Judgment of the Court of Justice of 11 September 2025, Salaparuta (C-341/24). Facts Duca di Salaparuta SpA It owns several trademarks that include the word "Salaparuta" for wines of class 33, among them: Italian trademark no. 511337 SALAPARUTA, registered on July 13, 1989. European Union Trademark No. 001302835 SALAPARUTA, registered on October 25, 2000. These brands are used to market wines that have no connection to the Italian municipality of Salaparuta, located in Sicily. On February 20, 2006, the Italian authorities recognized the Salaparuta Controlled Designation of Origin (DOC Salaparuta) to designate wines made with grapes from vineyards located in that municipality. This national protection was extended to the European Union after the Commission published a list of quality wines produced in specified regions (vcprd), which included the Salaparuta designation. From that moment on, the name, referred to from now on as PDO Salaparuta, became part of the electronic register of protected designations of origin and protected geographical indications, acquiring effects throughout the Union from 1 August 2009. On February 8, 2016, Duca di Salaparuta filed a lawsuit before the Tribunal di Milano requesting the annulment of the DOC Salaparuta and the DOP Salaparuta, alleging that they were misleading designations that interfered with his well-known brand for Salaparuta wines. On February 16, 2021, the court dismissed the claim, considering the rule of the preeminence of the PDO over the trademark applicable, without prejudice to the fact that the owner could continue to use his trademark under certain conditions. This judgment was appealed by Duca di Salaparuta and confirmed by the Court of Appeal of Milan by judgment of 5 May 2023, in which it was established that the matter should be resolved in accordance with Council Regulation No 1493/1999 of 17 May 1999 establishing the common organisation of the wine market, in force in 2006 when the Salaparuta PDO was recognized. This Regulation conferred automatic protection as PDO, within the Union, to the PDOs communicated by the Member States to the Commission and established in its Annex VII, F, point 2, letter b), the primacy of the PDO over trademarks. Duca di Salaparuta appealed again to the Supreme Court of Cassation, arguing that Regulation No. 1493/1999 was not applicable, since, in his opinion, the publication in the European Union's e-Bacchus register in 2009 implied the application of the Regulations in force at that time, namely Regulation No. 479/2008, Regulation No. 1234/2007 or even Regulation No. 1308/2013, which excluded the protection of a PDO when, taking into account the reputation and notoriety of a previous trademark, consumers could be misled about the identity of the wine. In response to this appeal, the Italian Supreme Court referred two preliminary questions to the CJEU: Whether the Salaparuta PDO recognized in 2006 should be considered to have maintained its effects and, therefore, Regulation No 1493/1999 should be applicable, or whether, on the contrary, national protection had been replaced by the Salaparuta PDO throughout the Union, and the Regulations invoked by Duca di Salaparuta should be applied. In the event that the 1999 Regulation was deemed applicable, the question was whether the protection regime provided for in that Regulation was exhaustive in resolving cases of coexistence between names and trademarks, or whether the general principle of prohibition of misleading signs could be applied. Rulings The CJEU confirms that Regulation No. 1493/1999 is applicable, as it was in force when the Salaparuta DOC was recognized in Italy in 2006. The publication in the Official Journal of the European Union in 2009 did not imply a new registration, but simply the automatic extension of national protection to the Community level, as a consequence of Italy's communication to the Commission on the existence of that vcprd. Consequently, the conflict must be examined in accordance with the provisions of Annex VII, F.2, second paragraph of the aforementioned 2009 Regulation, which governs the coexistence regime between PDOs and trademarks. This provision establishes that the holder of a well-known and registered trademark for wines containing words identical to the name of a region may continue to use it if the registration was made at least twenty-five years before the official recognition of the geographical name by the Member State and the trademark has been effectively used without interruption. Furthermore, the Court added that the cancellation of the protection of a wine designation protected under Article 54 of Regulation No 1493/1999 was not possible except at the initiative of the Commission, and only until 31 December 2014, when the conditions laid down in Article 34 of Regulation No 479/2008 were not met. As regards the second question, the Court declared that the general principles could not invalidate the conclusion on the exhaustiveness of the regime established in Annex VII, F.2, second paragraph of Regulation No 1493/1999, which governs conflicts with earlier well-known trademarks registered for wines and containing words identical to a PDO. Commentary The CJEU's decision is of particular importance, as it precisely defines the legal framework applicable to VCPRDs published in the Official Journal of the European Communities pursuant to paragraphs 4 and 5 of Article 54 of Regulation No 1493/1999. The Court clarifies that this publication does not imply the replacement of the pre-existing national protection, but rather constitutes an extension of its recognition to the European Union sphere. This interpretation reinforces the legal certainty of the holders of PDOs recognized under the regime prior to 2009, guaranteeing the primacy and stability of their rights, which cannot be annulled except in truly exceptional situations. Also of great interest is the confirmation, already declared in other judgments such as that of February 27th...Read more

