Durán-Corretjer SLP

Last May 29, Durán-Corretjer received in its offices the group of American undergraduate students who are part of the program THE LEX FELLOWSHIP and prepared a real case in trade marks to analyze it jointly.

The purpose of the THE LEX FELLOWSHIP program is to approach students to the different branches of Law through the presentation and resolution of a case study so that they can become familiar with the different branches of Law.

Through the case study, the students first had the possibility to analyze it according to the facts and the applicable legislation and then discuss it with the attorneys of the firm jointly, each contributing their point of view on it.

Without any doubt this was an enriching experience for both parties that we will repeat again.
 

Between May 18 and 22, Mr. Christian Durán participated in the annual meeting of the INTA (International Trade Mark Association) that took place in Boston (Massachusetts).

In these meetings, the professionals of the sector attend various presentations to discuss current issues in the world of Industrial and Intellectual Property.

In this edition and as regards brands, current issues such as the Blockchain, the current situation of Brexit, the protection of customer data, artificial intelligence or the value of brands were discussed.

As you are aware,  European Union Trade Marks (EUTMs) can be converted into Spanish Trade Mark Applications when the EUTM has been rejected, withdrawn or it has ceased to have effect. For example, when a EUTM has been rejected on grounds of earlier rights that are not protected in Spain. The request must be filed within 3 months from the date on which the decision has become final or within 3 months from the date on which the EUTM application has been withdrawn or it has ceased to have effect.
Up to now, when the applicant requested the conversion of a EUTM at the EUIPO for Spain indicating the name of a Spanish representative, the Spanish Patent and Trade Mark Office (SPTMO) used to inform the Spanish representative of the assigned Spanish number and the term to fulfil  the Spanish requirements, including the payment of the Spanish fees.
As from 30 May 2019 on, this practice will change as the SPTMO will no longer send any communication to the designated Spanish representatives. It will be up to the applicant to submit through its Spanish representative within the deadline of 2 months from the date on which the SPTMO has received the conversion application from the EUIPO, the required documentation and the payment of the official fees. If this is not done, the application for conversion in Spain will be considered as withdrawn.
This means that, unless we are informed by our clients or associates that we have been designated as local representatives  in EUTM conversion proceedings for Spain we will not be informed by the SPTMO anymore, and the deadline could be missed.
Therefore, it is very important that from now on, in cases where our firm is designated as a Spanish representative in EUTM conversion proceedings, we are immediately informed by you so that we can submit all the documents and accomplish all the formalities by the deadline. Otherwise the conversion for Spain may be lost.

Durán-Corretjer, S.L.P. has been cited as leader in filing and prosecution of trademarks in Spain by the magazine World Trademark Review in its analysis of the World’s Leading Trademark Professionals.

Emphasize the special mention to our Managing Partner, Luis-Alfonso Durán, who has been selected as one of the best Intellectual Property professionals in Spain.

On May 1, 2019, the Royal Decree 306/2019 amending the Implementing Regulation of Spanish Trade Mark Law 17/2001, of December 7, approved by Royal Decree 687/2002, of July 12, entered into force.

The main purpose of the same is the implementation of the amendments that already were made by the transposition of Directive (EU) 2015/2436 of the European Parliament and of the Council, of 16 December 2015, to approximate the laws of the Member States relating to trade marks, through the Royal Decree-Law 23/2018 of 21 December which amended Spanish Trade Mark Law 17/2001.

In addition to questions relating to the requirements of the application for registration, which include: the possibility of including in the application a claim that the sign applied for has acquired distinctive character through use, how to apply for new accepted types of trade marks, and that the goods and services must be identified by the applicant with sufficient clarity and precision, we must mention one of the most important novelties: the regulation of the possibility of requesting proof of use of the earlier trade mark registration in opposition proceedings, provided that the earlier trade mark has been registered for more than five years. It may not, however, be requested in proceedings concerning trade marks and trade names started before 1 May 2019.

On the other hand, another of the great novelties developed in the regulation it is the administrative proceedings for revocation and declaration of invalidity, that, currently, they can only be filed through a court action. However, these will not enter into force until January 14, 2023.

Last 4-5 April EUIPO hosted the 26th User Group meeting bringing together 22 representatives from 15 international user associations.  In this event, Christian Durán acted as the representative of ASIPI (Inter-American association of Intellectual Property).

