Decisions on patents from the Barcelona audience (2/2). Indirect Patent Infringement (I) Trademarks and appellations of origin (2/2)

 Two interesting decisions of the Provincial Court of Barcelona, ​​on patents, during 2020.

The second is the SAP Barcelona Judgment November 13, 2020. It very well defines indirect patent infringements: products that do not violate the patent itself; but they can be used to violate it. And it defines when the use is legitimate and when it is an indirect infringement.

INDIRECT PATENT INFRINGEMENT?

The plaintiff "Amador" is the holder of a patent for a procedure to regenerate bone tissue; his main claim centered on the preparation of a plasma gel from the blood of a patient. He sued SOLUCIONES BIOREGENERATIVAS S.L, a company that sold kits and centrifuges to obtain platelet-rich plasma, which were not directly covered by the patent. He alleged that the defendant had indirectly infringed the patent.

Art. 60 of the Patent Law says:

Prohibition of indirect exploitation of the invention.

1. The patent confers… on its owner the right to prevent… [from] delivering or offering to deliver means for the implementation of the patented invention relating to an essential element thereof to persons not authorized to exploit it, when the third party know or circumstances make it clear that such means are suitable for the practice of the invention and are intended for it.

2. The provisions of the previous section are not applicable when the means to which it refers are products that are currently in the trade, unless the third party incites the person to whom the delivery is made to commit prohibited acts in the previous article.

In the case, then, the patent holder could go against the third party that offers the kits and centrifuges necessary to obtain the platelet-rich plasma. If there is an indirect violation.

The Commercial Court considered that said kits and centrifuges infringed the patent "indirectly".

The defendant SOLUCIONES BIOREGENERATIVAS filed an Appeal against the Sentence and the Provincial Court of Barcelona has agreed.

WHEN IS THERE INDIRECT PATENT INFRINGEMENT?

The Patent Law only considers that there is indirect patent infringement, if:

The means are necessary to implement the patent.

The acquirer has no right to exploit the patent.

The indirect offender knows or should know the above.

Furthermore, if these products are already on the market, there will only be indirect infringement, if the one who puts them on the market induces the infringement.2.2.- Through the territory

Finally, the CJEU Judgment December 4, 2019 (Consorzio Aceto Balsamico di Modena / BALEMA). The Court limits the scope of protection of the Protected Geographical Indication (PGI) “Aceto Balsamico di Modena” and of the other PGIs. The protection of the IGP only extends against the use of the full name of the IGP.

The Consortium of Balsamic Vinegar Producers of Modena is the holder of the Protected Geographical Indication PGI “Aceto Balsamico di Modena”. He sued BALEMA, a German company that sells vinegar, such as "Balsamico" or "Deutscher Balsamico", for trademark infringement. The matter ended up before the Federal Supreme Court, which asked the Court of Justice of the European Union CJEU whether the protection of the “Aceto Balsamico di Modena” allows the use of individual words of the protected term to be prohibited.

The Court of Justice makes it clear that only the expression “Aceto Balsamico di Modena” is protected as a whole. This protection does not extend to the individual non-geographic words of that name.

Words that are generic or common can never be protected, even when they are incorporated into a protected expression as a whole.

The Court considers that the IGP is granted to “Aceto Balsamico di Modena”, because it is linked to a geographical area. This is what gives substantivity and distinctiveness to the whole.

The other generic words (incorporated in the name of the PGI) do not have distinctive capacity in themselves:

"Vinegar" is a generic term.

"Balsamic" is a common word, referring to vinegar with a sweet and sour taste.

Therefore, these words are not protected in themselves. Consequently, they can be used in other vinegars, which are not covered by the PGI “Aceto Balsamico di Modena”.