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Intellectual Property

European Union

Overview
Including: Trademarks; Designs; Patents; Copyright.

In a recent judgment the European Court of First Instance decided on the capacity of the three-dimensional shape of the well-known Lego toy brick to be protected as a trademark. It applied Article 7(1)(e)(ii) of the Community Trademark Regulation, which provides an absolute ground of refusal for signs which consist exclusively of the shape of the product needed to obtain a technical result.

Spain

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.

Barcelona Commercial Court No 4 recently dismissed an action filed by Lundbeck against companies that commercialise escitalopram generics, for alleged infringement of the supplementary protection certificate (SPC) derived from the basic patent. Lundbeck filed a revised translation of the patent in 2006. However, the court concluded that the SPC continues to confer a process protection only – not a product protection.

The Spanish Community trademark court, diverging from previous case law on immunity through registration, has rejected a claim that a defendant's later trademark constituted grounds to exclude the prima facie analysis of trademark infringement in the interim injunction proceedings. It remains to be seen whether the European Court of Justice will follow suit when considering the same issue.

In a recent case the Supreme Court accepted an extraordinary appeal for procedural infringement filed by Vileda, and rejected an extraordinary appeal for procedural infringement and a cassation appeal filed by Spontex. Vileda had filed a lawsuit for infringement of its utility model for a "device for fitting together a handle with a cleaning device".

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