Intellectual Property Fast Action Protocol
Five years ago, Barcelona’s Commercial Courts (“the Courts”), and lately the European Union Trade Mark and Community Design Court of Alicante, adopted the “Intellectual Property Fast Action Protocol” (“the protocol”) - a specific protocol for the reliable and expedited processing of MWC IP-related claims.
MWC (formerly known as Mobile World Congress), is a yearly exhibition where many technology companies launch and showcase their latest flagship products. As such, patent and IP rights issues abound, and the period of time around the MWC carries a particularly heightened risk for both IP holders and companies who are exhibiting.
The protocol’s objective is to strike a balance between the due protection of IP rights, and the avoidance of unnecessary or groundless harm to MWC exhibitors.
The protocol’s aims are thus, “to avoid, to the extent possible, deciding preliminary injunction requests solely on an ex parte basis, whilst, at the same time, to ensure effective measures are taken to protect [IP] rights”.
Given the urgency and the fact that MWC lasts only four days, claimants 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, such as:
- flagship product launches have been paralysed, causing potentially massive economic and reputational damage to the company; and
- IP rights claims have been dismissed since the IP holder did not comply with the necessary requirements.
What are the main features of the protocol?
The protocol includes the following commitments by the Courts:
a) Priority and preferential processing of emergency preliminary injunctions linked with products which are to be exhibited (whether sought on an ex parte basis or not)
b) Decision within 48 hours of an ex parte complaint received. If a mandatory hearing is to be held, the matter will be decided within a 10-day period.
c) Protective letters regime. In the context of a possible IP conflict, a company is entitled to file a protective letter in order to avoid, to the extent possible, an unexpected (and unchallenged) ex parte preliminary injunction. 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 anex parte preliminary injunction. The Courts will consider two critical factors: the previous conduct of the claimant and the promptness of their reaction.
What happened during MWC 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 and the week of MWC itself.
35 cases were admitted and decided within the framework of the protocol in 2019.
- 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 three of these cases, the court admitted the preliminary injunctions although a “substitution bail” was established allowing (where the bail was deposited) the preliminary measures to be lifted (e.g. the preliminary injunction request submitted by FRACTUS S.A. against HEM S.A.R.L.).
- 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.
What to expect and how to prepare in 2020
As mentioned above, history shows us that the protocol is normally deployed around two weeks ahead of and the week of MWC itself. In 2020, this means week beginning 10 February as the MWC takes place 24-27 February.
It is of course impossible to anticipate the number of cases, but the key point for both IP rights holders and exhibitors remains the same as every year: anticipate and plan.
For IP holders, patents, IP rights and industrial designs can fall victim to infringement both before and during the exhibition; IP holders could potentially therefore see the impact of their own product launch diluted.
For companies launching new products, the presentation of their products may be hampered and withdrawal of products from the exhibition can lead to significant reputational damage, and wasted marketing efforts.
It is important to be alert to these risks, and to have an experienced support network ready to respond.
IP rights holders should prepare by:
- Nominating an internal team to monitor competitors’ product launches.
- Designing a verification and communication plan.
- Activating the verification and communication plan, should there be a product launched suspected to infringe IP rights.
- Filing any necessary preliminary injunction requests as soon as possible.
Exhibitors should prepare by:
- Nominating an internal team to review any third parties’ IP infringement claims received during the past year.
- Engaging with local legal advisers to review unsettled third parties’ IP infringement claims.
- If needed, filing a protective letter as soon as possible.
Introducing the CMS MWC task force
CMS has a dedicated task force ready to help you promptly deal with any IP-related issues around MWC. This select and highly experienced group, composed of IP and litigation lawyers, delivers emergency IP advice and on-site advisory services in Barcelona, including assisting with the preparation and filing of protective letters.
Since 2015, the MWC IP taskforce has:
- Filed more than 20 protective letters prior to MWC.
- Assisted major telecommunications companies in the possible filing of ex parte preliminary injunction requests against IP infringers; and
- Been involved in preliminary injunction proceedings filed against clients who had filed a protective letter.
CMS is recognised as a top legal adviser for Technology, Media and Communications (TMC) players. Over 300 sector specialists are further supported by broader group of IP lawyers in over 40 countries. We house one of the world’s most experienced and formidable IP litigation practices. Uniquely among large law firms, we also offer a significant patent, trade mark and design attorney team with true technical and legal expertise. And of course we help our clients in complex licensing and exploitation in the world’s most highly regulated sectors.
CMS is ranked in 10 jurisdictions by IP Stars, and many of our IP lawyers serve on leading industry associations’ committees, including the INTA, AIPLA and AIPPI.
