José Antonio Sanmartín
José Antonio Sanmartín is ‘a gifted lawyer’.
Legal 500
Partner
José Antonio is recognised for his litigation capabilities and knowledge of procedural law. He has over 25 years of experience in all areas of IP litigation, in both civil and criminal jurisdictions.
His current practice focuses primarily on copyright for the media and entertainment industries (he is working for the MPA, Motion Picture Association, in those areas), trademarks and design rights and unfair competition.
He is also highly experienced in border control proceedings and parallel importation matters.
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REPRESENTATIVE MATTERS
- Representing MPA (Motion Picture Association) in different copyright infringement and content protection actions. Successfully obtained the first blocking action in Spain for the cinematographic industry.
- Representing the fashion group G-Star Raw, in several trademark infringement proceedings. Successfully obtained an express declaration from the courts that the “RAW” trademark should be deemed as having a reputation.
- Represented Mr. Arrigo and Mr. Giuseppe Cipriani, original founders of the well known Cipriani Hotel and Harry’s bar in Venice, Italy, in complex cross border litigation involving the rights over several trademarks including the name “Cipriani”.
- Represented Peter Taboada, S.L. a Spanish company leader in the creation, manufacturing, development and installation of water treatment machinery and technology, in a procedure for infringement of registered design, copyright infringement and unfair competition.
- Represented Nici AG in several proceedings for trademark and design infringement concerning plush toys.
- Represented Base Company, the Belgian telecommunication company, in trademark infringement proceedings.
- Represented Leroy Merlin, in copyright and breach of advertising contract litigation against the advertising agency Tapsa Y&R. Successfully achieved in appeal stage the full revocation of the unfavorable judgment rendered in first instance, with full admittance of Leroy Merlin’s claims and award of costs.
- Represented Seiko Epson Corporation in several patent and registered design infringement proceedings brought against different importers, sellers and distributors of ink cartridges compatible with Epson’s printers. One favorable judgment and five settlement agreements so far have resulted in a significant reduction in the number of infringing cartridges imported into Spain.
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PROFESSIONAL AFFILIATIONS
- Intellectual Property Owners Association (IPO)
- International Association for the Protection of Intellectual Property (AIPPI)
- International Association of Entertainment Lawyers (IAEL)
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PUBLICATIONS
- “Metamotores de búsqueda. Extracción y reutilización del contenido de una base de datos. Sentencia del Tribunal de Justicia de la Unión Europea (Sala Quinta), de 19 de diciembre de 2013, asunto C-202/12 (Innoweb, BV contra Wegener ICT Media, BV y Wegener Mediaventions, BV)”, Comunicaciones en Propiedad Industrial y Derecho de la Competencia, issue #74, January-April, 2015, CEFI – Instituto de Derecho y Ética Industrial (IDEI).
- “A warning against imitators” – Intellectual Property Magazine, February 2012.
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SPEAKING ENGAGEMENTS
- “Website Blocking in Europe”, CODA (Content Overseas Distribution Association) CJ (Content Japan) Mark, Legal Committee Meeting, 16th February, 2022, online event.
- 19th IFTA & MPA annual US-EU Copyright summit, “Session II – Copyright Enforcement, a shared responsibility, Panel on enforcement options and strategies.” 18th November 2021, online event.
- “The junction of designs, copyright and trade dress: overlapping or coexisting?”, World IP Forum 9th Edition, 26th April-4 May, 2021, online event.
- “Protecting your videogame IP: best practices”, Gaming Industry Legal Conference, 6 October 2020, online event.
- “Siteblocking in the EU and Spain”, 9th MPA Seminar, 32nd Tokyo International Film Festival, 31 October 2019, Tokyo, Japan.
- “Panel on safe harbour regime”, Copyright, Innovation & creativity Symposium, 24 October 2019, Wellington, New Zealand.
- “Panel on incentives for innovation: cultivating the right environment for creators and digital platforms”, 19th biennial Copyright Law & Practice Symposium, 23rd October 2019, Sidney, Australia.
- “Panel on the new EU DSM directive”, 2019 IPO Annual Meeting, 24-26 September, Washington DC (US).
- “Blocking injunctions, the tide is turning”, MIDEM Legal Summit, 5 June 2019, Cannes, France.
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WHAT OTHERS SAY
- “José Antonio Sanmartín leverages profound patent proficiency to craft the most effective strategies for success.” IAM Patent 2024
- “He knows how to get the most value out of his patrons’ intellectual assets, boasts expertise in disputes across the full range of intellectual rights, has fought battles in all of Spain’s key litigation venues, and is accomplished at handling arbitrations.” World Trademark Review 2024
- “José Antonio Sanmartín has a deep knowledge of IP litigation procedure, from patents to copyrights. He can also be sought out for work in criminal counterfeiting proceedings and the implementation of border control strategies. He has broader commercial litigation expertise, he is well versed in conflict resolution strategies, and he takes a creative, outside-the-box approach to every file.” World Trademark Review 2024
- “José Antonio Sanmartín represents his customers with precision and uses his deep patent know-how to make the best strategic calls.” IAM Patent 2023
- “Polished performer in both trademark and patent litigation, with useful knowledge of ancillary disciplines such as copyright, designs, unfair competition and criminal law. Sanmartín also has a flair for resolving commercial disputes.” World Trademark Review 2022
- The Madrid office of HOYNG ROKH MONEGIER was awarded the MPA (Motion Picture Association) overall Anti-Piracy Strategy Award in November 2021, in recognition for our “contribution to Spain’s international leadership on IP protection” (words of Stan McCoy, President and Managing Director of the MPA).
- “José Antonio Sanmartín’s technical dexterity allows him to dispense difference-making advice in almost any industry.” IAM Patent 1000 2021
- “José Antonio Sanmartín is a versatile litigator” Legal 500 EMEA 2021
- “Has a commanding courtroom presence and is never thrown off his trialgame.” IAM Patent 1000 2020
- “Veteran with over 20 years of experience in fields as diverse as white-collar crime, breach of contract and other branches of commercial conflict resolution, all of which superbly complement his patent offering.” IAM Patent 1000 2019
- “Gifted lawyer” Legal 500 EMEA
- “Jose Antonio Sanmartin is praised for his knowledge and negotiation skills.” Legal 500 EMEA
- “José Antonio Sanmartin’s sound negotiation skills serve him well in IP-related disputes and litigations, especially those concerning patents and trade marks.” Chambers & Partners
Assistant details
Visit us
Visiting address:
C/ Príncipe de Vergara, 36, 5.º dcha.
28001 Madrid
Spain
Postal address:
C/ Príncipe de Vergara, 36, 5.º dcha.
28001 Madrid
Spain
The facts
Languages
Spanish, English
Education
University of Edinburgh (Legal studies, 1996)
Colegio Universitario San Pablo CEU, Universidad Complutense de Madrid (Law degree, 1994
Admission
1996