escrito preventivo

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The Commercial Court No. 8 of Barcelona, in its order 84/2020 of February 25, 2020 (the “Order”), admitted for the first time a request for a protective letter submitted as a preemptive measure in relation to copyright. The request was based on the justifiable fear of being the subject of an ex-parte interim injunction request. The justices of the Barcelona Commercial Court, sitting in plenary session, were unanimous in their decision.

Protective letters are not uncommon in cases involving patents and are the preemptive procedural means by which a party that foresees or fears being  subject to an ex-parte request for an injunction is able to raise a defense against the submission before the competent court and justify its legal position in advance by making submissions both of fact and of law, with a view to avoiding the injunction from being granted or, alternatively, to persuade the court before it decides to grant the injunction to summon both parties to appear before it.

This relief, which is common in neighboring countries, was used for the first time in Germany and is usually referred to as a protective letter in the English-speaking world and as “escrito preventivo” in Spanish law. It is a specially relevant procedural tool within the context of trade fairs and professional congresses, situations in which businesses present their industry breakthroughs, which are often at the heart of conflict about infringement of intellectual and industrial property rights. Therefore, one of the main risks to which a business is particularly exposed when participating in a congress or trade fair is a request for an interim injunction against it for IP or industrial property rights infringement, and even that such a measure be granted ex-parte, resulting in the product being withdrawn or ending participation in the fair or show.

Thus, courts in certain cities around Spain have started admitting protective letters based on voluntary jurisdiction legislation. Spanish Act 24/2015 of July 24 on Patents (the “Patent Act”) includes this legal figure for the first time in its section 132, affording protection to parties who submit these letters in relation to patents.

The issue subject to debate is whether this section extends to submitting these letters beyond the scope of the Patent Act, which is special for our purposes, as would be the case for trademarks, designs or copyrights, which are not expressly protected by special legislation. There is some consensus to extend its scope of application to cover trademarks and trade secrets, as both Spanish Act 17/2001 of December 7 on Trademarks (the “Trademark Act”) and Spanish Act 1/2019 on Trade Secrets (the “Trade Secret Act”) respectively direct us to general procedural legislation and the rules applicable to injunctions under the Patent Act.

There are even more doubts about its application to copyrights, as Royal Legislative Decree 1/1996 of April 12, which approved the Consolidated Intellectual Property Act (the “IP Act”), is silent in relation to submitting a protective letter in this particular sphere. The Spanish Civil Procedure Act (the “LEC”), which would enable it to be applied generally in civil courts, without prejudice to the special procedures that each substantive Act may contain, is also silent on the matter.

The Order, which sheds some light on the issue, argues that protective letters should be admitted in matters relating to intellectual property based on the following:

  • Anything that is not expressly prohibited by Law must be understood as being allowed. On this point, the Order recognizes that the IP Act has been subject to up to 16 amendments since it was first enacted in 1996 and that the legislature has not sought to facilitate its application directly, but that its application supports the right of opposing parties to have their say in proceedings, which is protected by the Constitution.
  • The protection of IP rights cannot be less favorable than the protection afforded to similar matters such as patents, trademarks or trade secrets.
  • In the event that a future defendant party raises a preemptive defense, in no way will it harm a future claimant, given that a protective letter does not involve an injunction being dismissed.

As we have stated, the Order was unanimously approved by all the justices  at the 11 Commercial Courts of Barcelona, which leads one to believe that, in the context of a possible infringement of  intellectual property rights (e.g., audiovisual works, musical works, video games or software), and in particular in the context of key campaigns, the possible future defendant party, fearing that an ex-parte request for an injunction will be made against it, is entitled to preempt this request and submit a protective letter to mitigate the risk associated with an injunction being granted without previous notification. Such is the opinion expressed in the Order, making Barcelona the proper forum to assess the extent to which it would be appropriate to submit a protective letter in relation to IP matters.

Authors: Álvaro Bourkaib and Marta Zaballos

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