Background:
The Mobile World Congress (“MWC”) is held annually in Barcelona, Spain. As the most important congress in the field of communication and mobile telephony in the World, as of 2014, the Mercantile Judges of Barcelona have established a fast track protocol for the enforcement of Intellectual Property Rights (the “IPRs Fast Track Enforcement Tool”) by stakeholders whose rights may be infringed when participating at this event.
Contents and scope:
The contents of the IPRs Fast Track Enforcement Protocol is the following:
a) 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 the MWC, 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 (hereinafter, “any IPRs”).
b) Ruling 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.
c) Within the framework of a possible conflict for alleged infringement of any IPRs with another company and in light of the reasonable fear of being subject to an application for an ex parte preliminary injunction, to accept the submission of protective letters to the Courts, in order to avoid, to the extent possible, ex parte preliminary injunctions, which will allow, firstly, the defendant to put forward their arguments and, secondly, their willingness to appear before the Court immediately to rule on any request for ex parte preliminary injunctions.
Applicability:
The IPRs Fast Track Enforcement Tool is applicable to the enforceability of any IPRs. Even though was created as a tool for enforcement of IPRs at the MWC, it is also applicable to any other trade fair held in Barcelona.
Facts and figures:
As per the official statistics provided by the Courts of Barcelona, the number of protective letters presented and admitted has doubled from 12 in 2017 to 24 at the 2018 edition of the MWC.
a) Seven preliminary injunctions ex parte were filed in 2018’s edition of the MWC, the same number as in 2017.
b) The number of inquiries to substantiate facts has tripled: 3 in 2018 compared to 1 in the previous edition.
c) For the first time, a preliminary injunction with hearing was presented in 2018, as none were submitted in 2017.
d) Twice as many bonds to lift the preliminary injunctions granted have been posted: 2 cases in 2018 compared to 1 in 2017,
e) A case has been closed by agreement between the parties in 2018’s MWC, whereas no such agreements were made in 2017’s edition.
Overall, the number of matters presented within the framework of the IPRs Fast Track Enforcement Tool during the MWC has increased from 21 in 2017 to a total of 35 in 2018, an increase that the Courts of Barcelona foresee will repeat in 2019.
This note is of an informative nature. For any further information on the IPRs Fast Track Enforcement Tool and the requirements for the grant of preliminary injunctions for infringement of any IPRs under Spanish law, please contact ABG Intellectual Property’s Legal and Litigation department at jmlissen@abg-ip.com.
