The Commercial Courts of Barcelona and the EU Trademarks Courts, based in Alicante, are up to challenges arising from MWC. This is the largest mobile communications event in the world, where the latest innovations and leading-edge technologies are showcased, and give rise to a number of disputes in the field of IP rights.
As for previous editions of MWC, the Commercial Courts of Barcelona (for the sixth year) and the EU Trademark Courts (for the second year) jointly issued an IP Fast Action Protocol in November 2019. The Protocol is in force from 3 February 2020 throughout the whole month, in order to avoid, to the extent possible, that ex parte preliminary injunctions (PI) be granted and, at the same time, to ensure that effective measures to protect the owners of IP rights are adopted. For these purposes, the Protocol provides that:
- Preliminary inquiries and ex parte inspections regarding products or technologies whose presentation will take place at the MWC will enjoy preferential and priority processing;
- Urgent PI (ex parte or inter partes) related to IP rights in relation to products or technologies that will be exhibited at the MWC will be processed with priority;
- Preliminary inquiries, ex parte inspections and ex parte PI will be decided within 48 hours from receipt of the petition by the court. If a hearing is held in PI proceedings, a decision will be rendered within a maximum of 10 days, if a protective brief has been filed by the defendant;
- Protective briefs will be admitted within 24 hours from filing when there is reasonable concern on the part of the defendant of being sued for ex parte PI;
- Urgency requirement for granting PI will be assessed taking into account the plaintiff’s prior behaviour and the speed with which it has reacted to the knowledge of infringement;
- The PI and/or urgent measures granted by the EU Trademark Courts will be immediately enforced by the Commercial Courts of Barcelona, and that
- Appropriate measures will be taken, ex officio or at the request of a party, to protect confidentiality of undisclosed know-how and business information that may constitute a trade secret.
These new measures aimed at protecting the know-how and undisclosed information may be taken within the framework of the new Spanish regulation on trade secrets and a protocol for the protection thereof issued by the Commercial Courts of Barcelona. In addition, the MWC 2020 Protocol includes as a novelty the urgent and priority processing of proceedings aimed at obtaining information on the potential infringement of IP rights, i.e. preliminary inquiries ("diligencias preliminares") and ex parte inspections ("diligencias de comprobación de hechos").
The need for urgent processing of such preparatory proceedings is demonstrated by the increasing number of IP-rights owners who use them to obtain evidence on facts that may constitute infringement. Typically this is done by seizing new products showcased the very first day of the fair and immediately following-up with a PI petition. According to the figures on cases handled under the MWC 2019 protocol published by the General Council of the Judiciary, 5 applications for ex parte inspection proceedings were submitted against 3 companies. They were processed and decided upon in 48 hours: two were upheld and three were revoked.
In practice, IP-rights owners apply for those preparatory measures in the same brief that requests the adoption of ex parte PI. In order to grant ex parte inspections, the law requires that the plaintiff shows signs of patent infringement and that there is no alternative way to confirm it. Courts have ordered ex parte inspections involving models of mobile devices identified by the plaintiffs and showcased for the first time at the MWC, but have rejected them in cases where the plaintiff had the possibility of obtaining the products somewhere else –e.g. by purchasing them in other countries. If granted, the seizure (one sample of each relevant mobile device) is conducted in the early hours of the first day of the fair by a judicial commission (including the judge, the secretary of the court, an English interpreter, a member of the fair's organization and the plaintiff's technical expert, who will later on analyse the samples).
This way the courts operate with discretion and effectiveness, granting protection to IP-rights owners and, at the same time, protecting, to the extent possible, the position of the potential defendants, allowing the good progress of the business relationships to flourish at the fair. We will follow up this news with an assessment of the effectiveness of the above measures at the MWC 2020.
Authored by Ana Castedo and Inmaculada Lorenzo