Durán-Corretjer SLP

The Charter of Fundamental Rights of the European Union and the Spanish Constitution contain a very relevant principle today, especially at a political level: the fundamental principle of the presumption of innocence. Specifically, the Spanish Constitution establishes that all defendants are presumed innocent until proven guilty and legally declared.

In a recent ruling by the General Court of the European Union, it has been analysed and decided that a person's name cannot be registered, even if they have not been declared guilty by a final judgment, in those cases in which the consumer public could associate said name with criminal activities and, consequently, be contrary to to public policy and to accepted principles of morality.

On April 17, the General Court of the European Union issued a judgment in Case T-255/23 refusing registration of the European Union trade mark No. 18568583 “PABLO ESCOBAR” (word), for various goods and services in classes 3, 5, 9, 10, 12 to 16, 18, 20, 21, 24 to 26 and 28 to 45.

In the aforementioned judgment, the Court indicated that the absolute prohibition of registration of Article 7.1.f of the European Union trade mark Regulation (hereinafter, EUTMR), which prohibits the registration of trade marks contrary to public order or morality, was applicable to the trade mark application in question. In reaching this conclusion, the Court focused on the perception of the sign “PABLO ESCOBAR” which, , would be associated with the figure of the leader of the Medellin cartel and alleged narco-terrorist, as well as the crimes committed by the aforementioned cartel, which were contrary to the ethical and moral principles of the society of all Member States of the European Union. In addition, the public would perceive the trade mark as highly offensive, as an apology for crime and a trivialization of the suffering of thousands of people killed or injured by the Medellin cartel.

In this regard, it should be noted that, as the applicant for the trade mark pointed out at the time, Pablo Escobar was never convicted of the alleged crimes he was accused of, as he died at the hands of the police before he could be tried. In addition, the EUTMR itself, in Recital 21, establishes that said Regulation must be applied in such a way as to guarantee full respect for fundamental rights and freedoms. In this case, and despite the provisions of the previous paragraph and the provisions of Article 48 of the Charter of Fundamental Rights of the European Union on the presumption of innocence, the Court concluded that the trade mark should be refused because it fell within the prohibition of Article 7.1.f EUTMR, even though Pablo Escobar had not been convicted by the courts, since the determining factor for the application of said article was the perception that the relevant public might have of his figure, which would associate the sign “PABLO ESCOBAR” with the name of the leader of the Medellin cartel and a symbol of organised crime that had caused much suffering. This interpretation by the Court opens the door to possible refusals of trade marks consisting of names of people, especially political or public figures, who may be associated by a part of the public with certain criminal behaviour despite the fact that no final conviction has been handed down against them, in those cases in which it can be proven that the public could perceive such actions as contrary to public policy and to accepted principles of morality, taking into account their level of sensitivity and tolerance at the time the trade mark application was made.

We are pleased to announce that DURÁN-CORRETJER has been recognized once again by the Financial Times and Statista in their special report “Europe's Leading Patent Law Firms 2024” as one of the best Patent Law firms in Europe, consolidating its leadership position in the sector. This is the second consecutive year in which the firm has received this distinguished recognition.

As a novelty compared to the previous year, DURÁN-CORRETJER has been especially highlighted in the area of Biotechnology, Food & Healthcare, in addition to other technical areas.

Recognition Areas:

• Biotechnology, Food & Healthcare
• Mechanical Engineering
• Chemistry
• Electrical Engineering
• IT and Software

This new recognition is a testimony to the dedication, effort and experience of the team of Industrial Property Agents, European Patent Agents and Attorneys of the firm during the 122 years of experience of DURÁN-CORRETJER and reinforces its firm commitment to continue offering all its clients a first-level advisory service as well as guaranteeing a deep understanding of the evolution and complexities of the sector.

On May 24, 2024 the Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge was approved by WIPO, establishing a new disclosure requirement for patent applicants whose inventions are based on genetic resources or associated traditional knowledge.

This Treaty provides that when an invention claimed in a patent application is based on genetic resources or traditional knowledge associated with genetic resources, each Contracting Party shall require applicants to disclose the country of origin or source of the genetic resources, the Indigenous Peoples or the local community who provided the traditional knowledge, as appropriate.

This Treaty seeks to protect inventions developed from genetic resources contained, among others, in medicinal plants, agricultural crops and animal breeds, or linked to traditional knowledge through their use and conservation by Indigenous Peoples and local communities.

