Durán-Corretjer SLP

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.

On January 1, 2024, the 12th version of the Nice International Classification of Goods and Services applicable to the registration of trade marks will come into force, incorporating changes with respect to the previous version.

Consequently, new international trade mark applications that have an application date of January 1, 2024 or later will be subject to the new classification.

According to a Notice from the European Patent Office (EPO) dated 7 November 2023, the EPO will accelerate opposition proceedings in cases where an infringement action in respect of a European patent with unitary effect ("Unitary Patent") take place before the Unified Patent Court or a European patent before a national court of a contracting state. This accelerated processing may be requested by a party to the opposition proceedings.

The EPO will also accelerate the processing of the opposition if it is informed by the Unified Patent Court (UPC) or by a national court or competent authority of a contracting state that infringement actions are pending. Where parallel opposition proceedings are accelerated, the opposition division will make every effort to issue the next procedural action (e.g. communication, summons to oral proceedings) within three months of receipt of such information or the party's request. Requests from the parties to extend time limits over and above the normal period or to postpone oral proceedings will only be granted in exceptional, duly substantiated cases.