Enforcing IP rights
Miguel Vidal-Quadras
Amat & Vidal-Quadras, Barcelona
Spanish law on the protection of intellectual property rights is contained in separate acts on patents, trademarks, industrial designs and copyright. Although each of the statutes has its own particular features according to the nature of the right, specific rules on litigation based on industrial property are laid out mainly in the Patent Act. Regulations on trademarks and industrial designs refer to that text. Regarding copyright, there is no reference to patent law but simply to ordinary civil procedure complemented by some features provided for in the Copyright Act.
Intellectual property lies within the jurisdiction of the Spanish central government. The law applies to the Spanish state as a whole and the granting of rights is centralised at the Spanish Patent and Trademark Office (OEPM). Judicial decisions affect the right throughout Spain and the applicable jurisprudence is common to the entire state.
The Spanish Patents Act was passed in 1986 according to the provisions settled in the draft of the Community Patent Convention of 1978 and in the European Patent Convention. Some minor changes have been introduced since then, the most important being the addition made in 2002 by incorporating the European Directive on Biotechnology. Some Spanish courts are becoming increasingly sensitive to decisions made by the EPO (even when they are not translated into Spanish), as well as to the case law developed in other European countries.
The recent approval of a new Trademarks Act in 2001 (the former being passed in 1988) and of the Industrial Designs Act in 2003 (the regulation was formerly included in the Industrial Property Statute of 1929) has completed the adaptation of Spanish intellectual property law to European standards. The new Industrial Designs Act of 2003 entered fully into force in July 2004.
Supplementary protection certificates for medical products (SPCs) have been available in Spain since 1998 and are granted by the OEPM. Although the Spanish Patent Office interpreted that it had a very limited scope for intervention in the granting of SPCs, a recent decision in 2004 has made clear that the Spanish Patent Office has indeed a broader scope of intervention.
Community trademarks and designs granted by the OHIM (Office for Harmonisation in the Internal Market) extend to Spain, and the Spanish courts are able to hear cases affecting those rights in the form established in the Community Regulations.
Another law that may support claims relating to intellectual property assets, when these are not registered or when there are further issues to contemplate other than just rights of exclusivity, is the Unfair Competition Act of 1991. This may be helpful in some cases, although the need for evidence that the conduct is unfair will call for greater efforts in the preparation of the case and explanation to the judge.
What and where to litigate
Intellectual property rights relating to industrial intangible assets other than copyright are granted by the OEPM, which is an official body under the Ministry of Industry. These rights are subject to a prior administrative control that may be appealed against before the administrative courts. An administrative decision granting or denying a certain industrial property right may be appealed against within a term of two months and the court will limit the hearing of the case to the administrative act.
The infringement of an intellectual property right may be alleged before the civil or criminal courts and the nullity of a certain right may be sought before the civil courts as long as the right is still enforceable. Several judicial decisions in 2003 and 2004 have made clear that patent rights cannot be invoked before administrative courts in order to obtain the cancellation of market authorisation for medicines.
In an infringement case it is not unusual for the defendant to allege the nullity of the right merely as a defence or in the form of a counterclaim. Spanish procedural laws allow this expressly. When the right invoked in the proceedings is a patent, this can be used as a strategy to try to restrict the construction of its scope.
As regards civil litigation between the holder of an intellectual property right and a third party, Spanish law provides that the territorial competence will normally be recognised for the court of the territory where the defendant resides. It is also possible to claim against the alleged infringer in the territory in which the act of infringement is carried out. This last alternative was introduced in 2002 by the new Spanish Trademark Act and affects general provisions on industrial property. There have, however, been some cases in 2003 and 2004 in which the courts have made clear that the choice of jurisdiction is not possible when the infringement is carried out in several Spanish autonomous regions. In this case the relevant jurisdiction corresponds to where the registered office of the infringer is located.
Matters relating to industrial property rights are referred to the courts of the capital of the autonomous community where the case has to be heard; thus, if the infringer resides in the territory of Catalonia or the infringement was detected in the territory of Basque country, only the courts in the cities of Barcelona or Bilbao, respectively, will be competent to hear the case.
Competent courts
Mercantile courts have been functioning since 1st September 2004. These courts only hear cases dealing with commercial matters, among which are intellectual property rights and unfair competition. In relation to Community trademarks and designs, the court of first instance in Alicante is the only one with jurisdiction in Spain.
Until now there have not been specialist courts dealing with intellectual property issues, although some appeal courts have been semi-specialised (eg, Barcelona).
At first instance, a single non-specialised judge issues a court decision. Decisions taken at first instance may be revised by appeal lodged before a court composed of three senior judges. Although there is no specialisation in intellectual property matters, there are two designated divisions of the courts of appeal in Barcelona (for Catalonia) and in Bilbao (for the Basque country) that only hear intellectual property matters. Decisions taken at second instance may be appealed before the Supreme Court only in exceptional cases.
The trial
All infringing acts may become the subject-matter of a legal suit within a term of five years from the time when the plaintiff became aware of them. Damages will be calculated with the limit of the five years preceding the filing of the writ of summons.
Civil litigation in Spain consists mainly of initial writs by both parties (claim, reply and sometimes counterclaim and reply to the counterclaim), a first hearing to settle the terms of the dispute and to provide evidence, and a main hearing to examine the evidence and hear the conclusions of the lawyers. After the main hearing the judge will come to a decision within a few weeks and will notify the judgment to the parties. Spanish procedural law does not contemplate the intervention of a jury in civil or administrative proceedings.
