Recent ruling of the Supreme Court in “VILEDA Vs. SPONTEX” Case
Recently, Spanish media has widely reported on the Judgement of the Spanish Supreme Court of 24 November 2012 (in Spanish), which brings to an end the legal battle between VILEDA GMBH and VILEDA IBERICA SA., against MAPA SPONTEX IBERICA SA., for the infringement of the utility model No. 286.841, registered by the acting party, which consists of a device that allows the coupling of the handle (the “male part”) into a given cleaning utensil (the “female part”), by applying pressure. This system is known as “click- clack system”.
The lawsuit, filed in 2006 on the grounds of indirect patent infringement (art. 51.1 Spanish Patent Law) and unfair competition (in Spanish), was dismissed by the Juzgado de lo Mercantil No. 3 Barcelona. The Court understood that the defendant (Spontex) did not commit any infringement under the Patent law or any act of unfair competition since the handles with “universal headings” only reproduced a modified version of the “male part”. Thus, given that the “female part” was not reproduced, the claimed utility model was not infringed. The ruling was appealed before Section 15 of the Audiencia Provincial of Barcelona by VILEDA. On 30 June 2008, the appeal was was partially estimated (in Spanish). The parties at conflict lodged extraordinary appeals before the Supreme Court.
In its ruling, the Supreme Court estimated the extraordinary appeal as it understood that the modification by MAPA SPONTEX IBERICA SA. of the device protected by utility model No. 286.841 allowed the defendants´ handles to be coupled with screw- in cleaning utensils but also with those that worked by way of “click- clack” system. In the Court’s opinion this constituted a violation of the utility model of the claimants. As a consequence of the ruling and the declaration of infringement of the utility model No. 286.841, the Supreme Court condemn the defendants to pay damages. The judgement also declares that MAPA SPONTEX IBERICA SA. should refrain from making, offering or exploiting in any way handles equipped with the “universal headings”. Finally, the decision orders the seizure for destruction of the existing equipments.
In Salvador Ferrandis and Partners we think the ruling given by the Supreme Court got it right when assessing infringement of the utility model claimed by the claimants. The fact that the decision enlarges the scope of protection of what is to be understood by an “exclusive right” is to be welcome.
Related Posts:
- Industrial Design: scope of protection and informed used according to Spanish Supreme Court
- Jurisdiction for declarations of non-infringement
- Selection of Specialized Courts in Industrial Property Rights for Certain Autonomous Communities in Spain
- The Spanish Supreme Court rules on “forum shopping”: Judgment no. 1/2017, of 10 January 2017.