Weekly Design Update – Oct 2021 (3 of 3)

“1. (1) These Rules, which may be cited as the Circuit Court Rules (Intellectual Property) 2021, shall come into operation on the 12th day of October 2021.

(2) These Rules shall be construed together with the Circuit Court Rules 2001 to 2021.

(3) The Circuit Court Rules 2001 to 2021 as amended by these Rules may be cited as the Circuit Court Rules 2001 to 2021.

2. The Circuit Court Rules 2001 to 2021 are hereby amended by the insertion, immediately following Order 5C, as Order 5D, of the Order set out in the Schedule.

Schedule 

“Order 5D 

Intellectual Property Claims 

Definitions 

1. In this Order, unless the context or subject matter otherwise requires—

the “1992 Act” means the Patents Act 1992;

the “1996 Act” means the Trade Marks Act 1996;

the “2000 Act” means the Copyright and Related Rights Act 2000;

the “2001 Act” means the Industrial Designs Act 2001;

the “2019 Act” means the Copyright and Other Intellectual Property Law Provisions Act 2019;

“intellectual property claim” has the same meaning as in section 2 of the 2000 Act.

Additional particulars required in civil bill in intellectual property claim

2.(1) An intellectual property claim shall be commenced by the issue and service of an ordinary civil bill, in the Form 2A in the Schedule of Forms, with the modifications necessitated by this rule, which shall:

(i) state the registered number of any registered intellectual property right to which the intellectual property claim relates;

(ii) set out full particulars of the ownership of any unregistered intellectual property right concerned in the proceedings, or of the right of the plaintiff to claim infringement;

(iii) include particulars of the nature and extent of any intellectual property right relied upon by the plaintiff (including the capacity in which the plaintiff sues if not the registered proprietor or proprietor of the intellectual property right concerned);

(iv) include particulars of the nature and extent of the alleged infringement of any intellectual property right relied on by the plaintiff;

(v) set out the material facts relied on in support of the intellectual property claim;

(vi) state specifically the relief sought against each defendant and every provision or rule of law relied on in support of each such relief and, where relief under the 1992 Act, 1996 Act, 2000 Act and/or 2001 Act is sought, the particular provisions under which relief is sought and the grounds for each such relief;

(vii) state such facts as shall show jurisdiction in accordance with reference number 30 in the Third Schedule to the Courts (Supplemental Provisions) Act 1961.

(2) The requirements of this Order are additional to the requirements of Order 5 as regards civil bills.

Civil application for delivery up 

3.(1) An application to the Court in or by way of a civil proceeding for the delivery up of:

(i) infringing goods, material or articles under section 20 of the 1996 Act; or

(ii) an infringing article, copy, or device under section 131 of the 2000 Act; or

(iii) an illicit recording, article or device under section 255 of the 2000 Act; or

(iv) an infringing product or article under section 61 of the 2001 Act

may be made ex parte to any sitting of the Court in the Circuit wherein it is believed that such infringing articles, copies or devices are in the possession, custody of control of any person.

(2) The application shall be grounded upon an affidavit sworn by or on behalf of the proprietor of the registered trade mark, the copyright owner or a person having rights conferred by Part III of the 2000 Act, or his or its authorised representative.

(3) Where an application has been made, and remains undetermined, in a criminal proceeding, for the delivery up of some or all of the same article(s), copies, devices or products, an application under this rule shall not be determined until the determination of the application in the criminal proceeding.

(4) The Court may adjourn an application under this rule and direct that a person against whom relief is sought be served with notice of the application, in such manner as the Court directs.

Civil application for erasure etc of offending sign or for forfeiture or disposal 

4.(1) Subject to sub-rule (3), an application to the Court in or by way of a civil proceeding for:

(i) an order to cause an offending sign to be erased, removed or obliterated from any infringing goods, material or articles, or to secure the destruction of infringing goods, materials or articles under section 19 of the 1996 Act, or

(ii) an order for the destruction or forfeiture of infringing goods, material or articles under section 23 of the 1996 Act, or

(iii) an order for the forfeiture or disposal of an infringing copy, article or device under section 145 of the 2000 Act, or

(iv) an order for the forfeiture or disposal of an illicit recording, article or device under section 264 of the 2000 Act, or

(v) an order for the forfeiture or disposal of an infringing product or article under section 72 of the 2001 Act,

shall be by originating notice of motion grounded upon an affidavit, and shall be served by the applicant, by personal service or by prepaid registered post, at least seven days before the date of the sitting of the Court to which it is returnable:

(a) on the respondent thereto,

(b) on any other person appearing to have an interest in the goods, materials, articles, copies, devices or products concerned, and

(c) on any other person directed by the Court to be served.

(2) Where an application has been made, and remains undetermined, in a criminal proceeding, for the delivery up of some or all of the same article(s), copies, recordings, devices or products, an application under this rule shall not be determined until the determination of the application in the criminal proceeding.

