New Trade Secrets Act. This new piece of legislation implements EU Directive 2016/943. It offers a comprehensive regulation of this key matter, so far insufficiently regulated in the 1991 Unfair Competition Act. Violation of trade secrets is also a criminal offence, and can still be prosecuted under the Criminal Code, but this is only recommended, if at all, for very serious cases or where the circumstances make it inadequate to start a civil action. A typical trade secret would be a manufacturing process whose steps cannot be ascertained by third parties by submitting the final product to a reverse engineering. Instead of patenting the method (which implies disclosure and obtaining a time-limited protection), the method can be kept away from the competition by taking appropriate measures in the company to keep it secret, mostly by regulating access to it. Pursuant to the new Act, any knowledge or information can constitute a trade secret if it is indeed secret, has any commercial value and has been kept secret by its proprietor. Legal measures in case of trade secret violation are thoroughly regulated. As the trade secret is a business asset, it can be transferred or licensed.
Spanish Trademarks Act amended. The Spanish Trademarks Act has been the object of a substantial reform, to adapt it to European Union Directive 2015/2436 on trademark harmonization. In our opinion, the two main aspects of this reform, which finally bring Spanish practice in line with the EU office, are: a) it will be possible to request proof of use of the earlier right in the course of opposition proceedings. Therefore, trademark applicants which are opposed by a trademark which is not in use, or is being used for goods or services dissimilar to those designated by the application, will not have to raise this point in a lengthy and costly court action (which in practice was hardly done); b) The Spanish PTO will be the venue for cancellation actions, instead of the courts. This will streamline procedures (however, if the defendants in an infringement law suit wish to cancel the attacking trademark, they will have to do it before the court)
Exclusive jurisdiction for IP litigation. As of January 1st 2019, litigation based on Spanish patents (including European Patents substantiated in Spain), Spanish trademarks and designs shall be dealt with by one of the following Commercial Courts: Madrid, Barcelona, Valencia, Bilbao, Coruña, Granada and Las Palmas de Gran Canaria. If the defendant is domiciled in the regions where those courts are located, the suit must be brought before that court. If the defendant is domiciled somewhere else in Spain, the plaintiff can choose the venue. However if the suit is based on a EU trademark or design, the only venue is the Commercial Court of Alicante.
InterAlia teaches IP workshop. Organized by the University of Salamanca and financed by the Regional Government, InterAlia Patentes has taught a workshop to start-up companies on IP aspects relevant to the development of business projects. This is the first of a series of workshops that InterAlia will be in charge of in the coming months.
Key EU Court ruling of technical designs. National courts and EUIPO have followed two main theories to interpret the prohibition to register technical designs. The multiplicity of forms theory allows registration of a design if there are alternative forms to it. The causality theory says that what matters is whether the product was designed only with its technical function in mind or also with aesthetic considerations. In an important ruling in a question referred by a German court (C-395/16 Doceram vs CeramTec), the EU Court has sided with the causality theory. The multiplicity of forms does not make much sense in that, in the Advocate General’s words, someone could register all possible alternative forms and obtain exclusive rights on a technical form by way of designs, not of a patent.
High-profile trade secrets disputes in the US. Samsung has been sued by Chicago-based NuCurrent, for misappropriation of wireless deviceÂ´s charging technology which according to NuCurrent was disclosed at a meeting under a confidentiality agreement. Galaxy S7 and S8 are alleged to incorporate this technology. In another high-profile case, Uber has paid $275 million in shares to Waymo (Googleâs driverless car division) to settle a suit over trade secrets misappropriation. Mr. Levandowski, Waymoâs former head of research, left the company to start his own business, which was soon after acquired by Uber. Waymo suspected Uber was using his secret technology and found out that, before leaving, Mr Levandowski had downloaded 14.000 confidential files.
Handbag design protected in Spain under copyright. Industrial products are normally protected under the Industrial Design legislation, however there are two exceptional ways of preventing the copy of a non-design protected product. One is unfair competition, where copying gives rise to likelihood of confusion. The copied product must enjoy a very strong competitive position. Another exceptional way is to consider the product as an artistic work which must be protected under copyright provisions. Whilst this course of action is common in countries like France, in Spain it is quite restrictive. The Madrid Court of Appeal has ruled in September 15th, 2017 that the “Le Pliage” handbag manufactured by French maison Longchamp has sufficient originality, “as an expression of its creator’s personality” to fall under copyright provisions. This no doubt is largely due to this particular model having been offered and widely advertised for a long time, coming from a prestigious manufacturer and having formal features that tell it apart from other bags in the market (same facts that would have qualified it for protection under unfair competition provisions.)
