Durán-Corretjer SLP

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.

The Spanish Government approved last December 21st, 2018, Royal Decree 23/2018 amending the Spanish Trade Mark Act, transposing EU Harmonization Directive 2015/2436,

These amendments will enter into force on January 14th, 2019, except the changes that move the jurisdiction for direct invalidity and revocation proceedings from the Courts to the Spanish Patent and Trade Mark Office, which will enter into force on January 14th, 2023.

One of the most significant changes that will enter into force on January 14th, 2019, is the possibility to request the proof of use for the previous 5 years in opposition proceedings, when the Trade Mark of the opponent, has been registered for 5 years or longer.

If you wish to receive any clarification or information of the new changes, you can contact with our firm.

Mr. Christian Durán, Attorney at Law and Spanish Patent and Trade Mark Attorney from Durán-Corretjer, S.L.P. was awarded on November 28th, 2018 in recognition of the excellent work done as a representative of Inter-American Association of Intellectual Property (ASIPI) before the European Union Intellectual Property Office (EUIPO), at the XX Congress of ASIPI which took place in the city of Rio de Janeiro, Brazil during November 25th and 29th 2018.

ASIPI is the most important Intellectual Property Association in America, and it brings together patent and trade mark professionals from those countries. Mr. Christian Durán is ASIPI’s representative in the relationship with EUIPO since January 2016.

Attorneys at Law and Spanish Patent and Trade Mark Attorneys:  Ada Torras and Christian Durán from Durán-Corretjer, S.L.P. have attended at the 37th Annual Conference of the European Communities Trade Mark Association  (ECTA) that has taken place in Athens, Greece, from June 13-16, 2018.

Durán-Corretjer Managing Partner, Luis-Alfonso Durán, was invited to talk about the consequences of Brexit in European IP protection at the Executive Committee meeting of the International Federation Of Intellectual Property Attorneys (FICPI) that took place in Toronto from May 3rd to 5th, 2018, at the time of its World Congress.

Luis-Alfonso Durán also attended the Executive Committee Meeting of FICPI as the Spanish Delegate.

Last April 13, at a ceremony organized in Malta, to celebrate the 40th anniversary of the Institute of Professionals Representatives before the European Patent Office, also known as the European Patent Institute (epi), our Managing Partner, Luis-Alfonso Durán, was invited to speak about “Adapting epi to the present and to the future”.

Mr. Durán’s speech followed the addressees of Mr. Francis Leyder, President of the European Patent Institute, Mr. João Pereira da Cruz, Secretary General, and Mr. Benoît Battistelli, President of the European Patent Office.

The European Patent Institute is the organization that represents more than 12.100 European patent attorneys. Mr. Durán that is a former Vice-President of epi, has chaired for the last 3 years a Reporting Group for the reform of epi.

Mr. Durán also wrote an article in the publication made by epi to commemorate the 40th Anniversary, that you can find in the enclosed link:

Last April 3, CEOE presented a Decalogue of urgent measures to boost R+D+I in Spain, prepared by the Commission on Research, Development and Innovation, which Industrial an Intellectual Property Committee is chaired by our managing partner, Luis – Alfonso Durán.

Said Decalogue includes the following urgent measures:

1.    State agreement in support of R+D+I.
2.    Legislative and Administrative simplification and coordination.
3.    Support to Technology transfer.
4.    Improvements in the financing of R+D+I.
5.    Training and retention of talent.
6.    Encouragement of the protection of innovation through Industrial and Intellectual Property.
7.    Public purchases of innovative products.
8.    Digitalization.
9.    Encouragement of the innovative culture in enterprises.
10.  Social innovation.

This Decalogue constitutes a first important step to reflect and implement specific measures in order to pursue that R+D+I becomes a priority in Spanish society.

https://contenidos.ceoe.es/CEOE/var/pool/pdf/publications_docs-file-471-decalogo-de-medidas-urgentes-para-impulsar-la-i-d-i-en-espanav3.pdf

Our firm once more, appears as one of the most important firms in the field of Trade Mark prosecution in Spain, according to the magazine World Trademark Review, which is the result of an international survey that establishes a ranking of the firms on Industrial and Intellectual Property around the world.

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.

The Spanish Ministry of Justice has prepared a Bill on Trade Secrets for the transposition in Spain of Directive (EU) 2016/943 on the protection of undisclosed know-how and business information (trade secrets), in order to incorporate it into the Spanish legal system.

The Bill foresees the definition of the trade secrets that will be protected, as any kind of information, related to any area of the business, including technological, industrial, commercial, organizational or financial, that met the following conditions:

a) it is secret
b) it has a commercial value because it is secret
c) it has been subject to reasonable steps to keep it secret

The Bill establishes the activities that will be considered as a violation of these trade secrets, the actions that could be brought against this violation and the consequences of such violation, including damages that could be claimed.

The term given to the Spanish Government to this transposition expires on 9 June 2018.