The Mobile World Congress, the world’s largest gathering of companies in the mobile communications industry, is taking place in Barcelona this year from 26th February to 1st March. Businesses from around the world will be there, exhibiting current products and launching new ones. Over recent years, the Barcelona commercial court has developed a fast track procedure to deal with alleged IP infringements in the lead up to and at the event, which includes the possibility of successful plaintiffs obtaining a range of potential remedies – including preliminary injunctions, as well as the seizure of infringing products. Importantly, as Spanish company Fractus proved last year, these measures work in practice.
With the 2018 event fast approaching, the guidelines and rules for this year’s fast-track service have now been published. You can see the original Spanish version here; while below is an English translation. Thanks to long-term friend of IAM, Josep Maria Pujals of Oficina Ponti in Barcelona, for providing us with this information.
PROTOCOL OF GUARD SERVICE AND FAST ACTION OF THE COMMERCIAL COURTS OF BARCELONA FOR THE MOBILE WORLD CONGRESS
The Panel of Judges of the Commercial Courts of Barcelona, within the framework of the Statute of the Commercial Court of First Instance of Barcelona (approved through the agreement of 15 July 2014 by the Standing Committee of the General Council of the Judiciary), at its meeting on 13 December 2017,
- AND HEREBY AGREES:
That in the event of any conflict that may exist between the companies participating in this event, as holders of intellectual and industrial property rights, and which give rise to the application for preliminary injunctions, as has occurred on previous occasions, in order to avoid, to the extent possible, adopting ex parte interim measures; and at the same time to ensure the adoption of effective measures to protect those rights, the Commercial Judges of Barcelona establish, for fourth time, and during February 2018 and the days of the event, a Protocol of guard service and fast action in accordance with the following terms:
Granting preferential and priority processing to applications for urgent preliminary injunctions (with – inter partes – or without – ex parte – hearing the defendant) in relation to technological patents and industrial designs relating to products which are to be exhibited at this event, as well as acts of infringement of trademarks and copyrights, and unfair competition and unlawful advertising acts in relation to products and materials which are on display at the MWC.
We compromise to rule on the application for an ex parte preliminary injunction within two days, once the application has been received by the court; and within a deadline of ten days for ruling on preliminary injunctions with a notice of hearing, once the application has been received by the court, providing a protective letter has been submitted.
Within the framework of a possible conflict in issues of industrial or intellectual property with another company and in light of the reasonable fear of being subject to an application for an ex parte preliminary injunction, to resolve on the same day of its presentation the admission of requests for protective letters. The admission and immediate resolution of the protective letters is done in order to avoid, to the extent possible, the adoption of the ex parte preliminary injunctions, which will allow, firstly, the defendant to put forward their arguments and, secondly, their willingness to appear at the Court immediately to rule on any request for ex parte preliminary injunctions.
To assess the urgency referred to in article 733 of the Spanish Civil Procedure Act (LEC) in the adoption of ex parte preliminary injunctions, unless this would compromise the success of the interim measure, the prior conduct of the claimant and the speed with which they have reacted to the knowledge of any infringement shall be a determining factor. In this regard, it is important that the application for urgent preliminary injunctions be submitted sufficiently in advance in good faith so as not to reasonably prevent hearing the defendant, when the owner of the right allegedly infringed would have had prior knowledge of the possible infringement and could have submitted their application in sufficient time.
To communicate and report the foregoing agreements and, in particular, concerning the preventive and ongoing on-call service, during business days and the public hearing timetables, throughout February 2018 and from February 26 to March 1, 2018 on the occasion of the Mobile World Congress in Barcelona, to the Governing Chamber of the High Court of Justice of Catalonia and its Hon. President, for approval, if applicable, and for submission to the General Council of the Judiciary (CGPJ) for the same purposes.
To communicate and report the foregoing agreements to the CGPJ for dissemination via the website of the CGPJ and the CGPJ Press Office, if applicable.