Judgment of the Court of Justice of 21 March 2024, Jamendo (C-10/22). Facts The judgment stems from the litigation between Liberi editori e autori (“LEA”) and Jamendo, in relation to the intermediation activity that Jamendo is carrying out in matters of copyright in Italy, allowing authors and rights holders to authorize the use of their musical works, especially in digital and commercial environments. LEA is a collective management entity that is taking action against Jamendo, an independent management operator (“OGI”) based in Luxembourg that has been operating in Italy since 2004. The dispute arises because, according to Italian regulations, the collective management of copyright was, in practice, reserved for entities authorized at the national level, which prevented operators established in other Member States from providing such services in Italy. LEA argued that Jamendo could not legally operate in Italian territory. Given the doubts about the compatibility of this national legislation with EU law, the Tribunale ordinaria di Roma referred a preliminary question to the Court of Justice of the European Union (CJEU), focusing on the interpretation of Article 56 TFEU (free provision of services) and Directive 2014/26/EU on collective management of copyright and related rights. Rulings The Court of Justice of the European Union first analyzes whether Directive 2014/26 is the appropriate rule to apply in this case and concludes that, although Article 2(4) extends the application of certain provisions of that Directive to IGOs, it cannot be interpreted as obliging Member States to ensure that rights holders have the right to authorise an IGO. The Court then analyzes Jamendo's activity in light of Article 56 of the Treaty on the Functioning of the European Union (TFEU), which prohibits Member States from adopting measures that make it impossible, impede or obstruct the free provision of services by operators established in another Member State. The Court concludes that the activity of independent management operators constitutes a provision of services within the meaning of Article 56 TFEU, and therefore the national legislation governing their access to the market must respect the free provision of services. In this respect, by not considering less burdensome alternatives and opting for such a broad restriction, the Italian regulations violate Article 56 TFEU, as they impose a disproportionate limitation on the free provision of services. Thus, the Court makes it clear that Italy cannot reserve copyright intermediation solely to authorized national entities when this poses an unjustified obstacle to operators from other Member States. Commentary The Court of Justice's ruling is part of a consolidated line of jurisprudence that affirms the primacy of the fundamental freedoms of the internal market over national regulations that, in the field of intellectual property, generate exclusionary or protectionist effects. The Court recalls that the collective management of copyright, even when serving legitimate purposes of protecting rights holders, constitutes an economic activity subject to the requirements of Article 56 TFEU. From this perspective, the ruling is particularly relevant in defining the scope of Directive 2014/26/EU, clarifying that it does not impose on Member States the obligation to guarantee rights holders the possibility of authorizing independent management operators, but neither does it legitimize national restrictions that prevent such operators from accessing the market. In this way, the Court avoids an extensive interpretation of the Directive that could justify regulatory closures incompatible with Union law. Furthermore, the ruling has a clear practical application in the context of the digital and cross-border exploitation of protected works, where the existence of national barriers hinders the efficient granting of licenses. By reinforcing the principle of free provision of services, the CJEU fosters a more competitive and flexible environment, to the benefit of both rights holders and users. In short, the Court's ruling contributes to the harmonization of the European collective management market, while obliging Member States to review their regulatory frameworks to ensure that the requirements imposed on operators are truly proportionate and non-discriminatory, thus guaranteeing the balance between the protection of copyright and the effective functioning of the internal market. Mabel Klimt, Managing Partner of ELZABURU.

