a local traditional business called Absenta Bar. The invalidation action was based on bad-faith registration and likelihood of confusion, on the grounds that the name of the business was a prior well-known unregistered mark.
The Barcelona Court of Appeal recently confirmed a first-instance decision to invalidate a trademark registered by a Spanish distributor without the consent of the legitimate owner, the holder of a prior Chinese trademark. In its decision, the appeal court reaffirmed that the concept of 'agent or representative' set out in Article 10 of the Trademarks Act must be interpreted broadly.
The Barcelona Court of Appeal recently confirmed the dismissal of a patent infringement action filed by Lundbeck and Almirall against all of the companies commercialising escitalopram generics in Spain. The decision signals a radical change in Spanish case law regarding the World Trade Organisation Agreement on Trade-Related Aspects of IP Rights and pharmaceutical patents.
The Administrative Litigation Chamber (Section Four) of the Supreme Court has sought a preliminary ruling from the European Court of Justice regarding the compatibility of the procedure established in Royal Decree 1657/2012 for paying compensation for private copying under EU law. If the system is found to be contrary to EU law, it will be declared void with erga omnes (towards all) effect.
Barcelona Commercial Court No 1 has upheld a lawsuit filed by Marina Calafat SL against Calafat SA for the invalidation of trademarks and dismissed the infringement counterclaim for infringement brought by Calafat. The court found that Calafat had registered the marks in the knowledge that the sign was used by Marina Calafat and with the purpose of obstructing that use.
The Barcelona Court of Appeal has confirmed that the final revocation by the European Patent Office of a patent which was being asserted in ongoing infringement proceedings in Spain meant that the infringement action had to be dismissed, rather than the litigation simply being terminated because the patent in suit no longer existed.
The Barcelona Commercial Court No 2 has dismissed a lawsuit filed by Fotoprix, SA against Vistaprint España, SL for infringement of the trademarks FOTOLIBRO and FOTOPRIX and for unfair competition. The court also upheld the counterclaim for partial invalidity and partial cancellation of the FOTOLIBRO trademark brought by Vistaprint against Fotoprix in the same proceedings.
The Spanish Home Office has published two reports concerning police interventions relating to the infringement of IP rights in 2013. The report shows a significant increase in interventions related to industrial property rights in 2013: for example, 2,434 punishable acts were detected, an increase of more than 25% compared to 2012.
The Navarra Court of Appeal has dismissed Boehringer's appeal against a judgment of Pamplona Commercial Court No 1 which revoked the Spanish supplementary protection certificate for the combination product telmisartan + hydrochlorothiazide. The appeal court also dismissed Boehringer's appeal against the first-instance rejection of its subsidiary counterclaim for the amendment of the basic patent.
The Spanish Patent and Trademark Office has published the draft new Patent Act. However, before the government and Parliament take further action, certain bodies must give their opinions, including the Economic and Social Council (which has already issued a report commenting on the draft), the General Council of the Judicial Power and the State Council.
The Barcelona Commercial Court 4 has dismissed a preliminary injunction motion filed by Novartis against several generic competitors for alleged infringement of European Patent 2292219B1, which relates to rivastigmine transdermal patches for the treatment of Alzheimer's. The judge rejected Novartis's broad construction of the patent claim.
The Barcelona Commercial Court 4 recently dismissed a complaint filed by Oatly AB against oat milk manufacturer and seller Liquats Vegetals, SA, as well as certain customers of Liquats and sellers of oat milk. Oatly claimed infringement of, among others, the product-by-process claim of its patent related to oat milk and its manufacture.
There has been some debate among the Spanish criminal courts over who should bear the storage and destruction costs for goods infringing certain IP rights which are the object of judicial proceedings and which are retained by Customs under the EU Customs Regulation. Following a variety of contradictory rulings, four new rulings have been issued which signal a change of direction.
The Spanish Community Trademark Court No 1 recently upheld claims for trademark infringement and unfair competition brought by three companies belonging to Spanish perfume and fashion group PUIG. The defendants owned a chain of stores selling perfumes that were allegedly 'smell-alikes' of well-known perfumes, and had used the plaintiffs' trademarks to offer, promote and advertise such products.
The Spanish Community Trademark Court of Appeal has upheld a decision that there was a likelihood of confusion between a trademark used for goods, including sunglasses and the well-known Armani Eagle, and ordering most of the defendants to pay damages to Armani, as well as the court fees. On appeal, the Community Trademark Court of Appeal upheld all of Armani's arguments.
The Barcelona Court of Appeal has issued an order revoking a previous decision which had granted a preliminary injunction requested by Pfizer against sildenafil generics for alleged patent infringement. Sildenafil is the active pharmaceutical ingredient of Pfizer's Viagra drug.
