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.
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.
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.
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.
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.
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.
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.