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Intellectual property fast action protocol during MWC Barcelona 2019

International Disputes Digest 2019

Sep 2019

For the last 14 years, Barcelona has been hosting MWC (Mobile World Congress) Barcelona – the flagship global event for the Groupe Spéciale Mobile Association (GSMA). MWC Barcelona is the world’s largest exhibition for the mobile industry and a thought-leadership conference on tech and digital transformation.

The event has traditionally been used by the industry to launch and showcase high-impact innovations and flagship products that will shape companies’ commercial strategies for the season to come. These novelties include technology patents (mobile and wireless patents), IP rights (apps or state-of-the-art software) and industrial designs (design for devices and wearables).

Over the years, news of some launches has prompted the filing of claims against products that purportedly infringe IP rights. These claims normally request preliminary injunctions (i.e. suspension of both the announcement and the display of the product).

Although initially considered by the industry as opportunistic claims designed to prompt quick settlements (qualifying as “patent trolling”), with time, some of these claims have proven to be more serious and present more substantial risks.

In particular, the new flagship product launch may be paralysed, causing potentially massive economic and reputational damage to the company. Conversely, if the product does infringe a competitor’s IP rights, that competitor may see the impact and novelty of its own product launch diluted.

The increasing number of claims filed over the years confronted Barcelona’s Commercial Courts (“the Courts”) with the need to establish an expeditious and balanced mechanism for the handling of such claims.

For the last five years, the Courts (and lately the European Union Trade Mark Court of Alicante) have agreed on a specific protocol for the reliable processing of MWC IP-related claims – the “Intellectual Property Fast Action Protocol”.

Main features of the protocol

The protocol’s major objective is to maintain a reasonable balance between the due protection of IP rights and the avoidance of unnecessary (or groundless) harm to exhibitors at the MWC.

The protocol’s aims are thus, “to avoid, to the extent possible, deciding interim measures solely on an ex parte basis, whilst, at the same time, to ensure effective measures are taken to protect [IP] rights”.

For this purpose, the protocol includes the following commitments by the Courts:

a) Priority and preferential processing of emergency preliminary injunctions.

When injunction applications relate to technological patents and industrial designs linked with products which are to be exhibited (whether sought on an ex parte basis or not) the Courts will seek to handle these in preference to any other such request filed. Priority is also granted for acts of infringement of trademarks and copyrights or unfair competition and unlawful advertising acts in relation to products and materials which are on display at the MWC.

This priority puts the claimant on a fast track for the processing of its request.

b) Deadline for decisions (upon prior protective writ filing)

The Courts are committed to deciding any ex parte preliminary injunction within 48 hours of the complaint being received. In cases where the preliminary injunction is not requested ex parte, the mandatory hearing will be held and the matter decided within a 10-day period.

c) Protective writs regime

In the context of a possible IP conflict – and recognising the reasonable fears a company may have of being subject to an application for an ex parte preliminary injunction – a company is entitled to file a protective writ in order to avoid, to the extent possible, an unexpected (and unchallenged) ex parte preliminary injunction.

A protective writ allows the potential defendant to put forward its arguments to the Court and to show its willingness and availability to appear before the Court immediately in the event that a request for an ex parte preliminary injunction is filed.

The Courts are committed to deciding upon the admission of a protective writ (and the relief sought) within 24 hours of its filing.

d) Urgency requirements for deciding upon an ex parte preliminary injunction

In order to assess the urgency of an ex parte preliminary injunction, the Courts will consider two critical factors: the previous conduct of the claimant and the promptness of their reaction.

In line with the above, the Courts underline the importance of early filing so that the defendant is not unreasonably denied an opportunity to be heard. If the claimant delays taking action after knowing that an injunction may be required, this could make it less likely that the Courts will assess the matter as urgent and, therefore, will be more prone to refusing the injunction.

The protocol began as a sole initiative of Barcelona’s commercial courts, since these were normally the courts holding jurisdiction according to a place of infringement/effects criteria (article 118 of the Spanish Patents Act). However, during MWC 2019, and as a further innovation, the European Union Trade Mark Courts of Alicante also adopted the protocol.

The reason for this was the recognition of the need to grant rapid and effective enforcement by Barcelona’s Commercial Courts of the decisions issued by the European Union Trade Mark Courts of Alicante in relation to preliminary injunctions and/or urgent measures in matters of EU Community Trademarks and designs.

Results of protocol enforcement in 2019

Use of the protocol has grown steadily since its introduction. An analysis of the Courts’ activity illustrates that there is a short period of time each year where the protocol is deployed – normally confined to two weeks ahead of MWC and the week of the MWC itself.

During MWC Barcelona 2019, a total of 35 cases were admitted and decided within the framework of the protocol. These included:

  • 22 protective letters (compared to 12 in 2018) relating to patents and two protective letters relating to European Union Trade Marks were submitted. All of them were decided on the same day as filing.
  • Three verification of facts procedures about patents matters – procedures to deploy preliminary inquiries prior to filing a lawsuit – were submitted against four different companies. Those were processed and resolved within 48 hours and the inquiries were upheld.
  • Seven ex parte preliminary injunction requests (the same number as in 2018) were submitted, affecting eight different companies, which were decided within 48 hours (all of them upholding the claimants’ demands). In two of these cases, a
  • “substitution bail” was established allowing (where the bail was deposited) the preliminary measures to be lifted. Another case was concluded by a settlement being reached, the measures lifted and the devices withheld being returned that same day to the defendant.
  • One preliminary injunction upon hearing was submitted. This was decided before the MWC kick-off day, with the court upholding the request for preliminary measures.

The data shows that injunctions are normally upheld by the Courts, based on the principle that, pending issue of a ruling on the merits, the claimant’s rights may be harmed. However, the defendants are granted the opportunity to apply to lift those measures (such as seizure of devices) by depositing a substitute bail. This bail is deposited in the Courts’ account and is not accessible by the claimant until a final (upholding) judgment is delivered.

CMS specific task force during MWC

For the last three consecutive years, CMS has made a specific task force available during MWC to help clients deal with IP-related issues. The task force is comprised of litigation and IP lawyers based in Barcelona, supported by our renowned multi-jurisdictional practitioners specialising in IP and IP procurement throughout the CMS network.

The CMS team provides:

  • thorough and comprehensive advice in case of IP infringements detected by a client;
  • assistance on the preparation of preventive writs.
  • on-site presence in Barcelona to enable urgent and immediate assistance where precautionary measures are applied for by/against a client.
  • 24/7 availability of our team during MWC dates.
  • specific on-site advisory services from our lawyers during MWC dates and product presentations as required.
Publication
International Disputes Digest - July 2019
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Authors

Jorge Sánchez
Jorge Sánchez
Partner
Barcelona