Intellectual Property, Spain updates

Offering goods or services online may be decisive in determining territorial jurisdiction
Grau & Angulo
  • Spain
  • 05 August 2019

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.

Criminal sentences handed down for sale of IP infringing souvenirs
Grau & Angulo
  • Spain
  • 29 July 2019

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.

Supreme Court recognises Modelo's right to register and use CONTINENTE mark
Grau & Angulo
  • Spain
  • 22 July 2019

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.

Effectiveness of protective briefs in pharmaceutical patent matters
Grau & Angulo
  • Spain
  • 15 July 2019

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.

Exception to exhaustion of trademark rights principle enforceable for non-luxury marks
Grau & Angulo
  • Spain
  • 01 July 2019

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.

Important changes to Copyright Act
Grau & Angulo
  • Spain
  • 24 June 2019

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.

Supreme Court ends pharmaceutical companies' battle over TRIPS Agreement
Grau & Angulo
  • Spain
  • 13 May 2019

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.

Criminal sentence for importers of shoes which infringed adidas trademarks and designs
Grau & Angulo
  • Spain
  • 29 April 2019

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.

Barcelona Court of Appeal confirms validity and infringement of Nescafé Dolce Gusto patents
Grau & Angulo
  • Spain
  • 25 March 2019

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 patent court finds oxycodone and naloxone patent invalid due to added matter
Grau & Angulo
  • Spain
  • 11 February 2019

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.

Criminal sentence for possession of handbags which infringe Robin Ruth Group design
Grau & Angulo
  • Spain
  • 04 February 2019

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.

Courts adopt specific protocol to protect IP rights during MWC 2019
Grau & Angulo
  • Spain
  • 28 January 2019

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.

Barcelona Court of Appeal confirms revocation of ex parte preliminary injunction in NuvaRing case
Grau & Angulo
  • Spain
  • 14 January 2019

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.

Teleshopping ads found to infringe copyright
Grau & Angulo
  • Spain
  • 26 November 2018

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.

Ministry of Culture and Sports fines website owner €375,000 for copyright infringement
Grau & Angulo
  • Spain
  • 19 November 2018

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'.

Criminal sentence handed down for commercialisation of counterfeit FC Barcelona products
Grau & Angulo
  • Spain
  • 12 November 2018

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 signs
Grau & Angulo
  • Spain
  • 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.

Preliminary injunction request dismissed due to prima facie invalidity of asserted SPC
Grau & Angulo
  • Spain
  • 15 October 2018

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.

Criminal sentence for importers of counterfeit t-shirts
Grau & Angulo
  • Spain
  • 30 July 2018

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.

Appeal court stresses importance of drawings for defining a patent's scope of protection
Grau & Angulo
  • Spain
  • 23 July 2018

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.

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