Durán-Corretjer SLP

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.

On October 5, 2023, the European Patent Office (EPO) celebrated the 50th anniversary of the European Patent Convention, an agreement that was signed on October 5, 1973 and through which the European Patent Organization and the European Patent Office (EPO).

To commemorate this historical milestone, the EPO had the participation, among others, of King Willem-Alexander of the Netherlands; Ursula von der Leyen, President of the European Commission; Rumen Radev, President of Bulgaria; and Olaf Scholz, Chancellor of Germany.

Likewise, on the occasion of the anniversary, the EPO took the opportunity to present the Observatory on Patents and Technology, a public-private forum to address new trends and technologies in intellectual property and face future challenges.

The European Parliament approved by legislative resolution of September 12, 2023 the proposal for a Regulation of the European Parliament and of the Council on the protection of geographical indications of craft and industrial products thanks to the political agreement reached with the Council of the EU last May.

It will now be up to the Council of the EU to formally approve said Regulation, which will enter into force 20 days after its publication in the Official Journal of the EU and will be applicable within two years from the aforementioned publication.

The objective pursued by the adoption of this new Regulation is to uniformly protect geographical indications designating craft and industrial products with a given quality, reputation or other characteristic linked to their geographical origin.

We are proud to announce that DURÁN-CORRETJER, S.L.P.  has been recognized by clients and peers as one of the Europe’s Leading Patent Law Firm for 2023.

The total overall list of 177 recommended firms offer services of patent attorneys for different areas of industrial expertise, namely chemistry & pharmaceuticals, electrical engineering & physics, mechanical engineering, biotechnology, food & healthcare, materials & nanotechnology and IT & Software.

They were ranked in three classes: gold (very frequently recommended), silver (frequently recommended) and bronze (recommended).

In this regard, DURÁN-CORRETJER, S.L.P. was listed silver under the Electrical Engineering & Physics category and bronze under the IT & Software category.

Christian Durán, member of the Law Committee and Membership Committee, attended to the 41st ECTA Annual Conference on June 28th, 29th and 30th and July 1st, 2023.

During the conference, several interesting topics were discussed, such as the reform of the Designs Directive and Regulation on Community Designs or the convergence projects CP13 (trade mark applications made in bad faith) and CP14 (trade marks contrary to public policy or accepted principles of morality).

On March 1st, the transitional period for the implementation of the Unified Patent Court (hereinafter referred to as the UPC) began. Only European Patent Attorneys who have passed a special qualification examination in European Patent litigation may act as representatives before this Court.

We are pleased to inform that three European Patent Attorneys of our firm, who have passed such qualification certificate, have already been registered as representatives before the above mentioned UPC, and therefore our firm is already qualified to act as representative before this new international Court.