Juan Casulá. Abogado de Propiedad Industrial e Intelectual

Judicial Experience

I have led hundreds of legal proceedings, from the Spanish Supreme Court to the Court of Justice of the European Union.

 

Propiedad industrial e intelectual, patentes, marcas. Webinar

Teaching Experience

I am a regular speaker and give conferences on trademarks and patents at various institutions such as:

  • Escuela de Práctica Jurídica Colex
  • Instituto de Empresa
  • Boletín Oficial del Estado
  • Magister Lvcentinvm (Universidad de Alicante)
  • Club Español del Arbitraje

Significant lawsuits

I have intervened in complex legal cases related to brands/companies with significant commercial or media impact, such as:

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Supreme Court

JUDGMENT: Supreme Court of September 28, 2007 (Roj: STS 6154/2007, Number of file: 4050/2000), DTI case:

This decision of the Supreme Court, upheld the appeal we filed on behalf of DISTRIBUCION DE TECNOLOGIA INTERNACIONAL S.A. (DTI) invoking its trademarks and company name, revoked the decision of the Audiencia and based on Law 3/1991 on Unfair Competition ordered the defendant: 

  1. To cease immediately and for the future in the use of the names “DTI” and/or “DEPARTAMENTO TECNICO INMOBILIARIO” as a trademark and/or company name identifying real estate services and/or other services, products and/or activities related to the real estate business, or any other substantially confusing or associable with the name or acronym “DTI”;
  2. To withdraw from the market the posters, catalogs, advertisements, advertising brochures, letters and corporate correspondence that use the trademark and/or company name “DTI” and/or “DEPARTAMENTO TECNICO INMOBILIARIO”.
  3. To deliver for destruction all printed models, packaging, advertising material, labels, and any other such documents incorporating the name “DTI” and/or “DEPARTAMENTO TECNICO INMOBILIARIO”;
  4. To the publication at the defendant’s expense of the judgment (…) in two newspapers of provincial circulation and in two others of regional scope, as well as in all those social media that the defendant had used to advertise such distinctive signs;
  5. To modify its corporate name within a maximum period of two months (…), replacing it with another non-confusing one that does not incorporate the name or the initials “DTI”;
  6. To the payment of the costs caused in this proceeding“.

On the other hand, it ruled out the award of damages for lack of sufficient evidence.

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SUPREME COURT JUDGMENT of April 25, 1994 (ECLI ES:TS:1994:22243, RAJ.3222, case ROBERTO ZUBIRI vs TRANSKRITT):

When ruling on the appeal I defended in a Utility Models case, the Supreme Court declared that for the option to extend a license, it’s not enough for the intent to be expressed within the agreed period. Instead, it is necessary for that declaration of intent to reach the grantor of the option within the stipulated timeframe.

SUPREME COURT JUDGMENT of September 28, 2007 (Roj: STS 6154/2007, Appeal No.: 4050/2000 – JUR.315456), DTI case:

This Supreme Court judgment, upholding the appeal I filed on behalf of DISTRIBUCION DE TECNOLOGIA INTERNACIONAL S.A. (DTI), invoking its trademarks and corporate name, overturns the Provincial Court’s ruling. Based on Law 3/1991 on Unfair Competition, it condemns the defendant to:

  1. Immediately and permanently cease the use of the designations “DTI” and/or “DEPARTAMENTO TECNICO INMOBILIARIO” as a trademark and/or corporate name identifying real estate services and/or other services, products, and/or activities linked to the real estate business, or any other designation substantially confusing or associable with the name or acronym “DTI.”
  2. Remove from the market all signs, catalogs, advertisements, promotional brochures, letters, and corporate correspondence.
  3. Deliver documents for destruction.
  4. Publish the judgment at the defendant’s expense in two provincial newspapers and two regional newspapers, as well as in all other social communication media that the defendant may have used to advertise such distinctive signs.
  5. Modify its corporate name, replacing it with a non-confusing one that does not incorporate the designation or acronym “DTI.”
  6. Pay the costs incurred in this proceeding.

