The Barcelona Court of Appeal recently issued a judgment confirming the invalidity of Gilead's supplementary protection certificate (SPC) for the combination of tenofovir disoproxil + emtricitabine, thus upholding a first-instance decision favourable to generic competitors Teva and Mylan. The matter has been followed in Europe, where the UK Patents Court referred a question to the Court of Justice of the European Union, which issued a judgment on the interpretation of the requirement under the EU SPC Regulation.
In light of the European Court of Justice's (ECJ's) decision in Cofemel, copyright protection for fashion designs is now more feasible in Spain. However, it remains to be seen how the Spanish courts (in particular, the Supreme Court) will apply the main teachings and caveats of this ECJ judgment in practice in the field of fashion.
The health crisis caused by the rapid spread of COVID-19 led to the approval and entry into force in Spain of Royal Decree 463/2020 on 14 March 2020, which declared a state of alarm. The situation led to the adoption of measures in the judicial and administrative areas. This article highlights the measures of interest for IP owners and practitioners that are adapting to the progressive changes in the situation.
Barcelona Commercial Court No 1 recently refused to grant a preliminary injunction requested by Sanofi against Mylan in relation to an insulin glargine biosimilar product. Sanofi had filed for a limitation of the patent claims in the main proceedings on the merits running parallel, but the court concluded that such an amended form of the patent could be neither asserted nor taken into account in the preliminary injunction proceedings, which had been initiated before based on the patent as granted.
The Barcelona Court of Appeal has confirmed a criminal sentence of six months' imprisonment, a fine and compensation of legal costs for the possession of 240 round bags which infringed the famous Robin Ruth Group design. The judgment follows from a trial court's decision to issue a condemnatory sentence based on Article 273.3 of the Criminal Code.
Barcelona Commercial Court No 6 recently dismissed an action for trademark infringement brought against Hilfiger Stores Spain, SL and upheld its counterclaim, declaring partial revocation for non-use of the plaintiff's Spanish trademark registered for clothing, footwear and hats (Class 25) and leaving it registered exclusively for occasion hats and women's formal party hats.
The Barcelona Court of Appeal recently issued two decisions confirming the refusal of the preliminary injunctions that AstraZeneca had requested to prevent the commercialisation of fulvestrant generics by Teva and ratiopharm for alleged infringement of AstraZeneca's patents. The court confirmed the refusal by concluding that there was not enough urgency, whereas serious doubt remained over the validity of the patents at stake.
A new edition of the Mobile World Congress (MWC), the world's largest and most important event in the mobile communications industry, will be held in Barcelona from 24 to 27 February 2020. Foreseeing possible conflicts that may exist between the participating companies, a specific protocol of guard service and fast action will be adopted to protect (among other things) technology patents, industrial designs and trademarks in relation to products and materials which are on display at the MWC.
The Barcelona Court of Appeal, following European Court of Justice case law regarding the exhaustion of the trademark rights, recently declared that Red Paralela SL and Red Paralela BCN SL had infringed Schweppes International Limited's Spanish trademarks by importing and commercialising in Spain Schweppes-branded tonics which had been manufactured in the United Kingdom by Coca-Cola/Atlantic Industries, the owner of the UK SCHWEPPES trademarks.
In July 2019 the Oviedo Court of Appeal confirmed a trial court decision which had found the defendant guilty of copyright infringement, sentenced him to six months' imprisonment and ordered him to pay the plaintiff's court costs and damages of an amount to be determined during the enforcement of the sentence on grounds of civil liability. In reaching its decision, the court highlighted the multiple contradictions in the defendant's allegations and confirmed the value of the evidence.
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.