Update on procedural and administrative deadlines before the OEPM and EUIPO. – COVID-19

After the Spanish Government enacted the State of Alarm due to the current pandemic, the fulfillment of administrative timeframes before the Spanish Trademark and Patent Office (OEPM) and the European Union Intellectual Property Office (EUIPO) has been suspended and interrupted. Below, we clarify how this situation will be implemented in both offices as well as in the Spanish legal system.

Making available to the public and e-books. New interpretation.

On 19 December the Grand Chamber of the Court of Justice of the EU ruled on the question referred for a preliminary ruling in the context of a dispute in the Netherlands concerning the provision of online services consisting of a virtual marketplace for "second-hand" e-books, with regard to the interpretation of Articles 2, 4(1) and (2) and 5 of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related…

Hernández-Martí attended yesterday the Launch of the European Social Innovation Competition 2020 – Reimagine Fashion

Hernández-Martí attended yesterday the Launch of the European Social Innovation Competition 2020 - Reimagine Fashion, which took place in the Palau de les Arts Reina Sofia. It was discussed among others the parameters to reedecuate consumer as well as the fashion industry to direct it towards a more eco-friendly and sustainable sector. During the speeches, several speakers presented their business models and the entrepreneurial ways of succeeding in such an emerging field. Also professors and…

Industrial design infringement – case law parameters in Spain and the overall impression in consumers.

The appellant, Mr. Luís Pablo filed an appeal based on procedural infringement and an appeal limited to the points of law (Recurso de casación) against the judgment ruled by the Audiencia Provincial de Zaragoza (Section No. 5) dated July 12, 2017 favorable to Canela Joyería Artesana S.L., where it was denied the existence of design infringement. We refer below to the designs at stake:

Rubik’s cube – shape mark

On April 1996, a three-dimensional EUTM was filed in Class 28 (three-dimensional puzzles) as reproduced below.

Right to privacy. Protecting houses of Security cameras which are not recording.

Judgement (Civil Order) of November 7, 2019.We feel honored for a recent judgement which recognizes a right to privacy claimed by our client which was initially disregarded by the Agencia Española de Protección de Datos (Spanish Data Protection agency) and the First Instance Courts. The perseverance and trust in our legal team were essential to make the right to privacy enforceable before the Tribunal Supremo (Highest Instance Court).

Trade names and corporate names in the Spanish Trademark Act and the European Union trade mark Regulation

The legal regime of trade names, in one hand in the Spanish Trademark Act and in the other hand in the European trade mark Regulation, is a direct consequence of the commitment that countries which have ratified the Paris Convention, and in particular the regime concerning the protection of trade names “without the obligation of filing or registration, whether or not it forms part of a trademark” (article 8 of the Paris Convention), have subscribed. The latest amendments suffered in the Spanish…

Clothing items under the copyright protection regime: the importance of the aesthetic element.

The entites Cofemel and G-Star both are in the design business, the manufacturing and trade of clothes. Both are designing jeans, jumpers and shirts. In august 2013, G-Star filed a lawsuit based on intellectual property right´s infringement and unfair competition acts before the Portuguese Courts. G-Star argued that the items they produce (jeans, shirts, jumpers) should be considered as intellectual creations sufficiently original and thus they are granted protection under the intellectual…

The targeted public as main criteria to determine the competent Court in infringement cases

AMS Neve is an entity based in the United Kingdom which core business is audio equipment and Heritage Audio, is an entity settled in Spain dealing with the same kind of goods. In 2015 AMS Neve filed a lawsuit against Heritage Audio before the competent Court in United Kingdom concerning an infringement claim arising from the alleged wrongful use of rights conferred by an EU trade mark and two national trademarks. AMS Neve is exclusive licensee over the concerned marks.

The exhaustion of rights and big monopolies – requirements to undetermine the economic link and the worldwide brand image. Schweppes as exclusive licensee in Spain.

The trademark Schweppes has its origin in United Kingdom. Initially it was registered in the name of Cadbury Schweppes (owner back in time of all the SCHWEPPES´s trademarks in all countries conforming the European Economic Area). Afterwards, Cadbury sold to Coca Cola in some territories of the EU the ownership keeping among others, Spain. Cadbury Schweppes merged into the French company Pernord Ricard, creating a new entity named Orangina Schweppes Group. This company was lastly bought by the…

Prior right not registered – evidence of use of more than mere local significance (article 8.4 of the Regulation 2017/1001)

The appellant, SWEMAC Innovation AB, filed an EUTM application on October 2, 2007, for the word mark SWEMAC in Class 10 and 42. The trademark was duly registered on September 4, 2003. On September 3, 2013, SWEMAC Medical Appliances AB filed a partial nullity action pursuant to Article 60.1, c) of Regulation 2017/1001. The claim was relied on the Swedish company name SWEMAC Medical Appliances AB, registered as a business as from December 12, 2007. The applicant argued that there was likelihood…

Café del mar – nullity based on bad faith.

In 1978, the appellant and the interveners in the current legal proceedings, obtained a premise in Ibiza as to start a business (bar) in this same place named “Café del Mar”. In 1992, the intervener applied for the trademark registration for the first time Café del Mar. Afterwards, both parties created the legal entity and the intervener was named as Proxy-Holder as to act in the name and in representation of the legal entity. Among others