 

Conversely, it dismisses the claim for damages due to insufficient evidence.

abogados propiedad intelectual

First instance and appeal

SENTENCE: Mercantile Court 1 of Bilbao on December 2, 2014

The expert evidence supported the infringement of PRONUTEC’s (my client) patent. The patented subject matter was a fuse holder base, as an “essential element”; to be applied to protective cases.

Therefore, the financial expert evidence quantified extensive damages payable for loss of profit and consequential damages, taking into account the patented object and the case for which it was intended.

The sentence also included announcing the judgment on the defendant’s website, which had a significant impact in the electrical material manufacturers sector.

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PROVINCIAL COURT JUDGMENT (Alicante, Section 8) of February 27, 2007:

Here’s the English translation of the legal case summary:

This appeal judgment, confirming the favorable ruling of the claim filed by the owner and licensee of Community Trademark No. 2,763,266 “CANNA ‘The solution for growth and bloom'” (with graphic), used to distinguish products in International Trademark Classes 1 and 5, and dismissing the defendants’ counterclaim for the nullity of said trademark due to its alleged descriptive nature, declares that the trademark applied to cannabis fertilizers:

  • Possesses “a certain evocative character, for a specific public, regarding the characteristics of the products for which it is registered,” being a suggestive mark “because neither semantically nor conceptually does it contain direct information about the product’s characteristics, but merely indirect information”; and
  • The trademark “Bio-CANNA” used by the defendants for the same products constitutes an infringement that must be ceased and compensated, “in the amount resulting from applying 1% of the plaintiffs’ turnover, with the criteria established in the first instance judgment (…), from the publication date of the Community trademark’s registration.”

 

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JUDGMENT Commercial Court 4 of Barcelona on January 10, 2023

 

This judgment dismisses the infringement of a patent claiming a “handle for sports equipment.” It is primarily based on:

  1. On one hand, the doctrine on the scope of patent registration as consolidated by the European Patent Office (Case Law of the Boards of Appeal of the EPO), the Provincial Court (Section 15 of Barcelona), and the Supreme Court; and
  2. On the other hand, the expert evidence presented in the proceedings that compared the subject matter of the patent with the product exploited by the defendant.

JUDGMENT Commercial Court 4 of Barcelona on January 10, 2023

The technical expert evidence confirmed the patent infringement by my client, PRONUTEC. The patented object is a fuse-holder base, an “essential element” applied to protection boxes. Consequently, the economic expert evidence quantified a substantial compensation for damages, covering lost profits and consequential damages, taking into account both the patented object and the box it was intended for.

The judgment also included the publication of the verdict on the defendant’s website, which had a significant impact within the electrical equipment manufacturing sector.

La condena además incluyó la publicidad de la sentencia en la web de la demandada, que tuvo gran resonancia en el sector de fabricantes de material eléctrico.

In such appeal and cassation proceedings, the success rate is around 80%, spread across companies and brands with both national and international presence.

Some of my papers...

Juan Casulá

I’ve also actively participated in numerous courses, specialized seminars, and forums alongside Judges, Agents, and Examiners from Patent and Trademark Offices, notably at ICADE, ESADE, various Bar Associations, ANDEMA, Chambers of Commerce, and several universities.

CEA - Club Español del Arbitraje

Presentation on “Judicial Expertise and Arbitration” at the IX CEA Italy Seminar (Torino, 2022).

Instituto de empresa

Presentation “Industrial and Intellectual Property: Its International Protection (2003)” as part of the Master’s program “Central and Eastern Europe: New Business Opportunities; Legal and Tax Framework.”

ANDEMA - Directorate-General of Customs

Presentation at the ANDEMA conference, given at the Directorate-General of Customs, as a representative of the Toy Sector, on the application of the EEC Anti-Piracy Regulation (2004).