The event serves to exchange views on EUIPO’s strategic activities and projects with a direct impact on users. Topics on the agenda included European and International Cooperation projects that are currently ongoing as well as an overview of the Interactive Collaborative Examination (ICE) initiatives, the Stakeholder Quality Assurance Panels (SQAP), and the EUIPO online services. A specific session on legal affairs issues provided an overview of the new EUIPO Guidelines and matters relating to Brexit.

Recently Canada signed the Madrid Protocol, thereby acceding to the Madrid System for the International Registration of marks.

Therefore, and effective as of June 17, 2019, owners of trade marks interested in commercializing their products and services in Canada may apply for their trade marks in Canada through the Madrid System.

Starting from that date, any international application processed through the Madrid System may designate Canada, thus allowing savings in both the application and the renewing costs of the trade marks in that country.

In terms of the classification of goods and services, Canada also joins International Classification of Goods and Services (Nice Classification), thus homogenizing its classification system with most countries in the world.

The magazine ECTA BULLETIN has published an interview with our Managing Partner, Luis-Alfonso Duran, where he expresses his views about the development of the Intellectual Property, the ECTA and its future.

You can access to the interview at the following link.

Last February 21st, 2019 it was published the new Spanish Act 1/2019 on Trade Secrets, that will come into force on March 13th, 2019.

This Act harmonizes the Spanish legislation in this field with that of the European Union, since it transposes the EU Directive 2016/943 of the European Parliament of the Council of June 8th, 2016.

The Act establishes means directed to protect the owners of trade secrets in front of those who, without the consent of its owner, would obtain or reveal any information or knowledge, including those of technological, scientific, industrial, commercial, organizational or financial nature, that is secret, that is valuable because of being secret and has been the subject of reasonable measures from its owner to keep it secret.

We are at your disposal to clarify any questions you would have on this matter.

For the fifth consecutive year, during the month of February and during the MOBILE WORLD CONGRESS dates, Barcelona’s Commercial Court judges and now for the first time The European Union Trade Mark Court of Alicante have adopted an on-call and rapid action protocol that contemplates, among others, the following measures:

a) To give a preferential and priority treatment to urgent interim injunctions (with or without a hearing) in relation to patents and technological innovations as well as industrial designs whose presentation is expected to take place during the above mentioned Mobile World Congress; as well as trade mark and copyright infringements, protection of competition and unfair competition practices and illicit advertising, in relation to products and materials that are exposed or exhibited during the event.

b) To commit themselves to issue a decision on interim injunctions petitions without prior hearing of the defendant within two days from receipt of the request by the Court; and a maximum period of ten days from receipt of the application to issue a decision on interim injunctions petitions with prior hearing of the defendant, as long as a “protective letter” has been filed.

c) In the context of an eventual conflict with another company regarding industrial or intellectual property rights and where there is a reasonable fear of being subject to an interim injunction petition without prior hearing, to admit the submission of “protective letters” to avoid, when possible, these interim injunctions being adopted without prior hearing of the defendant, which will, on the first place, allow the potential defendant to state their allegations and, secondly, their availability to immediately appear before the Court to resolve any query about the interim injunction petition without prior hearing.

According to the Patent Law, once the protective letter has been filed, the Court will inform the proprietor of the patent of the submission of that letter. Then, he will have a deadline to file the interim injunction petition, which will allow them to access to the content of the protective letter. In case that the owner of the patent does not file the interim injunction, the proceedings will be closed.

The filing of the preventive letter is not binding for the Court. This means that even if the proprietor of the patent files an interim injunction petition, the Court can still decide to grant if without a hearing.

d) In order to determine the required urgency regarding the adoption of such interim injunctions without prior hearing of the defendant, except when such hearing may compromise the proper functioning of the interim injunctions, the plaintiff’s prior behavior and how quick their response to the knowledge of the infringement has been will be decisive. In this regard, it is relevant that the interim injunction petition has been filed sufficiently in advance so that, in good faith, it does not, prevent the hearing of the defendant, if the proprietor of the allegedly infringed right had had prior knowledge of the potential infringement and was able to file their petition with sufficient time in advance.

e) The Barcelona’s Commercial Court will carry out the execution of the interim injunctions and /or urgent measures that according to it specific competences, determines the European Union Trade Mark Court of Alicante granting to that matter the effectiveness of the decisions taken. To that effect, communication channels and cooperation between the Courts will be established.