The means of evidence that may be used in a trial consist mainly of documents (private and official), questioning of the parties, witnesses, reproducible means (voice, images, etc) and expert opinions where the experts contributions are important in the case. Circumstantial evidence could help, but will in no case be decisive in finding for infringement of a certain intellectual property right.
There are provisions in Spanish civil procedure law permitting questioning of the parties before the judge as well as inspection of the documents of the counterparty when the judge considers this appropriate.
Among the most important pieces of evidence when technical questions are being handled are technical reports issued by experts particularly when patents, utility models or industrial designs are being discussed. Usually both parties will include with their initial writs the opinion of technical experts in the matter concerning validity or infringement of the right (especially if the intellectual property right invoked in the process is a patent). It is also usual for the parties to ask the judge to appoint a court expert who will give his opinion on validity, infringement, and/or marketing and financial issues and, in relation to patents, whether questions surrounding the validity of a patent right raised in the trial should properly be considered by OEPM. On the day of the hearing the experts will be called to explain their conclusions and answer any questions that the parties might put.
It is important to stress that provisional execution of decisions taken at first instance will be the rule even if they had been appealed against. This is a modification of Spanish civil procedure implemented in 2001 and has introduced an important change, since up to that year provisional execution of court decisions was the exception.
Concerning criminal procedure, the law provides for an offence consisting of deliberate infringement of intellectual property rights. In this case the infringement, for it to be classified as a criminal offence, has to be intentional and conscious. Criminal prosecution is very unusual where the protection of a patent right is concerned, but more frequent for trademarks and copyright. The judge undertakes the investigation and the procedure differs substantially from civil procedure. The plaintiff party does not take the initiative in the case but the judge and the state prosecutor play an important role.
Remedies available to right owners
Remedies available to intellectual property right holders or licensees are not restricted and will be open to their needs. The law nevertheless provides some remedies that the owner of a certain right may seek from the court. This simplifies the suit, since the plaintiff will have only to refer to the law to prove that a certain petition is reasonable and appropriate to protect a certain right.
The remedies expressly provided for in the laws are the following:
Common to patents, trademarks and industrial designs: cessation of acts of infringement; compensation for damages; the adoption of any necessary measure to prevent continuing infringement, and particularly transfer of the goods seized or their destruction; and publication of the judgment.
Specifically for patents: seizure of the objects produced or imported in breach of the right, as well as the means exclusively directed at such production.
Specifically for patents and industrial designs: transfer of ownership of the infringing goods to the holder of the rights (the value of such goods will be deducted from the amount of damages).
Specifically for trademarks and industrial designs: destruction or transfer of the goods with humanitarian aims; and withdrawal of the infringing goods from the market.
Preliminary injunctions and other special procedures
It is possible to apply for the adoption of interlocutory injunctions if the general prerequisites of the law are accomplished (presumption of a valid right, evidence of the infringement, urgency due to danger in delay, time passed from the moment in which the plaintiff learned of the acts of infringement and effective exploitation of the patent by the plaintiff or by a third party with its consent sufficient to satisfy Spanish market demand). It is important to take into account that the Spanish Patents Act establishes as a legal prerequisite for granting preliminary injunctions that patents invoked in the process are effectively being used.
The process of preliminary injunctions starts with an initial writ where provisional measures are sought to make a competitor cease a possible infringement. The judge will call the parties to a hearing exceptionally, and depending on the circumstances, he will take the decision prior to hearing the defendant. The defendant will outline the arguments in his defence and both parties will propose the means of evidence useful to support their arguments, which should be produced and examined during the hearing (documents, questioning of the parties, witnesses and expert opinions), and afterwards both parties will offer their conclusions. After the hearing and in the course of the following days, the judge will hand down a decision that may be appealed against at second instance.
When there are suspicions that an infringement is taking place but the plaintiff is unable to demonstrate it, the law provides for a particular preliminary procedure of disclosure. Where evidence of an infringement is not available and there are only suspicions, there is the possibility of asking the judge to verify the facts that might be considered as infringing the exclusive right of the patentee. Technical information can then be required for disclosure in a preliminary process consisting of a court inspection carried out without previous notice on the relevant company, in the absence of the patentee and with the help of independent expert/s. This process may only be initiated once the patent has been granted.
Time and cost of taking a case through the courts
The time needed to take a case through the courts will depend on the complexity of the case, the need to appoint independent experts and the working system of the court. Normally an intellectual property case at first instance should take around 10 to 20 months, and at second instance one to two years depending on the provincial court that is hearing the case and its workload. If there are preliminary injunctions, the duration of these proceedings could normally shorten to around six weeks to five months at first instance, and about one year at second instance.
The fees of the legal experts and lawyers depend on the complexity of the case as well as the preparation needed. It is normal for a Spanish lawyer to provide the client with a budget before taking the case.
Alternative dispute resolution
Arbitration is established legally as an alternative to court litigation. The parties will have to be willing to accept the arbitration proceedings and the controversy cannot be the exclusive jurisdiction of the courts. In relation to intellectual property rights granted by the state, the courts will have exclusive jurisdiction to declare their nullity or validity. Concerning trademarks the new Act of 2001 has provided for the possibility of arbitration when the nullity of a certain trademark is based on the existence of a prior trademark held by the opposing party.
Submission to arbitration is usual in agreements where intellectual property rights are involved, such as franchising, licensing, transfer of technology and research. In this case the arbitration court will be competent to decide. When intellectual property issues are relevant it may be advisable to state in the arbitration clause of the agreement the knowledge and experience that will be required of the arbitrators.