ELZABURU Blog - Industrial and Intellectual Property

Tag Archives: Patents

Lidl convicted in Spain of infringement of a European patent held by Vorwerk, manufacturer of the popular Thermomix kitchen appliance


Mercantile Court No. 5 in Barcelona issued a judgment on 19 January 2021, accepting in full the patent infringement claim lodged by the German company Vorwerk against Lidl Supermercados, the Spanish subsidiary of the German retailer Lidl.

The patent concerned is a European patent, validated in Spain, which protects some of the innovative technical features of the famous Thermomix kitchen appliance. The infringement involved the importation and sale in Lidl’s stores in Spain of a kitchen appliance under the brand Silvercrest, known commercially as Monsieur Cuisine Connect. This appliance is manufactured in Germany by another company.


Lidl contested the complaint, denying the infringement and filing a counterclaim seeking the invalidity of the patent. The counterclaim action was based, firstly, on the grounds for invalidity relating to added subject-matter. According to Lidl, during its prosecution at the European Patent Office, Vorwerk’s patent had been modified in such a manner that technical features that were not present in the original application were included in the first claim. However, in the court’s view, these features were implicit in the original description of the patent. Thus, a person skilled in the art would have considered them directly and unequivocally included in the same.

Lidl also questioned the patent’s inventive step, arguing that the technical features of the first claim would be obvious to a person skilled in the art based on the state of the art at the time the application was filed and several earlier patents protecting kitchen appliances held by Braun and Philips, among other companies.

The court also rejected these grounds for invalidity, applying the problem-solution approach in its analysis, in accordance with the practice of the European Patent Office and specialised courts. It thus concluded that a person skilled in the art would not have arrived at the technical solution offered by Vorwerk’s patent based on the combination of the earlier patents, given that none of them suggested or posed the technical challenge of creating a kitchen appliance which, in addition to processing or mixing foods, could also weigh them by means of the independent activation of both functions.

Having confirmed the validity of Vorwerk’s patent, the court examined the infringement of the patent by Lidl’s appliance. In this regard, the debate in the proceedings centred on whether the Monsieur Cuisine appliance incorporates the safety function that prevents intervention inside the mixing bowl while it is in operation. In light of the parties’ expert reports, the court found that this feature, as claimed in the patent, is present in Lidl’s appliance, along with the rest of the technical features included in the first claim.

Consequently, the judgment accepted all of the petitions set out in Vorwerk’s complaint, including the petitions to cease selling the infringing appliance and withdraw it from the market, and to pay compensation for damages sustained, the amount of which will be set at the enforcement stage when the judgment becomes final.

The judgment is not final and may be appealed by Lidl before the Provincial Appellate Court of Barcelona.


Author: Carlos Morán

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Is a folding bicycle an intellectual work protected by copyright?

Bicicleta Brompton plegada

After the Judgement by the CJEU of 11 June 2020 in the Brompton Case (C 833/18) the answer, as the song goes, is blowing in the wind. This is not surprising.

Let us recall the case. Brompton is an English company that markets a folding bicycle, sold in its current form since 1987, which had been protected as a patent due to its particular technical features: the bicycle can have three different positions (a folded position, an unfolded position and a stand-by position) enabling the bicycle to stay balanced on the ground.

Bicicleta Brompton abierta Bicicleta Brompton plegada

Once the patent rights expired, Brompton brought an action against the company Get2Get, on grounds of copyright infringement, for marketing a bicycle whose appearance is visually very similar to that of the Brompton bicycle and which may fold into the three positions mentioned in the preceding paragraph.

The question is, therefore, whether an object that is constrained by its technical characteristics, to the point that it was protected as a patent, can constitute an intellectual work. The CJEU returns the matter to the national court but highlights some important points.

For the Court it is true that the shape of the cited bicycle is necessary to achieve a particular technical effect, namely, the ability of that bicycle to fold into three positions, one of these enabling it to stay balanced on the ground. However, the national court must ascertain whether, notwithstanding this circumstance, the bicycle constitutes an original work resulting from an intellectual creation.

In this respect, the judgment warns that this is not the case where the realisation of a subject matter has been dictated by technical considerations, rules or other constraints which have left no room for creative freedom or room so limited that the idea and its expression become indissociable. Where the shape of the product is solely dictated by its technical function, that product cannot be covered by copyright protection.