Judgment of the Court of Justice of 11 January 2024, Inditex (C-361/22) Facts The Spanish Supreme Court submits a request for a preliminary ruling concerning the interpretation of Article 6(1)(c) of Directive 89/104/EEC. The request is filed within the framework of a lawsuit between Industria de Diseño Textil, SA (hereinafter, “Inditex”) and Myalert, SA (hereinafter, “Buongiorno”) for an alleged infringement of the rights conferred by a national trademark owned by Inditex for the use made by Buongiorno of a sign identical to that trademark without the consent of Inditex. The dispute arose from an advertising campaign launched by Buongiorno, in which potential customers were encouraged to participate in a raffle, one of the prizes being a ZARA gift card worth 1.000 euros. Buongiorno is a provider of information services via the Internet and mobile telephony, which in 2010, the date on which the events that gave rise to the Judgment occurred, launched an advertising campaign for the subscription of a paid service, consisting of the sending of multimedia content via SMS, for whose growth among the public it included a series of promotional activities, such as participation in the contest described above. Inditex considered that Buongiorno's use of the Spanish national brand ZARA infringed its exclusive rights, and filed a lawsuit before the Commercial Court No. 2 of Madrid, exercising an action for trademark violation. Inditex based the action on the existence of a risk of confusion, the exploitation of the brand's reputation and the damage caused to said reputation. Buongiorno denied the infringement of such rights, arguing that the use made of the ZARA brand had been a one-off use, not made as a trademark, with the purpose of indicating what one of the gifts offered to the winners of the draw consisted of. Buongiorno considered that this use was referential and fell within the lawful uses of other people's distinctive signs. After the Court of First Instance dismissed Inditex's claim, the company filed an appeal with the Provincial Court of Madrid, which in turn dismissed the appeal, considering that the use made by Buongiorno did not damage the reputation of the ZARA brand and that there was no undue exploitation of its reputation. Inditex lodged an appeal with the Supreme Court, which, as the referring court, posed the following question: “Should Article 6.1(c) of Directive [89/104] be interpreted as implicitly including within the scope of trademark law the more general conduct now referred to in Article 14.1(c) of Directive [2015/2436]: use of the trademark to designate goods or services as belonging to the proprietor of that trademark or to refer to them?” The referring court considered that Buongiorno’s use of the ZARA trademark fell within the scope defined by Article 37(1)(c) of the Trademark Act, in its initial version, which was applicable ratione temporis to the dispute that was the subject of the appeal, and which was equivalent to that of Article 6(1)(c) of Directive 89/104. The Spanish Supreme Court considered that Buongiorno's conduct might fit better under Article 14(1)(c) of Directive 2015/2436 than under Article 6(1)(c) of Directive 2008/95. Rulings The Court of Justice concludes that the scope of Article 6(1)(c) of Directive 2008/95 is more limited than that of Article 14(1)(c) of Directive 2015/2436, insofar as Article 6(1)(c) refers only to the use in the course of trade of the mark where it is necessary to indicate the purpose of a product or service. This interpretation is corroborated by the genesis of the Directive. The Court recalls that the purpose of Article 6(1)(c), which consists of limiting the effects of trademark law, is none other than to reconcile the fundamental interests of the protection of trademark rights and the free movement of goods and the free provision of services in the internal market. In this respect, the Court considers that the scope of application of this provision is not limited to situations in which it is necessary to use a trademark to indicate the destination of a product "as an accessory or spare parts". The situations included within the scope of the aforementioned provision must be limited to those that correspond to the objective of the limitation, to the extent that it was foreseen, so that suppliers of complementary products or services of a product may use said trademark to inform the public in a comprehensible and complete manner of the destination of the product they market or the service they offer, understood as the functional link between their products or services and those of the trademark holder.   During the drafting of Directive 2015/2436, the aim was to extend the scope of the limitation previously set out in Article 6(1)(c) of Directive 2008/95 to allow the owner of a trademark to prevent the fair and honest use of the trademark to designate products or services as his own, or to refer to them. Therefore, the scope of the limitation provided for in the earlier version of the Directive article concerning the limitation of rights conferred by the trademark (i.e., Article 6.1(c) of Directive 2008/95) is narrower than that of the later version of the same (i.e., the wording of Article 14(1)(c) of Directive 2015/2436). Therefore, it answers that Article 6(1)(c) of the Directive must be interpreted as referring to...Read more

