Position marks: geometric sign located on side of shoe can be inherently distinctive
WTR Yearbook 2021-2022
Thanks to Sonia Santos and Jesús Arribas who have once again provided the chapter on Spain for World Trademark Review Yearbook. ‘This article first appeared in World Trademark Review Yearbook: A global guide for practitioners 2021/2022, a supplement to World Trademark Review, published by Law Business Research – IP Division. To view the guide…
Specific Protocol to protect IPR for the Mobile World Congress (MWC), the world’s largest and most important event in the mobile communications industry, which will be held in Barcelona from 28 June to 1 July, 2021.
#MWC21 #MobileWorldCongress #GSMA #telecommunications #mobiles #ip #iplawyers #grauanguloteam #allaboutIPlitigation
Catalonia High Court of Justice confirms grant of DYNAMIC SANTIVERI trademark
On 23 February 2021 the Fifth Section of the Contentious-Administrative Chamber of the Catalonia High Court of Justice (CHCJ) dismissed a contentious-administrative appeal filed by Laboratorios ERN SA, thus confirming the grant of Spanish Trademark 3,717,283, DYNAMIC SANTIVERI.
Second-instance court nullifies acquittal due to incorrect interpretation of IP crime
On 2 February 2021 the Madrid Court of Appeal nullified a first-instance trial court judgment which had acquitted the defendants of committing a criminal offence.
Barcelona Court of Appeal confirms legitimacy of Tommy Hilfiger’s use of TH sign
In an 18 January 2021 judgment, the Barcelona Court of Appeal confirmed the 4 December 2019 judgment of Barcelona Commercial Court 6 which dismissed a trademark infringement action brought against Hilfiger Stores Spain (HSS), SL
Appeal court confirms criminal conviction for commercialisation of infringing products
In its judgment of 14 October 2020, the Madrid Court of Appeal confirmed the condemnatory judgment of Madrid Trial Court Number 25 for a crime against industrial property under Article 274.2 of the Criminal Code. ‘]
Superior Court of Justice confirms criminal conviction for wholesale and retail sale of fake garments
In a judgment of 29 October 2020, the Civil and Criminal Section of the Superior Court of Justice of Madrid (TSJM) largely dismissed the brief of appeal filed by the defendant against the convictional judgment issued on 24 April 2020, by which the Provincial Court of Madrid had sentenced him to a two-year prison sentence,…
Second preliminary injunction request based on amended form of patent dismissed
On 27 November 2020 Barcelona Commercial Court Number 1 dismissed the second preliminary injunction request filed by Sanofi against Mylan in relation to an insulin glargine biosimilar product.
Preliminary injunction issued for the issuance of European certificates of conformity for face masks under infringing sign
On 17 July 2020 the Alicante Commercial Court 1, acting as the European Union Trademark (EUTM) Court 1, granted an ex parte preliminary injunction, which had been filed by the German association Tüv Markenverbund, EV (TÜV) against Tuv-World ECC Certification Service, SL (Tuv-World) for infringement of its EUTM for the distinctive sign TÜV. Read…
Appeal court confirms revocation of Spanish SPC for Truvada
During the current state of alarm, on 23 April 2020 the Barcelona Court of Appeal issued a judgment confirming the invalidity of Gilead’s supplementary protection certificate (SPC) for the combination of tenofovir disoproxil + emtricitabine, thus upholding a first-instance decision favourable to generic competitors Teva and Mylan. The matter has been broadly followed in Europe,…
Copyright protection of fashion designs in Spain after Cofemel
Fashion designs tend to be short lived, sometimes available only for a single season before being replaced by other designs. This is reflected in EU legislation. Unregistered community designs were specifically conceived to protect these kinds of design, regardless of the possibility of opting for the more solid protection conferred by registered designs. Read…
IP-related measures adopted due to COVID-19
The health crisis caused by the rapid spread of COVID-19 led to the approval and entry into force in Spain of Royal Decree 463/2020 on 14 March 2020, which declared a state of alarm. This has led to the adoption of diverse judicial and administrative measures which are being adapted to changes during the COVID-19…
