Durán-Corretjer SLP

We are proud to inform that, once again, our firm has been selected as a leader firm in Spain for Patents in 2020 and included in the Who's Who Legal Patents list after the worldwide consultation with the opinions of law firms, clients and patent experts around the world conducted by the British publisher Law Business Research, Ltd.

On May 15, 2020, the Government of the Republic of Mozambique deposited its Instrument of Accession to the Banjul Protocol on Trademarks with the African Regional Intellectual Property Organization (ARIPO).

The Banjul Protocol allows applying for single trademark application covering the following countries: Botswana, Lesotho, Liberia, Malawi, Namibia, São Tomé and Príncipe, Swaziland, Tanzania, Uganda and Zimbabwe.

Mozambique will be eligible for designation under de Banjul Protocol as from 15 August 2020.

Please be informed that the European Union Intellectual Property Office (EUIPO) will not extend time limits beyond the 18th May 2020. Therefore, all time limits due between March 9th 2020 and May 18th 2020 will be considered as finalized on May 18th 2020.
On the other hand, the European Patent Office (EPO) will extend further all time limits due on or after March 15th 2020 until June 2nd 2020.
Finally, as from June 1st 2020 all deadlines vis-à-vis the Spanish Patent & Trade Mark Office (SPTO) due on or after March 14th 2020 will be resumed and recalculated by adding the equivalent period of time for which they were suspended.

Despite the ongoing situation created by the worldwide expansion of the COVID-19 pandemic, impacting as well in Europe and also in Spain, our firm has taken all the appropriate measures in order to ensure that we can maintain operating our business as usual, monitoring all the procedures with the different Offices, complying with all due dates and providing a quick, efficient and high quality services to our clients.

On February 17 and 18, INTA’s European annual conference entitled Brands, Sports, and Esports: A Brand (R)evolution took place in Madrid, in which more than 250 professionals of the sector from more than 40 countries around the world discussed the current issues in the sports and e-sports sector related to brands and intellectual property.

Among the different sessions that were organized, highlight the one related to best practice for effective sponsorship agreements and related legal issues, such as the prevention of ambush marketing and its mitigation, in which Christian Durán had the opportunity to participate as a speaker.

On February 6 and 7, 2020, the AIPPI Annual Conference on Industrial and Intellectual Property was held in Madrid in which various topics were discussed such as the recent jurisprudence regarding designs and trade marks, the proof of use within administrative and judicial procedures, the patentability of computer simulations or the conflicts between trademarks and designations of origin.

On the other hand, it should also be noted that the AIPPI General Meeting elected Mr. Christian Durán as new Board Member of the Spanish Group of AIPPI, thereby terminating his previous duties as Secretary-Accountant of the Spanish Group of AIPPI.

During the month of February and during the MOBILE WORLD CONGRESS dates, the Board of Judges of the Commercial Courts of Barcelona -for the sixth consecutive year- and the Board of Judges of the Commercial Courts of Alicante (European Union Trade Mark Court) -for the second consecutive year- have adopted a protocol for on-call service and rapid action contemplating, among others, the following measures:

a) To give preferential and priority treatment to interim injunctions petitions and/or verification of facts proceedings concerning patents and technological innovations and industrial designs that are to be launched at the Mobile World Congress, as well as infringement of trade marks and intellectual property rights, defence of competition and acts of unfair competition and illicit advertising in respect of products and materials that are the exhibited or displayed at the Congress.

b) To give preferential and priority to urgent precautionary measures (with or without a hearing) concerning patents, technological innovations and industrial designs which are to be launched at the Mobile World Congress; as well as infringement of trade marks and intellectual property rights; defence of competition and acts of unfair competition and illicit advertising, in respect of products that are the exhibited or displayed at the Congress.

c) To commit to issue a decision within a period of two days (48 hours) to requests for interim injunctions and/or verification of facts proceedings. And, within the same 48-hour period, requests for interim injunctions without a hearing of the defendant, from the moment they are submitted before the court; and a maximum period of ten days for the decision of precautionary measures with a hearing, from the moment they are submitted before the court, provided that a protective letter has been filed.