Order of the Court of Justice of 16 July 2024, Genmab (C-181/24) Facts The pharmaceutical company Genmab obtained a first marketing authorization (“MA”) for a medicinal product “A” containing the active ingredient ofatumumab (the “earlier MA”). Subsequently, it revoked said AC. Later, Genmab obtained a second AC (the “subsequent AC”) for a new drug “B”, intended for a different therapeutic indication than drug “A”; but whose active ingredient was also ofatumumab. Based on this “subsequent AC”, he requested, before the Hungarian Patent Office, that a supplementary protection certificate (“CCP”) be issued for the drug “B”. The Hungarian Patent Office refused the application, considering that the later AC was not the first AC for the purposes of the requirement of art. 3(d) of Regulation (EC) No 469/2009 (“CCP Regulation”), for ofatumumab. Genmab filed an appeal with the Hungarian courts against the previous decision of the Hungarian Office. The company argued that the “first AC” for the purposes of that provision could only be an AC in force at the date of the CCP submission and that, in that sense, the Hungarian Office had erred in considering that the “first AC” of ofatumumab was the one that had been granted for drug “A”, since that AC was no longer in force at the time of applying for the CCP for drug B. In these circumstances, the referring Hungarian Court decided to suspend the proceedings and refer a preliminary question to the CJEU for clarification of the interpretation to be given to the requirement of art. 3(d) of the CCP Regulations. Rulings The CJ states that, for the purposes of art. 3(d) of the CCP Regulations, the relevant “first AC” is the one granted first chronologically for the same active ingredient, even if it is no longer in force. Withdrawal of the initial AC does not eliminate its status as a first authorization. Therefore, a CCP cannot be granted when there is a "previous AC" (even if it has been revoked and is not in force at the time the CCP is requested) and the application is based on a subsequent AC for the same active ingredient. What matters is the temporal order of the authorizations, not their validity. Comment The CJ clarifies that the mere fact of revoking a “previous AC” does not allow restarting the possibility of obtaining a CCP on the basis of a “subsequent AC” for the same active ingredient. The logic of the system remains focused on the first time the active ingredient enters the market. The decision consolidates a restrictive approach consistent with the line set in previous CJEU rulings on products or active ingredients already authorized and with different therapeutic applications. It also aims to prevent strategies of artificially prolonging exclusivity by revoking a "previous AC" and requesting a "subsequent AC" for the same product or active ingredient. María Cadarso, Senior Associate in the Legal area.

Judgment of the Court of Justice of 20 June 2024, GEMA (C-135/23). Facts The case originates from a dispute between the collective management society GEMA and GL, a company that operates a residential building in Germany. GL installed televisions equipped with indoor antennas in several of the apartments, allowing them to receive signals and broadcast transmissions, including music, to the tenants. GEMA considered that this making available by GL constituted a communication to the public of protected works, in contravention of the exclusive right of communication to the public provided for in Directive 2001/29/EC. The referring German court —Amtsgericht Potsdam— raised a preliminary question before the Court of Justice of the European Union for the interpretation of the concept of communication to the public in this case. Rulings The Court of Justice of the European Union interprets Article 3(1) of Directive 2001/29/EC and establishes the following criteria: The concept of “communication to the public” is not exhausted by the mere making available of technical facilities (such as televisions with antennas) if there is no additional act that effectively makes protected works available to a public different from the one originally intended. The profit motive of making the devices available, although relevant, does not in itself determine the existence of communication to the public in the European sense; the decisive factor is whether an act occurs that transfers the protected works to a new public beyond the usual private reception. It is for the referring court to determine, in accordance with the specific facts and applicable national regulations, whether GL's conduct constitutes an act of communication to the public in accordance with European criteria. The Court notes that assessing whether communication to the public exists requires a joint factual and legal examination, taking into account the existence of a new public and the effective control of making the information available. Commentary This judgment contributes to the Court's consolidated case law on the concept of "communication to the public" in the field of intellectual property, developed in a long series of pronouncements that seek to balance the protection of authors' rights with legal certainty and technological neutrality. The specific novelty of case C 135/23 lies in transferring to the context of rented housing criteria previously applied to other environments (such as hotel establishments or public places), clarifying that it is not enough to make available technical equipment that can receive emissions: it is necessary to determine whether there is effectively making protected works available to a “new public” different from the original public of the transmission. This line of interpretation seeks to avoid a disproportionate extension of the exclusive right of communication to the public that could encompass activities of a purely technical nature. Furthermore, the ruling underlines the importance of the new public criterion and technological neutrality: the mere technology used (televisions with an indoor antenna) cannot, by itself, generate a new act of communication if there is no effective making of works available to the public. In this way, the Court reinforces a functional approach that requires a real connection with the exercise of the exclusive rights provided for in Directive 2001/29/EC, avoiding formalistic interpretations that would have broad restrictive repercussions on legitimate activities of owners and tenants. In conclusion, the CJEU precisely defines the elements that constitute the concept of communication to the public, offering a clear guideline for national courts when faced with similar cases, and ensuring a balanced application of EU copyright law. Inés de Casas, Senior Associate, Legal Area

