A recent European Court of Justice judgment is good news for EU designers as it confirms what has already been stated by some Spanish courts – namely, that a design need not have artistic merit, aesthetic value or a particular visual attraction to qualify for copyright protection. Although the judgment was issued in response to a ruling by the Portuguese courts, it will undoubtedly have clear consequences throughout the European Union. This article examines the decision in view of the Spanish legal framework.
The Madrid Court of Appeal recently confirmed a Madrid Trial Court Number 11 decision which had sentenced a Spanish resident of Chinese origin to five months' imprisonment for the possession of 9,317 counterfeit items of clothing – including t-shirts which infringed FC Barcelona's IP rights – for commercial purposes. The appeal court also confirmed the trial court's order of a fine, additional penalties, civil liability payments and compensation for legal costs.
Grifols, SA filed a lawsuit before the Barcelona courts against Algoritmos Procesos y Diseños, SA (APD) for infringement of a patent which protected a blister pack handling machine. Once the lawsuit was admitted, APD filed a declinatory plea due to lack of territorial jurisdiction. However, the court rejected APD's plea and pointed out that this was a case of forum choosing (rather than forum shopping) which illustrates the importance of patent owners' right to choose.
Valencia Criminal Court Number 15 recently convicted the managers of a company operating in the souvenir industry for a crime against IP rights in accordance with the Criminal Code. In its decision, the court rejected the defendants' allegations of defencelessness, deeming that both the objective and subjective elements of Article 273 of the Criminal Code had been met based on the expert report and the raid conducted against the defendants in 2009.
The Supreme Court recently declared a Madrid Court of Appeal judgment to be final, confirming the cancellation of Carrefour's CONTINENTE trademarks and recognising Modelo's right to register and use its CONTINENTE mark in Spain. The decision supports the previous case law criterion that protection cannot be sought for trademarks which are no longer used on the market.
In order to better understand the usefulness of protective briefs, this article examines some recent cases that show that protective briefs can, in certain cases, reduce or even eliminate the risk of an ex parte preliminary injunction and the inconveniences associated therewith.
The Barcelona Court of Appeal recently revoked a judgment which had dismissed all of the claims filed by the owner and licensee of the MUSTELA trademark against its former distributor and various other companies. Notably, the court stated that EU doctrine and Spanish case law provide for an exception to the exhaustion of trademark rights principle with regard to luxury trademarks. However, this does not rule out the application of this exception to other trademarks in particular selective distribution cases.
In March 2019 the Copyright Act was amended to bring Spanish copyright law into line with that of the European Union. In addition, the reform has reinforced the rights of authors and publishers, introduced new regulations on the functioning of collecting societies in order to increase the transparency and control of their operations in favour of authors and strengthened the regulations on combating piracy.
The Supreme Court recently rejected the extraordinary appeals filed by Pfizer against a Barcelona Court of Appeal judgment, confirming the dismissal of a patent infringement action against sildenafil generics competitors in Spain. This decision represents the end of a long battle regarding the interpretation of Articles 27 and 70 of the Agreement on Trade-Related Aspects of Intellectual Property Rights and their alleged impact on the prohibition on patent chemical and pharmaceutical products as such.
The Valencia Court of Appeal, acting as a trial court, recently sentenced two defendants to one-and-a-half years in prison for importing thousands of pairs of counterfeit shoes for commercial purposes. The court also ordered the defendants to pay a fine, procedural costs and damages and destruction costs. This is one of the first judgments to be issued by an appeal court acting as a trial court in an IP criminal case.
The Barcelona Court of Appeal recently confirmed the Barcelona Commercial Court Number 5 decision which had declared two Nestlé patents to be valid and infringed by Fast Eurocafé SA. Considering the importance of the Nescafé Dolce Gusto system for Nestlé and the increased interest among competitors in commercialising compatible capsules, this judgment is of paramount importance.
Barcelona Commercial Court Number 4 recently dismissed a patent infringement action brought by Mundipharma against two generics of its oxycodone and naloxone medicinal product for the treatment of pain (Targin) and upheld the defendants' counterclaim that the asserted patent was invalid. Among other things, the court held that the patent's claims amounted to an inadmissible generalisation because they omitted essential elements of the invention as disclosed in the application as filed.
The Arenys de Mar Trial Court Number 1 recently convicted the defendant in a case involving handbags which infringed a Robin Ruth Group (RRG) design for a crime against intellectual property. Notably, in May 2013 the defendant had signed a settlement agreement with the RRG following the seizure of hundreds of products which infringed other RRG designs in which it had undertaken not to infringe in future either those designs or any other designs owned by the RRG.
The next Mobile World Congress (MWC) will be held in Barcelona in February 2019. Foreseeing potential conflicts between the participating companies, the panel of judges of the Barcelona commercial courts has agreed – for the fifth consecutive year – to adopt 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 which are displayed at the MWC.
The Barcelona Court of Appeal recently confirmed the revocation of the preliminary injunction granted ex parte at the request of Merck Sharp & Dohme (MSD) for the alleged infringement of its NuvaRing patent. The court confirmed that an assessment of disputed facts in this context does not require certainty, but rather probability. Therefore, MSD's appeal was deemed to be groundless as it alleged an infringement of the rules of the burden of proof, which – in reality – did not apply.
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.
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.