Community design courts find infringement of well-known GHD hair straighteners
On 26 February 2020 Section 8 of the Alicante Court of Appeal, acting as the Community Design Court, confirmed the infringement of Jemella Limited’s Community design which had previously been declared by the first-instance Community design court (Alicante Community Design Court Number 1). The Community design in question protected the special shape of the well-known…
Spain Chapter / Trademark Review Yearbook 2020/2021
– Patent, Trademark, Copyright & Design litigation – Advice on licence agreements – Anti-counterfeiting actions – Domain name disputes – Unfair competition Authors Sonia Santos and Jesús Arribas Read the Spain chapter here This article first appeared in World Trademark Review Yearbook 2020/21, a supplement to World Trademark Review, published by Law Business Research…
COVID-19
Dear clients, colleagues and friends: In light of the rapid spread of the COVID-19 virus and consequent state of alarm called by the Spanish government, GRAU & ANGULO has adopted a series of measures in order to protect the health of those around us while at the same time provide constant service to our clients.…
Appeal court upholds criminal sentence for possession of infringing handbags
On 4 October 2019 the Barcelona Court of Appeal confirmed a criminal sentence of six months’ imprisonment, a fine and compensation of legal costs for the possession of 240 round bags which infringed the famous Robin Ruth Group (RRG) design. The RRG design consists of a city’s name repeated in the same font, with one…
Barcelona court confirms legitimacy of Tommy Hilfiger’s use of TH sign
On 4 December 2019 the Barcelona Commercial Court No 6 dismissed an action for trademark infringement brought against Hilfiger Stores Spain, SL (HSS) and upheld its counterclaim, declaring partial revocation for non-use of the plaintiff’s Spanish trademark registered for clothing, footwear and hats (Class 25) and leaving it registered exclusively for “occasion hats” and “women’s…
Specific protocol of guard service and fast action for MWC
A new edition of the Mobile World Congress (MWC), the world’s largest and most important event in the mobile communications industry, will be held in Barcelona from 24 to 27 February, 2020. Read More
Exhaustion of trademark rights: Barcelona Court of Appeal rules in Schweppes case
On 22 July 2019 Section 15 of the Barcelona Court of Appeal declared that Red Paralela SL and Red Paralela BCN SL (together, Red Paralela) had infringed Schweppes International Limited’s Spanish SCHWEPPES trademarks by importing and commercialising Schweppes-branded tonics in Spain which had been manufactured in the United Kingdom by Coca-Cola/Atlantic Industries (together, Coca-Cola), the…
Copyright protection: impact of recent ECJ decision on Spanish legal framework
The European Court of Justice’s (ECJ’s) 12 September 2019 judgment in Cofemel-Sociedade de Vestuário, SA v G-Star Raw(1) is good news for EU designers, as it confirms what has already been stated by some Spanish courts – namely, that a design need not have artistic merit, aesthetic value or a particular visual attraction to qualify…
Conviction for sale of fraudulent software
On 5 July 2019 the Oviedo Court of Appeal (Section 3) confirmed a trial court decision which had: found the defendant guilty of copyright infringement; sentenced him to six months’ imprisonment; and ordered him to pay the plaintiff’s court costs and damages of an amount to be determined during the enforcement of the sentence on…
Criminal sentence for possession of infringing FC Barcelona t-shirts
On 26 June 2019 the Madrid Court of Appeal confirmed a 29 December 2018 decision of the Madrid Trial Court Number 11, which had sentenced a Spanish resident of Chinese origin to five months’ imprisonment for the possession of 9,317 counterfeit items of clothing – including t-shirts which infringed FC Barcelona’s IP rights – for…
General Court partially annuls Board of Appeal’s decision in TROPICAL case
On 31 October 2003 Mr Tadeusz Ogrodnik (hereinafter ‘the applicant’) filed an application for registration of an EU trademark for goods in Classes 5 and 31. Registration was sought for the following figurative sign: Read More
