The Supreme Court has delivered a judgment that bolsters copyright protection for works of applied art under criminal law: It sets an important precedent in Spain in distinguishing design as an art that deserves protection under both criminal as well as civil law. The world of fashion design, in which aesthetics are woven into practicality, poses challenges for copyright. Fashion occupies the middle ground: somewhere between decorative and utilitarian, which as the Court of Justice of the European Union held in the Cofemel case, requires specific analysis, especially when the Criminal Code is ..read more

A judgment from the Court of Justice of the European Union (CJEU) clarifies the scope of third-party use of trademarks, taking into account the changes introduced in the European Directive on trademarks. On January 11, 2024, the CJEU ruled on the preliminary question (Case C-361/22) raised by the Spanish Supreme Court in the proceedings between Inditex and Buongiorno Myalert, S.A. regarding the use of the ZARA trademark. We will examine the impact of the ruling in cases involving the use of third-party trademarks. Article 37 of the Spanish Trademark Law 17/2001 states that the owner of a Spani ..read more

In the event of a possible opposition by a third party, it is necessary to have sufficient evidence to prove the use of the prior mark with documents that support its presence in the market for real commercial purposes. As the proverb says: “Caesar’s wife must not only be honest but must also be seen to be honest.” In the case of a trademark that has been registered for over five years, the requirement is stricter than for Caesar’s wife, since to maintain its protection it must be in use, appear to be in use and you must be able to prove it. It is crucial for trademark proprietors whose marks ..read more

Producing an audiovisual work is a complex process involving many people and can lead to numerous conflicts. However, Spanish law provides that it is up to the director and producer to decide on how it is ultimately released for public viewing. In the audiovisual industry, it is known as final cut privilege, i.e. the right to decide on the final version of an audiovisual work (for example a film or series). Exercising this right can lead to a variety of problems between the various individuals involved in producing the work, since their creative interests (for example, of the actors or directo ..read more

The General Court of the European Union recently refused to allow registration of the “BECAUSE THERE IS NO PLANET B” mark for cosmetic products, stationery and other accessories, holding that it lacked the distinctive character required for the general public to identify it as a trademark. One of the essential functions of a trademark is to identify the commercial origin of products and services. The exclusivity granted to the trademark owner is conditional upon the capacity of the mark in question to differentiate between different companies and services on the market. Promotional slogans are ..read more

The Enlarged Board of Appeal of the European Patent Office (EPO) has accepted the possibility of submitting new evidence of the inventive step of a patent application or patent that has been granted during the grant and opposition procedures.  Article 52(1) of the European Patent Convention (EPC) provides that European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application. When determining whether or not these three patentability requirements are met, case law by the Boa ..read more

For the first time, the Supreme Court’s criminal chamber has upheld the existence of indemnifiable moral damage where there has been no actual sale of counterfeit products; an issue which, until now, has not escaped dispute. A Supreme Court ruling last 13 July establishes that the mere possession of counterfeit products and their display for sale entails “reputational damage” for the protected trademarks concerned. We analyse the key points of this important ruling below. Indemnifiable damage Before this judgment, the prevailing opinion of the provincial appellate courts was to support that ..read more

Notable new aspects of the law include the right granted to press publishers to authorize or prohibit the online use of their publications and that online content-sharing service providers are considered to perform an act of communication to the public or an act of making available to the public when they give the public access to copyright-protected works. The long-awaited Portuguese transposition of the new Copyright Directive has finally been completed with the publication and entry into force of Decree-Law no. 47/2023, of June 19, 2023. However, the government has introduced amendments and ..read more

The Danish company SNIPR Biome, which researches and develops CRISPR-based microbial gene therapy, has obtained a favorable decision in defense of its patents. The U.S. Court of Appeals for the Federal Circuit has overturned the decision of the PTAB which had ruled in favor of Rockefeller University and canceled five of the company’s patents on the grounds that they were anticipated by a prior patent owned by the university. CRISPR technology (Clustered Regularly Interspaced Short Palindromic Repeats) has revolutionized biotechnology in the last few years, particularly in connection with gene ..read more

The use of a trademark is crucial to preserve the rights in the mark. However, whereas in the US the statement of use is essential to maintain the registration, in the EU, it does not exist. Let’s take a look. The registration of a trademark grants the exclusive right to use a particular sign to identify a good or a service in the market and prevent others from using it without the appropriate authorization. In other words, it could be said that it is the first commandment of trademark law. But is this right acquired and maintained in the same manner everywhere? The answer is “no”, since the l ..read more