Latest updates

Barcelona patent court upholds valsartan-amlodipine patent invalidity
Grau & Angulo
  • Intellectual Property
  • Spain
  • June 18 2018

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 generics
Grau & Angulo
  • Intellectual Property
  • Spain
  • June 11 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.

Criminal sentence handed down for sale of counterfeit shoes
Grau & Angulo
  • Intellectual Property
  • Spain
  • May 21 2018

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.

Results of Barcelona commercial courts' MWC 2018 protocol
Grau & Angulo
  • Intellectual Property
  • Spain
  • May 14 2018

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 patent court revokes preliminary injunction granted ex parte in NuvaRing case
Grau & Angulo
  • Intellectual Property
  • Spain
  • May 07 2018

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.

Supreme Court confirms revocation of collective trademark BARCELONA
Grau & Angulo
  • Intellectual Property
  • Spain
  • April 30 2018

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 capsules
Grau & Angulo
  • Intellectual Property
  • Spain
  • February 19 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.

Courts adopt specific protocol for protecting IP rights during MWC 2018
Grau & Angulo
  • Intellectual Property
  • Spain
  • February 12 2018

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.

Storage costs generated by deposit of counterfeit goods
Grau & Angulo
  • Intellectual Property
  • Spain
  • February 05 2018

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.

Changes to Spanish EU trademark and Community design litigation
Grau & Angulo
  • Intellectual Property
  • Spain
  • February 05 2018

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.

Preliminary injunctions revoked due to prima facie invalidity of Truvada SPC
Grau & Angulo
  • Intellectual Property
  • Spain
  • January 08 2018

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.

FC Barcelona prevents registering of industrial design featuring image of Camp Nou
Grau & Angulo
  • Intellectual Property
  • Spain
  • November 20 2017

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.

Supreme Court rules on foreign companies' legal standing to sue for trade secret infringement
Grau & Angulo
  • Intellectual Property
  • Spain
  • October 30 2017

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.

Court of appeal maintains flexible interpretation of preclusion principle in patent invalidity case
Grau & Angulo
  • Intellectual Property
  • Spain
  • October 23 2017

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 case
Grau & Angulo
  • Intellectual Property
  • Spain
  • October 02 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.

Barcelona Court of Appeal confirms non-infringement of Novartis's rivastigmine patch patent
Grau & Angulo
  • Intellectual Property
  • Spain
  • September 18 2017

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.

Barcelona Court of Appeal confirms invalidity of Roche's valganciclovir patent
Grau & Angulo
  • Intellectual Property
  • Spain
  • September 04 2017

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.

EU Trademark Court of Appeal rules on smell-alike perfumes
  • Intellectual Property
  • European Union
  • July 31 2017

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.

Harley-Davidson wins battle against bar restaurant over well-known bar and shield sign
  • Intellectual Property
  • European Union
  • July 24 2017

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.

Nestlé obtains preliminary injunction for infringement of Nescafé patents
Grau & Angulo
  • Intellectual Property
  • Spain
  • July 17 2017

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.

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