We are pleased to announce that Durán-Corretjer has once again been included in the list of leaders in Spain within the Intellectual Property category. Indeed, Luis-Alfonso Durán and Christian Durán have been recognized as leaders in Spain within the trade mark category. Likewise, Luis-Alfonso Durán continues to appear in the ranking of highly recommended professionals within the patent category.

This prestigious recognition highlights our commitment to excellence and the highest quality in the field of Intellectual Property.

We are congratulated with this new recognition and are committed to continuing to offer a service of the highest quality to all our clients.

On May 3, 2024, Qatar deposited its instrument of accession to the Madrid Protocol for the international registration of trade marks.

This Protocol will enter into force on August 3, 2024. From this date it will be possible for companies and trade mark owners that export their products and/or provide services in Qatar to request the protection of their trade marks through this international registration system.

On the occasion of the celebration of Intellectual Property Day, the World Intellectual Property Organization (WIPO) has emphasized the importance of taking into account the Sustainable Development Goals (SDGs) due to the interconnection that exists with Intellectual Property, specifically, with regard to those innovative and creative solutions which must be aligned with social, economic and environmental sustainability objectives.

For this, on a day as important as today we want to join this declaration, advocating, as the WIPO points out, that Intellectual Property be an instrument that allows us to increasingly have a sustainable world.

The General Court has confirmed the decision of the European Union Intellectual Property Office (EUIPO) of 11 August 2022, Handelsmaatschappij J. Van Hilst (‘HJVH’) by virtue of which it declared the invalidity of a Puma’s Community design for sports shoes due to a prior disclosure.

In this regard, the shoes, which had been registered in August 2016, were disclosed by Robyn Rihanna Fenty (‘Rihanna’) on Instagram by showing a prior design with the same features as the registered design 12 months before the application for registration was filed.

Therefore, it was considered that the prior design had been made public, which justified the invalidity of the registered design.

This decision showcases how important is to coordinate marketing and sales strategies with IP strategies, which should always be hand-in-hand.

The Judges of the Commercial Courts of Barcelona (Commercial Court of Barcelona and the Judges of the Commercial Courts of Alicante (Trademark Courts of the European Union) in their joint meeting on November 24, 2023, have adopted a Protocol on-call service and rapid response between the days of February 26 to February 29, 2024, on the occasion of the celebration in the city of Barcelona of the Mobile World Congress, the most important world congress in the communication and mobile telephony.

This Protocol is provided for those cases of possible conflicts between the companies participating in this event that could give rise to a request for precautionary measures, the objective being to avoid as much as possible adopting said measures without hearing the defendant; and at the same time, to guarantee the adoption of effective measures to protect their industrial and intellectual property rights.

Among the measures that have been adopted, reference is made to the preferential and priority processing of preliminary proceedings petitions and/or verification of facts proceedings, urgent precautionary measures (with or without a hearing), the commitment to resolve within a period of two days (48 hours) the requests for interim injunctions petitions and/or verification of facts proceedings, to resolve on the same day of their presentation (24 hours) the admission of requests for protective letters and to adopt, ex officio or at the request of a party, the specific measures necessary to preserve the confidentiality of information that may constitute a trade secret and the adoption and extension of the immediate execution of precautionary measures and/or urgent preliminary proceedings /or verification of facts proceedings to acts carried out in the metaverse or in virtual environments or to acts generated by automated mechanisms, software, algorithms or artificial intelligence systems.

Last November 13, 2023 and December 14, 2023 the Government of Greece and Italy respectively deposited their instrument of accession to the 1999 Geneva Act of The Hague Agreement bring the total number of Contracting Parties to the 1999 Geneva Act to 73.

The Geneva Act (1999) of The Hague Agreement Concerning the International Registration of Industrial Designs is set to take effect in Greece on February 13, 2024, followed by Italy on March 14, 2024.

The recent judgment of the Third Chamber of the General Court in Case T-679/22, of November 22, 2023, confirms that although the registration of a licence is not mandatory by law, in practice it is of the utmost importance to apply for the registration of the licence as soon as possible, since failure to do so entails the risk that at a later stage it may not be possible to register the licence (if, for example, the trade mark which the licence relates to is assigned to another company which has not signed the licence agreement) and an unregistered licence has no effect vis-à-vis third parties.

Therefore, although registration of licences is not compulsory, de facto it is very important for licensees to apply for registration of licences in the Register as soon as possible in order to safeguard their rights and avoid future problems.

If you have any questions regarding this matter, please do not hesitate to contact our offices and we will be pleased to assist you.