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DeutschHernandez Marti Abogados recognized by WTR 1000 - Enforcement & Litigation
“Hernandez Marti Abogados has a great trajectory in the Spanish IP market and is recognised for its customer-oriented service, innovative and practical problem-solving skills, and clear and concise communication.” “It efficiently handles global IP portfolios, defends brand owners in contentious situations, and serves as a resource for anyone looking to position themselves in the European market. It offers sounds guidance from the very start and produces extraordinary results.” Setting the tone…
Trademark invalidity and cancellation proceedings before the SPTO
Since January 14 2023, the Spanish Patent and Trademark Office (SPTO) has been the competent administrative body to hear applications for nullity and cancellation of trademarks, without prejudice to the fact that its decisions may be reviewed by the civil courts (Commercial Courts and higher courts). The attribution of jurisdiction therefore extends to trade marks and trade names. Invalidity can be based either on the grounds that the distinctive sign is subject to an absolute legal prohibition…
LOUBOUTIN V. AMAZON - products bearing a sign infringing a third party's right, offered on an online marketplace in which the operator itself participates. Assessment of a link between the operator's services and the sign in question.
The District Court of Luxembourg and the Tribunal des entreprises francophones de Bruxelles, Belgium (joined cases), in the respective proceedings in which LOUBOUTIN is bringing actions against AMAZON for trade mark infringement, referred a number of preliminary questions to the Court of Justice, which may be summarised as follows: whether Article 9(2)(a) of Regulation 2017/1001 must be interpreted as meaning that the operator of an online sales website which, in addition to its own sales…
Inadmissibility of trademark actions for infringing conduct prior to the time when the plaintiff obtained ownership of the trademark by virtue of a revindicatory action.
The plaintiff brings an action for trademark infringement committed by the defendant prior to the date on which the defendant obtained ownership of the trademark by virtue of a revindicatory action. The questions raised by this judgment: a) Whether the upholding of a trademark revindicatory action allows the new owner to bring an action for trademark infringement against the licensee who used the sign during the period prior to the judgment declaring the claimant's ownership of the mark. b)…
'NEHERA’– Non-appreciation of bad faith – reputation is not proven at the time of application
BACKGROUND TO THE DISPUTE On May 2013, Mr. Ladislav Zdút filed an application for registration of the following EU trade mark for goods in classes 18, 24 and 25. On June 2019, Ms. Isabel Nehera, Mr. Jean-Henri Nehera and Ms. Natacha Sehnal, filed an application for a declaration of invalidity against the contested mark, pursuant to art. 59.1 b) of Regulation 2017/1001 (hereinafter EUTMR), claiming the bad faith of Mr. Ladislav when knowing their grandfather’s identical named business for…
Utility model. Interpretation of the object of protection.
Art. 69.1 EPC (EPC 2000) establishes that: "The scope of protection granted by the European patent or the European patent application shall be determined by the claims. However, the description and drawings shall serve to interpret the claims". Article 1 of the Interpretative Protocol of the aforementioned provision states: " Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal…
Determination of damages for patent infringement by calculating the profits obtained by the infringer.
The particularity of the case examined by the judgment is the fact that the patented product was not commercialised by the infringer as such, but as part of a composite product. On the other hand, the plaintiff did market both the product protected by the patent and composite products incorporating the patented product. The injured party wanted the calculation of the compensation to be made on the basis of the products he traded (retail price of the patented product and retail price of…
Contributory infringement of intellectual property rights. Action other than the lifting of the veil of personality.
The direct economic interest in the results of the infringing behaviour and the ability to control the behaviour of the infringer is one of the three cases of liability for contributory infringement of intellectual property rights, as provided in the second paragraph of article 138 of the Intellectual Property Law. Carlos Daniel is the owner of the Spanish trademark including the denomination "Rojadirecta", for telecommunication services (class 38). The trademark was filed on July 9, 2010 and…
The sign formed by the words "body" and "tone" is not descriptive to distinguish bicycles. Non-existence of a cause of nullity. Compensation for damages.
The plaintiff is the owner of trademark 2857285, "Bodytone", word mark, applied for on 19/12/2008 and granted on 04/06/2009 to designate gymnastics and sport articles, among others, included in classes 28 and 35. Files a trademark infringement and indemnification of damages action alleging that the Respondent sold spinning bicycles through its website, offered under the name "BODYTONE EVOLUTION". The defendant in its answer to the claim referred to the English language term "body tone". This…
Barcelona – injunctive reliefs - NFT's
BACKGROUND TO THE DISPUTE On July 29th 2022, VISUAL ENTIDAD DE GESTIÓN DE ARTISTAS PLÁSTICOS, filed several actions, requesting that it be declared that the defendant, Grupo Mango, was infringing the economic and moral rights that Mr. Agustín, Mr. Alejo and Mr. Alfredo hold over five works, that were being used by the defendant without their consent or authorization, and that it be ordered to cease such use, with the corresponding compensation, and to publish the judgment. On the claim, the…