Judgment of the Court of Justice of 18 January 2024, Hewlett Packard (C-367/21) Facts The present judgment arises from a request for a preliminary ruling submitted by the Polish courts to the CJEU concerning the interpretation and scope of art. 13.1 of Regulation (EC) no. 207/2009 on the Community trademark (current art. 15.1 of Regulation 2017/1001 on the EU M (“EURM”)) in relation to arts. Articles 34 and 36 TFEU. The facts of the case were as follows: Hewlett Packard Development Company LP (“Hewlett Packard”) is the holder of two MUEs on the HP trademark. Hewlett Packard markets computer equipment products under these brands through authorized representatives who agree not to sell them, except to end users, to persons outside their distribution network. Furthermore, these authorized representatives are required to purchase these products exclusively from other authorized representatives or from Hewlett Packard itself. HP products do not include any marking system that, by itself, allows determining whether or not a copy is intended for the European Economic Area (EEA) market. Senetic, SA (“Senetic”) engages in the distribution of computer equipment. Senetic introduced products designated with the HP MUEs in Poland. He purchased these products from vendors established in the EEA territory, other than the official distributors of Hewlett Packard products, after receiving assurance from these vendors that the marketing of such products in the EEA did not infringe the exclusive rights of this company. In addition, Senetic unsuccessfully requested confirmation from Hewlett Packard's authorized representatives that these products could be marketed in the EEA without infringing on Hewlett Packard's exclusive rights. Hewlett Packard filed a trademark infringement action against Senetic in Polish courts to stop the company's sales of HP products. In its defense, Senetic invokes the exhaustion of the rights conferred by the plaintiff's EUMs, alleging that the HP products were previously marketed in the EEA by Hewlett Packard or with its consent. The Polish Court of First Instance decided to suspend the proceedings and refer two preliminary questions to the CJEU concerning the interpretation of art. 15.1 of the RMUE. Rulings The CJEU only examines the second preliminary question in the judgment. This raises the question for the CJEU of whether, in circumstances such as those of the main proceedings, the burden of proof of exhaustion of the rights conferred by the MUEs can fall exclusively on the defendant. In its response, the CJEU points out, as a starting point, that neither the EU Trademark Regulation nor Directive 2004/48 regulate the issue of the burden of proof of exhaustion conferred by the trademark. It is a matter that, in principle, is governed by national law. However, the CJEU adds that national methods of administering and assessing proof of exhaustion of trademark rights must respect the requirements arising from the principle of free movement of goods and, therefore, must be modified where they may allow the trademark holder to compartmentalize national markets. This leads the CJEU to conclude that, in circumstances such as those in this case, it will be possible to modify the rules of evidence. That is, when, on the one hand, the parallel products: do not bear any marking that allows third parties to identify the market in which they are intended to be marketed; are distributed through a selective distribution network whose members can only resell them to other members of that network or to end users; and have been acquired by the defendant in the EU/EEA after having obtained from the sellers the guarantee that they could be legally marketed in that area, AND, on the other hand, the trademark holder has refused to carry out the verification of the legality of the products in question at the request of the acquirer (the defendant), and the defendant's suppliers were not willing to reveal their own sources of supply. Specifically, in these circumstances, the burden of proof shall be distributed so that: it is up to the trademark holder to prove that he or she carried out or authorized the first placing of the copies of the products in question outside the EU/EEA; and if this is proven, it is up to the defendant to prove that those same copies were subsequently imported into the EEA by the trademark holder or with his or her consent. Commentary The judgment in question is relevant because it modifies the current rules on evidence (see Van Doren + Q (C-244/00) case) to balance the interests of trademark holders and legitimate parallel importers. However, the modification of this regime is not total since the reversal of the burden of proof proposed by the CJ is only intended to operate with regard to the proof of the non-community origin of the product from parallel production (which under the new doctrine would correspond to the trademark holder); but only within the framework of the factual circumstances described above (see sections). 61 and 67 of the judgment). Enrique Armijo, Partner in the Legal Department of ELZABURU.