The Barcelona Court of Appeal recently issued a landmark judgment which reversed the first-instance decision and upheld a suit filed on behalf of several music record producers operating in Spain against an internet service provider that provided internet access to an infringer. The court confirmed that intermediaries can be sued where third parties use their services to infringe copyright.
The Barcelona Court of Appeal recently revoked AstraZeneca's European patent which concerned a sustained release formulation comprising quetiapine and a gelling agent, due to lack of inventive step. The main dispute was whether, at the priority date, the skilled person would have been motivated to develop a sustained release formulation of quetiapine. Related proceedings are also pending in other EU countries.
In proceedings brought by Cointreau SA against several parties, the Barcelona Court of Appeal declared that the defendants had taken unfair advantage of the well-known character of Cointreau's international three-dimensional registered trademark, which protects the shape of its liqueur bottle without any other elements (a so-called 'naked bottle'). In doing so, the court revoked the first instance judgment.
The Supreme Court recently dismissed Vorwerk's violation of due process appeal and cassation appeal filed against a Barcelona Court of Appeal judgment which revoked the first instance judgment in a patent infringement case filed by Vorwerk against Taurus. Vorwerk brought the case based on Taurus's commercialisation of the MyCook product.
The Supreme Court recently declared the cancellation of a trademark for the products for which it was registered in Class 33 ("wines, spirits and liquors"), and permitted the trademark to continue in force only for those products for which it was effectively used (ie, orujo products). Orujo is a particular type of strong alcoholic liquor distilled from grape or herb pressings.
The Ministry of Justice has launched a draft bill to amend the Criminal Code, which is being analysed by the Council of the State before it makes its way through Parliament. In its current form, the draft bill includes a set of reforms that will directly and indirectly affect crimes against industrial and intellectual property. Several important proposed changes will have an impact on IP crimes should they be implemented.
In 2012 the European Court of Justice handed down its ruling in the IP Translator case, concerning interpretation of the general indications of the Nice Classification class headings. In the case of a Spanish trademark, the Spanish Patent and Trademark Office will always interpret the terms of the class headings on a literal basis, regardless of whether it was filed before or after IP Translator.
The Supreme Court recently dismissed Ferring's extraordinary appeals in a patent infringement case regarding desmopressin (commercialised by Ferring as Minurin). Ferring had sued Kern for alleged infringement of two European patents related to the production of desmopressin tablets. Kern defended itself by arguing the invalidity of Ferring's patents due to a lack of inventive step.
A Barcelona commercial court recently issued a non-final judgment, dismissing a claim of IP rights infringement, invalidity of trademarks and compensation for damages filed by Pasozebra Producciones SL and Daniel Díez Rodríguez against Nutrexpa SA in relation to animated character 'Benito'. The dispute arose from a transfer of exploitation rights between entities during a change in ownership.
The Barcelona Court of Appeal recently rendered a judgment confirming a Barcelona Commercial decision regarding the infringement of Llaza SA's patent. The judgment partially upheld the appeal filed by defendants Iaso, SA and Bat Accessories Corporation, SL regarding the compensation awarded at first instance.
The Community trademark section of the Alicante Court of Appeal recently issued a court order confirming the grant of preliminary injunctions against several parties in relation to the import and sale of goods adorned with a trademark-protected logo that was similar to Armani's well-known 'eagle' logo. The court stated that the so-called 'thesis of immunity by registration' has been superseded by the most recent case law.
Commercial Court No 4 of Barcelona has upheld a non-infringement action filed by Vileda against Taiwanese company Dikai International Enterprise Co Ltd and Italian company Orlandi SpA, the owner and licensee respectively of Utility Model ES 1069292. As the commercial court upheld Vileda's first petition of non-infringement, it did not analyse the subsidiary petition of invalidity.
The Supreme Court's role in an appeal is to apply the law to facts which have already been established by a trial court. Therefore, analysis of the likelihood of confusion in relation to trademarks is precluded, as it is considered a question of fact. However, a Supreme Court judge recently issued a dissenting opinion in a case which considered potential infringement of the EU Community Trademark Regulation.
The European Court of Justice (ECJ) recently issued a much-anticipated judgment in which it was asked by Alicante Commercial Court No 1 to interpret the EU Community Trademark Regulation. The ECJ held that a Community trademark proprietor must be able to prevent a proprietor of a later Community trademark from using that later mark, thus clarifying that the regulation must be interpreted in light of the priority principle.
The Barcelona Court of Appeal recently accepted an appeal filed by a private prosecutor against a judgment issued by Barcelona Trial Court No 28. At first instance, the defendant had been convicted of a crime against IP rights, but had been acquitted of having to pay compensation to the rights holder. This ruling consolidates in the criminal jurisdiction the jurisprudence adopted by certain Supreme Court judgments.