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The importance of securing evidence against the infringement of ip rights and know-how: latest probative technologies

09 · 06 · 20 - ABGexperts - Rodrigo Manzanares

This post is also available in: Español Català

Some days ago, the World Intellectual Property Organization (WIPO) made an unexpected announcement on the development of its own digital file certification system: WIPO Proof.

For the general public, platforms that offer certification services for the existence of a digital archive is unheard of. However, for firms that specialise in the protection of intangible assets, these types of services have become one more tool in daily use.

Digital certification has remarkable advantages of an evidential nature, and is characterised by being faster, more convenient, effective and  more economical than traditional methods for securing evidence.

The burden of proof in the Spanish legal system

To understand the usefulness of digital certification tools better, we should first talk about the importance that our legal system places on the proof of the claims made by the parties in a judicial proceeding.

The general rule in our legal system is that the party claiming the existence of a certain fact is obliged to provide solid evidence to prove its veracity. Thus, except in very limited circumstances, for the court to accept the claims of the parties, they must have previously carried out arduous and intense probative efforts, that enable the judge to be able to determine without doubt that the alleged facts are true.

This imposition of the burden of proof means, from the plaintiff’s standpoint who alleges the infringement of his intellectual property rights or know-how, two possibilities:

  • In the event that the plaintiff succeeds in proving with a high degree of certainty that the facts giving rise to the infringement of its rights have occurred as claimed, and manages to provide legal grounds in support, it is very likely that the judgment is favourable for him.
  • On the other hand, if he is unable to prove beyond reasonable doubt the existence of unlawful acts, the plaintiff will see his action dismissed, even if it were true that the infringing acts occurred.

The court cannot, on its own initiative, investigate and widen the scope of the facts alleged in the proceeding, and must strictly adhere to those stated by the parties in their submissions.

The importance of proving the alleged facts is therefore paramount to have good prospects of success in the legal dispute.

The accreditation of ownership of the rights that are claimed to be infringed

In the case of conflicts regarding intellectual property and trade secrets, an essential fact to prove in infringement proceedings concerning exclusive rights is their ownership by the plaintiff.

In patent, utility model, trademark and design litigation, the ownership can be proven in a simple manner, as it is sufficient to look at the registration certificates of each of the rights in question, and check who appears as the owner.

However, in proceedings where the matter under discussion is the possible infringement of copyright and neighbouring rights, or of rights over trade secrets, proving ownership can be more complex:

  • Contrary to what happens with patents, utility models, trademarks and designs, copyright is born in the very moment of creation of the original protectable work.

The fact that the registration of the work is not mandatory for the rights derived from their authorship to be fully effective, implies that the author or his legal successor must adequately prove that they hold such conditions and the creation date of the work, in case of a dispute.

  • Similarly, for the owner of a trade secret to be entitled to the protection afforded by the special legislation on the matter, the deposit or registration of the confidential information in any kind of official register is not required (which is entirely consistent with its secret nature).

Therefore, the plaintiff who brings an action before the courts for violation of his trade secrets must prove that these existed on a specific date, which is prior to the date of the unlawful use and/or disclosure, in addition to proving his ownership.

Due to the imperative need to prove the existence of these rights, placing them at a specific moment in time that justifies their validity, prior to the infringing acts, it is of the utmost importance to secure evidence aimed  at proving these issues, as a preventive measure, before the conflict arises.

In addition to all of the above, there is an additional difficulty in proving the existence on a given date of databases, files or digital files that contain such intangible assets.

New technologies have made much easier to secure evidences

Traditionally, the holders of intellectual property rights and trade secrets have chosen to record the existence of their rights by going to a public notary or, in the case of copyrightable works, to the Intellectual Property Registry.

Although these continue to be valid channels for the purpose of securing evidence for possible future legal proceedings, their suitability has been declining in parallel with the advancement of new technologies and the development of highly reliable mechanisms of evidence in the digital environment.

These novel tools allow reliable certification of the existence of a digital file on a certain date. Using time-stamping techniques, the user/owner of an asset can obtain a reliable and precise certification that will allow him to easily prove the ownership and temporary validity of his right, in the event of having to face an infringement proceeding against a third party  in the future, ultimately increasing the chances of success.

These methods offer the holder considerable advantages over traditional ones:

  • They are fast → The information can be certified in a matter of minutes.
  • They are convenient → There is no need to go to a public notary´s office or the registry, and the need to arrange an appointment in advance is avoided.
  • They are effective → The time-stamping and certification of the existence of files technologies offer the highest technical reliability and has been accepted by the courts.
  • They are economical → As a general rule, the cost of using these systems is significantly lower than those generated by traditional means.

At the beginning of this entry we referred the new WIPO tool, “WIPO Proof”.

What is truly relevant with this news is not so much the creation of the tool itself (there are already similar or virtually identical tools, which we at ABG have been working with for years), but the fact that the most important international institution of the world in terms of intangible assets has decided to become one more provider of this type of service, a true reflection of the trend of recent years in our industry sector.

All this suggests that, in the near future, it is likely to be very common that a large number of disputes regarding IP rights and trade secrets are decided on the basis of these new unconventional means of evidence certification.

Rodrigo Manzanares

Attorney at Law

rmanzanares@abg-ip.com

Rodrigo is a litigator and legal adviser. His expertise relates mainly to the field of intellectual property, participating in actions before the Spanish and European Courts, including the Court of Justice of the European Union (CJEU). Specifically, his practice is focused on advising clients on the protection of intangible assets, including patents, utility models, trademarks, designs and copyright. He is used to manage large IP portfolios, as well as to draft and coordinate strategies for the protection of assets around the globe.

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