Judgment of the Court of Justice of 4 September 2025, LEGO (C-211/24). Facts about the judgment Lego A/S (hereinafter referred to as Lego) is the holder of EU designs no. 001950981-0001 and 002137190-0002, relating to building elements belonging to a construction set, and registered on 22 November 2011 and 16 November 2012, respectively, representations of which are included below: EU design no. 001950981-0001 EU design no. 002137190-0002 Pozitív Energiaforrás (hereinafter referred to as Positív) attempted to import into Hungary construction sets comprising, among others, the building elements represented below in the second column: EU designs of LEGO Building elements of Pozitív Energiaforrás Following the complaint filed by Lego, the Tax Administration and Hungarian customs ordered the seizure of the construction sets and initiated infringement proceedings for suspected violation of Lego's industrial and intellectual property rights. On June 22, 2022, Lego filed a request for provisional measures to maintain the embargo. The request was denied by the court of first instance, considering that Positiv's building elements produced a different general impression on the informed user than Lego's designs. Lego filed an appeal with the Capital High Court, which modified the previous order and ordered the seizure of Positiv's games, considering that Lego's designs did not produce a different general impression on the informed user than Positiv's building elements. Positív filed an appeal with the Supreme Court of Hungary, which upheld the previous decision of the Capital High Court. Lego then filed an infringement action against Positív before the Capital General Court. The Court questioned what the skills of the “informed user” of Article 10 of Regulation (EC) No 6/2002 were, when it came to assessing the overall impression made on him by the designs of Article 8(3) of that Regulation (i.e., designs that allow the assembly or connection of multiple mutually interchangeable products within a modular system). The interpretation of Article 89 of said Regulation was also raised, and more specifically, the scope of the concept of "special reasons". In these circumstances, the General Court of the Capital stayed the proceedings and referred the following questions to the CJEU for a preliminary ruling: 1. In a case such as that in the main proceedings, in which the proprietor invokes a design protected under Article 8(3) of Regulation No 6/2002 in respect of one or more building blocks of a construction set of the defendant which fulfill the same assembly function as the blocks of the design of the applicant, is a judicial practice compatible with EU law whereby the courts, in determining the scope of protection, within the meaning of Article 10 of the Regulation, of the design of the applicant: rely on an informed user who, regarding the function of the design and that of the product, possesses the technical knowledge that can be expected of an expert in the field; Do they consider an informed user to be one who compares the plaintiff's drawing or model and the defendant's product through a thorough, technical, and methodical examination, and assume that this informed user forms their overall impression of the drawing or model and the product, above all, as a technical opinion? 2. In the event that, in a case with the characteristics described, it is concluded that the protection conferred by the applicant's design or model extends to one or a few pieces present in the defendant's construction sets, which, however, represent a small number of building blocks in relation to the total, is it in accordance with EU law to recognize a discretionary power whereby, taking into account the partial nature of the infringement, the minor seriousness and proportion of the infringement in relation to the goods as a whole and the interests associated with the unrestricted trade of a construction set that is, for the most part, uncontested, reasons which qualify as "well-founded grounds" for the purposes of Article 89(1) of the Regulation, the court dismisses the claim to prohibit the continued importation of the construction set into the country? Rulings on the case The judgment examines both preliminary questions separately and sets out its interpretation of Article 10 and Article 89(1) of Regulation No 6/2002. As regards the first preliminary question, it concludes that Article 10 must be interpreted as meaning that the scope of protection of a design pursuant to Article 8(3) must be assessed taking into account the overall impression produced by that design on an informed user who, without being a designer or technical expert: is familiar with the different designs existing in the sector concerned, has a certain degree of knowledge about the elements that those designs normally contain and, due to his interest in the products concerned, pays a relatively high degree of attention when using them as elements of the modular system of which they form part. The impression produced on a user who, having technical knowledge analogous to that of a professional, thoroughly examines the drawing or model in question and whose overall impression rests mainly on technical considerations should not be taken into account. As regards the second preliminary question, it states that Article 89(1) must be interpreted as meaning that the fact that an infringement only affects certain elements of a modular system, few in number in relation to the whole of the components of ...Read more