European trademark legislation reform: two implementing regulations to be applied as of 1st October 2017. The Trademark of the European Union is disciplined by a somehow complex set of regulations. The main legal instrument is the Regulation 207/2009, substantially modified by Regulation 2015/2424 which came into force on 23 March 2016, the changes being so substantial that a codified version has been approved by the recently published (16 June 2017) Regulation 2017/1001. However, a long list of articles in the the amended regulations did not enter into force on 23 March 2016 because they needed to be fully implemented by way of further regulations. These implementing regulations, 2017/1430 and 2017/1431 WILL BE APPLIED AS OF 1 OCTOBER 2017. Points of note are that the requiriment of representation of a trademark is developed in detail, which is important so far as non-conventional marks go. For instance, a multimedia mark must be represented by way of an audio-visual file containing the combination of image and sound in which the mark consists of. To view these marks when they are published, the Bulletin will contain a hyperlink. The rules of the Boards of Appeal are codified and many other procedural points are regulated. InterAlia will be happy to advice on these changes.
New Patents Act comes into force: on April 1st a new Spanish Patents Act has come into force. Former Act, enacted in 1986, updated patent rules to the extent required for Spain to join the Common Market and the European Patent Convention. However, the system was peculiar in that patent applications were not subjected to a novelty and inventive step examination, which later on became only optional for the applicant. The new law finally puts Spanish rules in line with the highest European standards, in that every application shall be submmitted to a full substantive examination. It is worth noting that the Spanish PTO has been acting for years as International Searching Authority and International Preliminary Examination Authority in the PCT system, so it has all the qualifications and structures required to carry out the examination tasks under the new Patents Act.
A STEP FORWARD TO THE UNIFIED PATENT COURT: UK RATIFICATION. The UK has announced it intends to ratify the agreement on the Unified Patent Court (UPC). This is a significant step, because ratification by the UK, France and Germany is required for the agreement to enter into force. France has already ratified it, works in Germany are well advanced and there were doubts as to UK’s position following its vote to leave the EU in June 23 2016’s referendum. The UPC agreement is not EU law and thus an eventual British exit shall not affect its European Patent and UPC’s membership.
26/05/2016 INTERALIA RECEIVES INTERNATIONAL AWARD InterAlia Patents and Trademarks has been named Best for IP Prosecution Spain by the business magazine Adquisition International at their 2016 INTELLECTUAL PROPERTY AWARDS. InterAlia is the only Spanish firm getting an award at this years edition, among other international firms recognized in different categories. Please see the PRESS RELEASE here http://www.acquisition-intl.com/2016-the-2016-intellectual-property-awards-press-release ADQUISITION INTERNATIONAL has published an special issue here http://issuu.com/aiglobalmedia/docs/2016_ip_awards_magazine/21?e=15629828/35803796
18 March 2016: Entry into force of amendments to Community Trademark Regulation: The European Union Regulation on the so far known as “Community trade mark” has been amended in several respects, the most significant being: 1) The Treaty of Lisbon, which changed the name of the European Community to European Union, brings its nomenclature to the realm of trade marks. Thus, the Office for Harmonization in the Internal Market (OHIM), a long name that no one used anyway (practitioners preferring the shorter “Community Trade mark Office” or “CTM Office) is to be named “European Union Intellectual Property Office (EUIPO)” although it is foreseeable that the more practical “European Trade mark Office” will be used. In the same line, the Community trade mark shall be named “European Union trade mark”. 2) FEES: the €900 one-fee-per-3 classes system is to be shed in favour of a one-fee-per-class system. Fee for the first class is €850, for the second class €50 and for subsequent classes, €150. As in most cases one class is enough, applicants will see a reduction of €50. Renewal fees shall be the same as the application fees. 3) Certification trade marks are created. 4) New opposition and cancellation ground: PDOs and PGIs are the basis for a new separate and independent ground of opposition on relative grounds. 5) Trade marks registered by an agent without consent: rather than only requesting its cancellation, the lawful owner shall be entitled to request assignment of the registration.
InterAlia teaches Intellectual Property workshop: on 24-25 November, the University of Salamanca has run an Intellectual Property workshop in which Carlos Hernández has taught the most important IP-related issues facing start-up companies.
Spanish Community Trademark Court on smell-alike perfumes: a retailer was selling perfumes under his own trademark, but indicating to the public that such perfumes were equivalent to other well-known third-party perfumes. The Community Trademarks Court has confirmed that this practice is not a descriptive use of a third-party trademark and it is unlawful because it takes an unfair advantage of the reputation of the registered trademarks. Besides, selling the perfumes as replicas or imitation of well-known perfumes is an act of unfair competition.
The Community Trademarks Office has released a report about counterfeits of cosmetics and personal care products. About 4.7 billion euros are lost every year due to counterfeits. It is estimated that otherwise the industry would create about 50.000 jobs.
European patents can be validated in Morocco: as of 1 March 2015, applicants for an European patent will be able to pay a €240 designation fee for Morocco, thus opening the possibility of validating the granted patent in that country. A European patent validated in Morocco will have the same effect of a national patent.
Spanish PTO has seen an increase of 8,53% in trademark applications in 2014, for a total of 57156 applications. The 2689 Utility Model applications represent a 2,13% rise. Patent applications have decreased less than in past years (total number of 3031, 3,26% less)
Increase in European patent applications: The European Patent Office received 273.000 applications in 2014, which is an all-time high and a 3% rise over 2013.View all news