d) In the event of a conflict in industrial or intellectual property matters with another company, and in view of the reasonable fear of being the subject of an interim injunctions without a hearing, to decide on the same day (24 hours) whether to admit such interim injunction. The admission and immediate decision of the same is done with the aim of avoiding, as long as possible, the adoption of interim injunctions without a hearing of the defendant, which will allow, first, that he can expose his allegations and, second, his availability to appear before the Court immediately to decide on any request for precautionary measures without a hearing.

e) In order to assess the urgency referred to in Article 733 LEC in the adoption of an interim injunction without a hearing, unless this could jeopardize the good end of the precautionary measure, the prior behavior of the plaintiff and the speed with which he has reacted to the knowledge of the possible infringement will be decisive. In this connection, it shall be important that the application for an interim injunction has been filed with sufficient time that in good faith it does not reasonably prevent the defendant from being heard, when the owner of the allegedly infringed right has had prior knowledge of the possible infringement and has been able to submit his application with sufficient time.

f) 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 has been submitted in proceedings relating to the violation of trade secrets or in other proceedings in which its consideration is necessary for a decision on the merits. All this is within the framework of the new Trade Secrets Act 1/2019 of 20 February and Directive (EU) 2016/943 of the European Parliament and Council of 8 June 2016 and in accordance with the special Protocol for the protection of trade secrets approved by the Barcelona Commercial Court for this purpose.

g) The Commercial Court of Barcelona shall carry out the immediate execution of the precautionary measures and/or urgent proceedings which, within the scope of its specific jurisdiction, are ruled on by the European Union Trade Mark Court of Alicante in matters of European Union trade marks and Community designs, thus guaranteeing the effectiveness of the decisions adopted. To this end, the relevant channels of communication and cooperation between the two Courts shall be established.

On January 29, 2020, the European Parliament ratified the terms of the Withdrawal Agreement previously approved by the United Kingdom Parliament and sanctioned by the Queen on January 23, 2020. As a result of the above, the United Kingdom will leave the European Union on January 31, 2020.

Although the Withdrawal Agreement provides that as of  February 1, 2020 the United Kingdom will cease to be a member of the European Union, there will be a transitional period as from the date of departure (February 1, 2020) until December 31, 2020 (subject to further extensions) in which the United Kingdom will continue to apply all the rules of the European Union. During this transitional period, the European Union and the United Kingdom will negotiate a new Trade Agreement.

With regard to Industrial Property rights, there will be changes, among other aspects, in connection with Patents, European Union Trademarks and Community Designs in accordance with the provisions of the Withdrawal Agreement as well as with respect to what the parties may agree on a future Trade Agreement.

We are at the entire disposal of our clients to provide our legal advice and guidance on any matter related to this new situation.
 

A recent amendment to the Italian Intellectual Property Code will allow, as of July 1, 2020, to open an Italian national phase through a PCT patent.

To date, the only way to obtain the protection of an Italy patent via a PCT patent was by first applying for a European patent, which had to be subsequently validated in Italy.

This change equates the process to that of other European Union countries, including Spain, and facilitates the process of obtaining an Italian patent, assuming a reduction in costs and time for obtaining national patents.

Last 27 December 2019 The Malaysia Trademarks Act 2019 came into force.

The new Act foresees the accession to the Madrid Protocol which will allow trade mark owners in Malaysia to seek protection of their trade marks in up to 122 countries by filing one application with a single set of fee. Also foreign companies will have now the possibility to designate Malaysia in their international trade mark applications made through the Madrid Protocol.

On the other hand, the new Act allows applying for a multi-class protection of a trade mark in a single application to cover goods different goods and services and the possibility to register non-traditional trademarks, such as colors, sounds, scents, holograms, positioning, shapes of goods or their packaging and sequence of motions.

Finally, it is worth noting that the Act includes now the possibility to expand the scope of trademark infringement by allowing registered proprietors of a trademark to bring an action for infringement for goods and services that are similar to the goods and services claimed under the registered mark.