Judgment of the Court of Justice of 6 March 2025, Orchestre national de Belgique (C-575/23). 1. Key facts of the case The case arose from a dispute between several musicians of the Orchestre National de Belgique and the Belgian State, following the adoption of a Royal Decree of 1 June 2021 regulating the related rights of performers employed under administrative status. That decree imposed the automatic transfer of those rights to the employer, without prior consent. The performers challenged the regulation before the Belgian Conseil d'État, alleging its incompatibility with EU law, in particular Directives 2001/29/EC, 2006/115/EC and (EU) 2019/790 on copyright and related rights. 2. The Court's findings The CJEU addressed three main issues. First, the Court of Justice (CJEU) analyzes whether Directive (EU) 2019/790 applies to the case, even though the Royal Decree was adopted before the transposition deadline. The CJEU considers that the Directive does apply to assignments of rights that take effect after June 7, 2021, as they refer to acts not yet completed. Second, the CJEU interprets the concept of "performer" broadly, concluding that it also includes musicians employed under administrative contracts. Thus, such performers enjoy the same rights as performers under ordinary employment contracts. Finally, the CJEU declares that Directives 2001/29 and 2006/115 preclude national legislation that imposes, by regulation, the assignment of performers' rights without their prior consent. Consent is the core of the exclusive right, and its elimination would render the protection recognized by EU law meaningless. Commentary on the Judgment: The CJEU judgment strengthens the protection of performers against public authorities by confirming that their prior consent is essential for the transfer of related rights. The CJEU emphasizes that this requirement is an essential part of the European intellectual property system and that national laws cannot override it through general provisions. The ruling is particularly relevant for public cultural institutions, which will have to adapt their regulations to respect artists' consent. Furthermore, it clarifies the temporary application of Directive 2019/790 and consolidates the uniform interpretation of related rights in the EU, strengthening the artist's position vis-à-vis public authorities. Ana Sanz, Associate Partner, Legal Department. 

Supreme Court Judgment of June 30, 2025, Ron Barceló (ECLI:ES:TS:2025:3307) 1. Facts: Several beverage distribution companies filed a lawsuit against Barceló Comercial Internacional, SA and Importaciones y Exportaciones de Varma, SA, requesting that it be declared that they had acted unlawfully by using their rights over the Ron Barceló trademark to prohibit the marketing of products with said trademark within the European Economic Area (EEA), incurring in acts of unfair competition and infringing European competition defense rules. The plaintiffs sought a declaration that the acquisition of Ron Barceló from EEA suppliers at prices lower than those set by Spanish distributors was lawful since, as the goods originated in the EEA, the rights to the Ron Barceló trademark had been exhausted. The defendants opposed the claim, alleging that there was no exhaustion of rights, and filed a counterclaim exercising the action for infringement of the Ron Barceló trademarks in relation to the plaintiffs' sales of products with said trademark without their authorization. In the first instance, the European Union Trademark Court No. 1 of Alicante issued a judgment dismissing the claim in its entirety and upholding the counterclaim. In the second instance, the 8th Section of the Provincial Court of Alicante (European Union Trademark Court) essentially confirmed the first instance ruling, with some modifications to the content of the judgment. The Provincial Court considered that, although the lawsuit did not name it as such, what was being exercised in it was a negative action of infringement of the Ron Barceló trademark. Although this action is not regulated in the Trademark Law, it is contemplated in article 121.1 of the Patent Law, which the Court considers applicable by reference provided in the first additional provision of the Trademark Law. However, it dismisses the action because it considers that the necessary circumstances for the exhaustion of the trademark right were not present in the case. The plaintiffs filed an extraordinary appeal for procedural violation and cassation against the appeal judgment, which were entirely dismissed by the judgment under comment. 2. Rulings In their appeal, the plaintiffs raised several grounds for cassation regarding the issue of the trademark owner's consent to the marketing of products with the same in the EEA and the burden of proof regarding the existence of the exhaustion of the trademark right. The Supreme Court, relying on the copious jurisprudence of the Court of Justice of the European Union on exhaustion, begins by recalling that, as a general rule, the CJU understands that the trademark holder has given his consent to market his products within the EEA when he has been able to control the marketing of the products by third parties, since this control allows safeguarding the essential function of the sign of identifying the commercial origin of the product. Furthermore, the Supreme Court acknowledges that consent can be tacit, but emphasizes that the Court of Justice has indicated that, in order to appreciate the existence of such tacit consent, certain prior, concomitant or subsequent elements and circumstances must be present that reveal with certainty the waiver of the trademark holder to oppose