In order to verify this, the national court must determine whether, through that choice of the shape of the product, its author has expressed his creative ability in an original manner by making free and creative choices and has designed the product in such a way that it reflects his personality.

At this point, the Court adds that the existence of other possible shapes which allow the same technical result to be achieved is not decisive in assessing the factors which influenced the choice made by the creator. Likewise, the intention of the alleged infringer is irrelevant in such an assessment.

As regards the existence of an earlier, now expired, patent in the case in the main proceedings and the effectiveness of the shape in achieving the same technical result, these factors should be taken into account only in so far as they make it possible to reveal what was taken into consideration in choosing the shape of the product concerned.

The Court reaches the conclusion that Articles 2 to 5 of Directive 2001/29 must be interpreted as meaning that the copyright protection provided for therein applies to a product whose shape is, at least in part, necessary to obtain a technical result, where that product is an original work resulting from an intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that the shape reflects his personality, this being for the national court to verify, bearing in mind all the relevant aspects of the dispute in the main proceedings.

In summary, it seems clear that the limits setting the boundaries between intellectual work and other industrial property rights (patents, designs, trademarks) remain unclear to a certain extent and that, in practice, national courts continue to have a wide scope of discretion in spite of, or thanks to, the criteria, so precise yet so ambiguous, laid down by the CJEU.


Author: Antonio Castán

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50th anniversary of the Moon landing: Legal aspects of space exploration

The celebration of the 50th anniversary of the Moon landing is a good opportunity to reflect on the impact of space exploration on technology, on legal protection of technology and on other legal aspects of space exploration.

The space race, which took place principally between the 1950s and the 1970s, provided the stimulus for significant technological advances. Since then, we have seen notable progress in numerous areas: civil and military telecommunications, propulsion systems, meteorology, Earth observation, mapping, etc. There have also been important scientific experiments with practical applications for our everyday lives. 

Mobile telephones (and their various features) are an example of how technology initially used in the field of space exploration has entered the domestic sphere. Moreover, the Moon missions and use by astronauts helped to popularise existing products, such as Velcro, and materials, such as Teflon.

Both NASA and the European Space Agency (ESA) have technology transfer programmes which enable them to market their patents and technologies in the private sector and which have given rise to numerous start-up companies. Indeed, many of the objects and technologies that we habitually use originate from space-related technology protected by different patents.

Most of this technology, while it has been used in space, was developed and tested here on Earth, and can therefore be protected under patent legislation. But what if an invention has been created in space, for example, on the International Space Station (ISS)? 

The Outer Space Treaty of 27 January 1967, which represents the basic legal framework of international space law, provides the legal basis for exploration and use of outer space. The treaty establishes that outer space shall be free for scientific research, and that the countries that are parties to the treaty shall provide and foster international cooperation in that research.

The ISS is an example of how it has been possible to carry out joint projects with positive results through international cooperation.

The ISS is governed by an agreement concerning cooperation on the Civil International Space Station (the International Space Station Intergovernmental Agreement of 1998), signed by the USA, Russia, Japan, Canada and the Member States of the ESA. In this agreement, it is stated that the ISS is made up of different modules belonging to different states, that each state has jurisdiction over its own module and, therefore, that its patent laws would be applicable to its module. The ISS system could serve as a model for future scientific space missions; for example, there are various projects on the horizon, such as the Mars missions or the return to the Moon, which have once again placed space exploration in the media spotlight.

Furthermore, the advent of new space activities (such as the first steps in space tourism, which has already made its way to the ISS), has led some countries to consider how to regulate such activities to bring them into line with international law.

Moreover, it is well known that patents are rights with a territorial scope. Therefore, in theory, conflicts could arise when a spacecraft of one country uses launch platforms or other facilities that are normally found in other countries with more favourable conditions. However, many national patent laws, influenced by Article 5ter of the Paris Convention for the Protection of Industrial Property, provide for exceptions stipulating that the holder of a patent may not assert its exclusive rights against third parties in the case of aircraft authorized to enter a territory, with regard to possible claims concerning parts, accessories, procedures, etc. that might infringe patents in force in that territory, thereby resolving the issue.

Space law is currently regulated by the Vienna-based United Nations Office for Outer Space Affairs (UNOOSA), which is responsible for implementing the space-related decisions of the United Nations General Assembly and keeping a record of objects launched into space.

It is impossible to imagine the world as it is today without space exploration. In 2069, the centenary year of the Moon landing, our daily lives will surely have been greatly transformed, largely thanks to technological advances in the space sector.

