This year Barcelona once again hosts the world’s most important event in the field of telecommunications: the Mobile World Congress. To face the challenges posed by the current health situation, and in line with the initiative launched in last year’s edition, MWC 2022 will return to the combined in-person and online formats.
From a legal perspective, as is the case for nearly a decade, the Board of Judges of the Commercial Courts of Barcelona and Alicante have established an On-Call Service and Fast Action Protocol that aims to resolve conflicts that may arise between holders of intellectual property rights during the event. As such, it includes effective measures to:
- Protect patents and technological innovations, industrial designs, trademarks and copyrights which are to be exhibited at MWC 2022.
- Defend free competition and prevent acts of unfair competition and unlawful advertising in relation to products and materials which are on display.
To give effect to the Protocol, specific actions are undertaken in the following areas:
- Requests for preliminary information and for verification of facts: commitment to make a ruling within 48 hours.
- Requests for preliminary injunctions: commitment to make a ruling within 48 hours when they are requested without holding a hearing with the defendant, and within 10 days once a hearing has been set, provided that a protective letter has been filed.
- Protective letters: commitment to make a ruling on whether they should be accepted within 24 hours.
Moreover, the Protocol provides for the adoption of measures to safeguard the confidentiality of information that may constitute a trade secret.
What can I do if I detect possible infringement of my IP rights at the event?
Holders of intellectual property rights (e.g. patents, industrial designs, trademarks) have certain legal actions at their disposal that can be exercised against acts infringing their rights, and which have a very specific place in events of this type. In this regard, if infringement by a third party is found at MWC 2022, it is possible to submit a request for preliminary information or for preliminary injunctions.
Preliminary information is a request that aims to gather information that is essential to prepare possible legal proceedings on the grounds of intellectual property rights infringement, for example: the names of product manufacturers or distributors, the identity of wholesalers and retailers to whom these products have been distributed, quantities sold, business turnover, other relevant accounting information, etc.
In the event that a request for preliminary information is accepted by the Court, the information must be gathered and provided by the defendant on the date duly indicated.
This information should be information that cannot be obtained by other means and is indispensable for taking future legal action. It must be demonstrated that the requested measures are suitable for the aim pursued and that legitimate interest and just cause are both present.
On the other hand, preliminary injunctions are the request to adopt measures that ensure the effectiveness of the favourable judgment that may be handed down at the end of main legal proceedings. The aim is to prevent the long period of time inherent to court proceedings from causing the possible favourable judgment to become ineffective due to the infringement being committed. This leads to the impossibility of redressing the injurious situation caused to the claimant during this period of time.
The request for preliminary injunctions can be made along with the claim of infringement or it can be made prior to taking legal action. Moreover, although it is common to conduct a hearing with the parties before determining the admissibility of the measures, it is possible to request that they be adopted without holding a prior hearing with the defendant.
In the framework of MWC 2022, the most effective action for a holder of rights who states with a relative degree of certainty that a competitor exhibits unauthorised protected technology is the request for ex parte preliminary injunctions before taking legal action. Therefore, taking into account the deadlines established in the Protocol, it will be possible to obtain a ruling almost immediately, which could prevent the competitor from continuing to make their product available to the public.
In order to be successful, the holder of rights must justify that the typical requirements for preliminary injunctions are met:
- fumus boni iuris (prima facie evidence that enables inferring the existence of substantive legitimacy in the claims of the plaintiff),
- periculum in mora (preventing a long period of time from passing before filing the request), and
- the filing of security for the possible damages that may be caused to the defendant.
Moreover, the request that they be adopted without a prior hearing with the defendant requires full justification of the reasons of need and urgency. Therefore, it is difficult to imagine a situation where these requirements can be demonstrated more clearly than at the Mobile World Congress, which is why it is a very useful tool for parties that may be harmed.
Requests for verification of facts
Lastly, holders of IP rights have another alternative when they have reasonable suspicions that a third-party product infringes their exclusive rights but they cannot prove it: requests for verification of facts.
Requests of this type relate to situations where infringement is likely to exist, in light of the circumstances, but it cannot be verified in any other way. In this case, and without notifying the potential defendant, the Judge and the corresponding expert specialist will appear in person at the facilities or locations designated by the applicant as possible sites where evidence of infringement may be found. If said evidence exists, an expert report will be drawn up and all relevant information discovered will be provided to the applicant, who may use it as proof of infringement of their rights in future legal action.
In fact, in the event of strongly suspecting that a product exhibited by a third party at MWC may be infringing a patent, for example, but not being able to prove it, its owner may request the enforcement of requests for verification of facts.
What can I do if I suspect that a third party is going to request ex parte preliminary injunctions against me during MWC 2022? Protective letters
In a situation where the potential defendant infringes intellectual or industrial property rights, there exists a legal instrument that they can use to try to prevent preliminary injunctions from being granted against them without a prior hearing, which, as we mentioned, is one of the most typical action carried out within the framework of the MWC.
With regard to protective letters, a protective letter is a request made to the competent judicial body when it is believed that a competitor may file ex parte preliminary injunctions. In the request, the reasons justifying these suspicions are communicated to the court (prior correspondence between the parties, mainly formal notices of infringement, is usually brought to its attention), along with justification of the inexistence of reasons of urgency which could protect the claimant. Moreover, it is requested that, in the event that the other party files a request of this type, no other injunction can be adopted without there being a prior hearing, such that the potential defendant (applicant of the protective letter) has the opportunity to present their arguments.
The figure of protective letters is undoubtedly the one that predominates among all possible legal actions within the framework of the Mobile World Congress.
In the 2021 edition, of the 18 cases admitted and resolved under enforcement of the Protocol of the Judges of the Commercial Courts of Barcelona and Alicante, 17 corresponded to protective letters (the other case being a request for ex parte preliminary injunctions).
Experience therefore shows that the good results obtained with this legal tool recommend that all companies wishing to attend the event this year and showcase technology whose use is disputed with a third party should file a protective letter prior to the event (given the subject matter of the congress, disputes usually involve discussions about adopting licences under FRAND, or supposedly FRAND, conditions).
Validity of the Mobile World Congress Fast-track Protocol
The preventive and ongoing on-call service will remain active during the entire month of February 2022, as well as on the days of the event (28 February to 3 March), in working days and during public hearing hours.
ABG IP at MWC 2022
At ABG IP, we offer technical and legal support before, during and after MWC 2022. In particular, we provide the following services:
- Preventive advice to holders of intellectual property rights, when detecting exhibitors who may be exhibiting devices at their stand which infringe their rights. We can also provide guidance about adopting legal measures aimed at securing evidence and putting an end to acts of infringement, by:
- Filing requests for preliminary injunctions
- Filing requests for preliminary information and verification of facts
- Preventive advice to exhibitors when adopting measures aimed at reducing the risk of withdrawal, in whole or in part, of the devices displayed at their stand, which may occur as a result of a third-party holder of an intellectual property right requesting interim protection. We could help by:
- Filing protective letters,
- Conducting infringement and validity studies on intellectual property rights of third parties, as well as essentiality studies on patents that are allegedly essential for some technical standard.
ABG Intellectual Property’s Legal Department has extensive experience in defending intellectual property rights in the context of the MWC. For any queries, please contact us by email at firstname.lastname@example.org.