(3) Notwithstanding sub-rules (1) and (2), the Court may, where it has determined an intellectual property claim, determine an application under section 19 of the 1996 Act made orally to the Court concerning infringing goods, material or articles which were the subject of that intellectual property claim, without the necessity for the issue of a further originating notice of motion, provided that the Court is satisfied that all persons having an interest in the infringing goods, material or articles concerned are before the Court and have had an opportunity to be heard.”

EXPLANATORY NOTE

(This note is not part of the Instrument and does not purport to be a legal interpretation.)

These rules amend the Circuit Court Rules by the insertion of a new Order 5D to prescribe the procedure in intellectual property claims.

The following update has been machine-translated from Spanish.

“Dear Users, it is reported that on Monday, September 27, 2021, the following agreements on industrial property have been published in the Diario de Centro América (link for their disposal):

Patents and Industrial Designs Department:

Ministerial Agreement No. 396-2021, Apply the International Patent Classification (CIP), established in the Strasbourg Agreement, in its current edition for the year two thousand twenty-one.

(https://rpi.gob.gt/wp-content/uploads/2021/09/Acuerdo-Ministerial-No.-396-2021-CIP-Arreglo-Estrasburgo.pdf)

Ministerial Agreement No. 398-2021, Apply the International Classification of Industrial Designs, thirteenth edition of the Locamo Agreement.

(https://rpi.gob.gt/wp-content/uploads/2021/09/Acuerdo-Ministerial-No.-398-2021-DI-Arreglo-Locarno.pdf)

Trademarks and Other Distinctive Signs Department:

Ministerial Agreement No. 397-2021, Apply the International Classification of Products and Services for the Registration of Trademarks (Nice Classification) eleventh edition.

(https://rpi.gob.gt/wp-content/uploads/2021/09/Acuerdo-Ministerial-No.-397-2021-Clasificacion-Niza-11ma..pdf)”

The following update has been machine-translated from Spanish.

“Range of the standard : Draft law. Subject : Industrial property. Agency : Spanish Patent and Trademark Office, OA

Summary:  Through this draft law, Law 17/2001, of December 7, on Trademarks, Law 20/2003, of July 7, on the Legal Protection of Industrial Design and Law 24/2015, are partially modified, of July 24, Patents, in order to address a joint reform of the three main industrial property laws through a single legal text. Thus, it is intended to carry out an update of certain aspects related to industrial property rights, in such a way that the people who own them and the rest of the actors involved enjoy greater legal certainty, while proceeding to the clarification of certain aspects that the practice carried out since the last reforms has shown to be confusing.

In particular, the reasons that justify the need to reform Law 17/2001, of December 7, on Trademarks again, are due to the opportunity to make certain adjustments to said regulations in order to provide it with greater coherence and precision. To this end, substantive and procedural norms are introduced that are recommended by the experience achieved, as well as by the practices followed in neighboring countries. Likewise, these changes are intended to respond to different situations that have arisen in recent times in our society in order to provide greater protection to applicants and holders of distinctive signs.

In the current regulatory context, the reform of Law 20/2003, of July 7, on the Legal Protection of Industrial Design, responds to the adaptation of the regulations to the international and European context, the clarification of some of its precepts and the increase of legal security in economic traffic, as well as the need to adapt its spirit to the regulatory changes that have occurred. In particular, the proposal for legislative modification of designs responds to the current needs of a dynamic and increasingly virtual market that requires, in turn, a procedure that reflects these particularities through the greater speed and simplicity of its procedures.

More than four years after the entry into force of Law 24/2015, of July 24, on Patents, both formal and substantive reasons justify the need to address a reform of said Law. On the one hand, the experience of These years have shown the need to provide greater clarity and coherence to different provisions in order to provide greater legal certainty for users of the system. Likewise, deficiencies have been detected that are intended to be corrected with the proposed modifications. Another objective that is intended to be achieved with the legislative amendment is to adapt Spanish patent regulations to the normative and interpretative changes operated in the field of patents at the international level. Thus, for example, it has given rise to intense debates, both within the European Patent Office, and the European Union, the clarification of those inventions excluded from protection because they are essentially biological processes, as well as the products obtained exclusively from these processes. Finally, those legal figures that have led to an improvement in the patent system in neighboring countries have been introduced into our legislation, such as derived utility models. 

Term of submission : Term to present allegations from October 21 to November 19, 2021 .

Presentation of allegations :

The allegations may be sent to the email address:  CoordinacionJuridica@oepm.es

Only observations in which the sender is identified will be considered.

In general, the answers will be considered non-confidential and, consequently, freely disseminated. The parts of the information that are to be considered confidential must be specifically indicated and delimited in the text itself, giving reasons for such qualification.

Draft text

MAIN of the Preliminary Project“