So, we must continue to make progress in space exploration and in the legal aspects of space exploration, in order to continue contributing to making life easier here on Earth.

Article originally published in Cinco Días
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Assessment of MWC Barcelona 2019

The Commercial Court of Barcelona and the European Union Trade Mark Courts of Alicante have published their report summarising the application of the duty service and fast-action protocol for the Mobile World Congress held last week in Barcelona (MWC 2019). The information provided in this report will be no surprise for those, such as ELZABURU, having experienced first-hand the procedural peripeteia at this Congress.

  1. The courts have handled and resolved 50 matters in total, representing a 42% increase when compared to those dealt with in 2018.
  1. 38 protective letters were submitted to avoid adopting preliminary injuctions inaudita altera parte, 36 of these in Barcelona with regard to patents and 2 in Alicante in relation to European Union trade marks and designs. They were all processed and resolved within 24 hours.
  1. In order to verify the presence of goods suspect of patent infringement during the trade fair, the court attended 5 petitions for verification of facts procedures, these being processed and granted within a period of 48 hours. 2 of these petitions were notified and carried out by means of seizing samples at the actual inauguration of the Congress.
  1. On the subject of preliminary injunctions inaudita altera parte, the court of Barcelona attended 5 petitions filed and granted within a period of 48 hours before the start of the Congress. The measures were performed while the Congress was underway, with onsite seizure of samples. Curiously, in one of the cases the interested party was able to file a brief of opposition within two days, with the court accepting the opposition and immediately lifting the measures.
  1. ELZABURU followed the MWC 2019 there and then, being involved in 6 legal proceedings, preparing the defence strategy for another 2 cases that took different courses, while attending the Congress onsite to face any incident that could have occurred.

In addition, the actions of the courts of Barcelona and Alicante were exemplary when assessed regarding the judicial response and the efficiency of the mechanisms established in the Protocol. All remaining is to think of MWC 2020!

Author: Enrique Armijo

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New IP Court in China

On 26 October 2018, the Standing Committee of China’s National People’s Congress issued a decision to establish a new IP Court of Appeal at the national level within the Supreme People’s Court, operational from 1 January 2019.

The so-called SPC IP Court (Intellectual Property Court of the Supreme People’s Court) located in Beijing handles, principally but not exclusively, appeals in patent and technology cases.

TheSPC IP Court’s jurisdiction encompasses two types of patent cases:

  • appeals against judgments declaring infringement or non-infringement issued by courts of first instance nationwide, including the three specialized IP courts in Beijing, Shanghai and Guangzhou, the 16 intermediate courts with specialized IP sections and other intermediate courts with jurisdiction over patent cases; and
  • appeals against administrative judgments issued by the Beijing IP Court on patent validity or rejection of patent applications.

Understanding China’s timeline of development concerning IP provides a clearer overview with regard to this latest step. In 2008, China announced its National IP Strategy, which seeks to promote and protect IP creations with the goal of centralizing patent litigations. Then in 2014, specialized IP Courts were established in the key cities of Beijing, Shanghai and Guangzhou. Four more followed in 2017 in Nanjing, Suzhou, Chengdu, and Wuhan. Establishing a national IP appeal court has been a frequent topic of debate in China since the establishment of specialized IP courts in 2014.

Under the previous legal system, patent and technology-related cases were generally handled initially by the intermediate courts or specialized IP courts and appealed to the high courts of the different provinces, which led to splits on different patent law issues due to a variety of reasons, such as, unbalanced development in different regions, lack of expertise, diverging interpretations of the laws and regulations, or local protectionism.

It is also important to consider that legal and technical issues relating to patents and technology are often complex and require the judge to have a high level of expertise. The new SPC IP Court will be composed of judges who possess appropriate experience and knowledge of handling patent cases involving technology. Accordingly, the establishment of the new SPC IP Court will improve the quality of decision-making and act as a guide for first instance courts in technology-related cases.

As a result, the new SPC IP Court will contribute towards facilitating a more practical and international business environment and, thus, it is hoped that more foreign companies will feel encouraged to litigate in China to enforce their patents.

Finally, turning to the statement by the National People’s Congress, these changes are intended to “unify the standards of IP cases, further strengthen the judicial protection of intellectual property rights, optimize the environment for scientific and technological innovation, and accelerate the implementation of the development strategy driven by innovation.”

Author: Ruth Sánchez
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