Durán-Corretjer SLP

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.

We are glad to announce that our European Patent Attorney Mr. Oscar Boué has obtained a Diploma on Patent Litigation in Europe from the Milan University (Italy).

Furthermore, our lawyer Ms. Helena Obis has passed the examination to qualify as Industrial Property Attorney.

We congratulate both of them by these achievements that go along the firm’s policy to promote the education and professional qualification of the members of our team with the objective to provide our clients with advise of the highest quality.

Right now, our firm has:

7 Industrial Property Attorneys
4 European Patent Attorneys
3 Attorneys with a Diploma on Patent Litigation in Europe

WHO’S WHO LEGAL prestigious magazine has included Managing Partner Luis-Alfonso Durán as one of the world’s leading practitioner in Patent and Trademark matters.

The nomination takes into account the opinions of law firms and intellectual property experts from around the world which then select the nominees for their outstanding set of skills to handle complex patent and trademark infringement litigation and prosecutions as well as strategic portfolio development on a global scale.

We congratulate our Managing Partner on receiving these prestigious recommendations.

Spanish and European Trade Mark Attorneys Mr. Luis-Alfonso Durán and Ms. Ada Torras provided in the ECTA BULLETIN some basic guidelines to be considered during the opposition trade mark proceedings in Spain following Spain’s implementation of the EU Trade Mark Directive 2015/2436.

You can access the content of the article in the following link:

As of December 30, 2019, companies and designers from Vietnam can begin using the Hague System to protect their industrial designs in respect of all the countries part of the Hague System through a single international application.

Also, foreign companies and designers can seek design protection through the Hague System.

As of January 3, 2020, companies and designers from Israel can begin using the Hague System to protect their industrial designs in respect of all the 88 countries part of the Hague System through a single international application and set of fees.

Also, foreign companies and designers can seek design protection through the Hague System in Israel from January 3, 2020.

On September 25, the European Union Intellectual Property Office (EUIPO) and the European Patent Office (EPO) published a joint study on intellectual property rights showing that those sectors that make intensive use of intellectual property rights generate 45 % of the economic activity of the European Union, giving employment to one in three people in the EU and generating salaries 47 % higher than in other sectors.

This study demonstrates once again that intellectual property assets (trade marks, patents and designs) are of paramount importance for companies and their workers and that their correct protection facilitates and promotes the economic development of all of them.