his exclusive right. And, in this case, the Supreme Court agrees with the Provincial Court that such certainty does not occur. Regarding the burden of proof, the appellants invoked the case law of the CJEU which establishes the reversal of the burden of proof in those cases in which imposing that burden on the alleged infringer allows the trademark holder to compartmentalize national markets, as may occur in cases where it markets its products in the EEA through an exclusive or selective distribution system. The Supreme Court reviews the CJEU's rulings on this issue and points out that the burden of proof for exhaustion varies depending on knowledge of the place of first marketing of the product: if it is unknown and there is a risk of market compartmentalization, the burden of proof will fall on the trademark holder and not on the parallel importer; however, if it is known from the outset that the product was first marketed outside the EEA and the trademark holder can prove it, there is a presumption that they have not consented to the subsequent entry of the products into the European market and it will be up to the parallel importer to prove that such consent has occurred. Based on these premises, in the case under consideration, the Supreme Court rejects the appeal of the plaintiffs, since it considers that they are making a bet on the issue since it has not been proven in the instance that Ron Barceló is distributed under an exclusive distribution regime nor that there is a risk of market compartmentalization. Finally, the Supreme Court also rejects the grounds for appeal that argued that the fact that an EEA distributor was identified in the original labeling of the products was a determining indication of the existence of tacit consent. The Court considers that it could be an indication to be taken into account along with others to reach a certain level of proof in relation to consent, but that on its own it is not sufficient to declare the existence of tacit consent. 3. Commentary The relevance of this ruling lies in the confirmation of the possibility, recognized on appeal by Section 8 of the Provincial Court of Alicante, of bringing a declaratory action of non-infringement -negatory or boastful action- in matters of trademark rights, equivalent to that contemplated in article 121.1 of the Patents Law. In this sense, the reference to the regulation established in that precept has important consequences, among them the requirement to comply with the requirement of prior request to the holder of the right in the terms of the second paragraph of the article. In this case, one of the...Read more

Judgment of the Court of Justice of 19 December 2024, Teva Finland (C-119/22 and C-149/22) 1. Facts The matter stems from applications for supplementary protection certificate (“SPC”) filed by Merck Sharp & Dohme LLC based on a European patent (“base patent”) covering a DPP-4 inhibitor active ingredient (sitagliptin) and its possible combination with other active ingredients. In Finland, the first CCP on sitagliptin alone was obtained. Subsequently, Merck applied for a second SCP for a drug that combined sitagliptin with another active ingredient (metformin), on the same base patent. The plaintiff companies, Teva BV (and subsidiaries) (in case C-119/22) and Clonmel Healthcare Limited (in case C-149/22), challenged the validity of that second CCP before national courts, alleging that the sitagliptin + metformin combination did not meet the conditions of art. 3 of Regulation (EC) No 469/2009 (“SCP Regulation”), since metformin was in the public domain and the combined product would already have been the subject of another SCP. The national courts referred preliminary questions to the CJEU concerning the interpretation of the notion of “product” protected by the patent and whether a combined product can be subject to CCP when one of its components has already been subject to CCP. 2. Rulings The CJ declares that Article 3(c) of the CCP Regulation does not prevent the granting of a CCP for a product consisting of two active ingredients, even if one of those active ingredients has already been the subject, on its own, of a previous CCP. Regarding the condition in Article 3(a) - which requires that the product be protected by a basic patent in force - the Court reiterates its case law (as in the Teva UK C-121/17 judgment) and clarifies that it is not enough for the combination to be mentioned in the claims: it is necessary that, from the point of view of a person skilled in the art and in light of the description and drawings in the patent, the combination constitutes part of the protected invention. Consequently, the fact that the second substance is in the public domain on the priority date does not in itself exclude the granting of the CCP, provided that the combination is necessarily included in the invention of the basic patent. 3. Commentary This ruling provides clarity on the possibility of obtaining CCP for therapeutic combinations, even if one of the components has already been subject to complementary protection. At the same time, the ruling emphasizes that the therapeutic combination must be included in the invention protected by the base patent, and not just be a mention. This ensures that the CCP covers the specific advances that justify the patent. For patent holders, the lesson is twofold: first, the route of combined SCPs remains open; second, they must ensure that the base patent clearly discloses the combination, otherwise the protection may be challenged. María Cadarso, Senior Associate in the Legal Area of ​​ELZABURU.