The Mobile World Congress (MWC), whose latest edition took place in Barcelona from 25 to 28 February 2019, is the largest mobile communications event in the world where new devices, applications and the latest developments in wireless and mobile communications technologies are showcased. This has given rise to a substantial increase in recent years of the IP rights-related conflicts in connection with new product launches at the fair, which are handled by the Barcelona commercial courts and, more specifically, by the Barcelona Patent Tribunal.
In order to avoid, to the extent possible, that preliminary injunctions (PIs) be granted ex parte during the MWC, the Barcelona IP Courts (including the Patent Courts) issued, for the fifth year in a row, a Fast-Acting protocol (the Protocol) committing to handle with priority all IP-related, unfair competition and unlawful advertising claims arising in connection with the MWC. The EU Trademark and Designs Court of Alicante also joined the Protocol this year for the first time.
The Protocol, adopted on 13 December 2018 and in force throughout February 2019, provided that:
- Urgent PIs related to IP rights in relation to products that will be exhibited at the MWC will be processed with priority;
- Ex parte PIs will be decided within 48 hours from receipt of the petition by the court. In the case that a hearing be held, a decision will be rendered within a maximum of 10 days, if a protective brief has been filed by the defendant;
- Protective briefs will be admitted within 24 hours from filing when there is reasonable concern on the part of the defendant of being sued for ex parte PIs;
- Urgency will be assessed taking into account the plaintiff’s prior behavior and the speed with which it has reacted to the knowledge of infringement; and that
- The preliminary injunctions and/or urgent measures granted by the EU Trademark and Designs Court of Alicante will be immediately enforced by the Commercial Courts of Barcelona.
According to the figures on cases handled under the protocols in force in previous years, the Protocol has proven to be quite effective in providing the companies involved in the MWC with a quick judicial response. The MWC 2018 report published by the General Council of the Judiciary showed a 40% increase in the cases handled by the Barcelona Courts with respect to the previous year. The MWC 2019 report has now been released, with the following summary of activities of the Barcelona and Alicante Courts:
- 36 protective briefs related to patents were submitted. All of them were processed and resolved the same day that that they were filed. The applicants and affected parties included technology multinationals.
- 2 protective briefs related to European Union trade mark also were filed and admitted
- 5 “diligencias de comprobación de hechos” (ex parte inspection proceedings aimed at the verification of facts that may constitute patent infringement) were submitted against 3 companies. They were processed and resolved in 48 hours: two were upheld and three were revoked.
- 7 applications for ex parte preliminary injunction were submitted, which were processed and resolved in 48 hours
- 3 applications were upheld and 2 were revoked
- In 3 of the preliminary injunctions cases a substitution bank guarantee was paid by the defendants, so the measures were not enforced. In one of them, no guarantee was deposited, so the effects of the preliminary injunctions were upheld throughout of the Congress.
- In 2 of the ex parte preliminary injunctions cases, the defendant filed an opposition and, as a result, the preliminary measures were revoked. The mobiles seized were immediately returned the same day to the company affected.
- 1 preliminary injunction application related to trademarks was filed ex parte before the Commercial Court of Barcelona, but was rejected.
- In the European Union Trademark Court of Alicante, 1 application for ex parte preliminary injunction was filed involving a EU trademark, but was also denied.
Compared to 2018 activities arising from MWC, the number of cases handled by the Courts in 2019 within the framework of the Protocol showed a new increase of 42,8%, with a total amount of 50 cases admitted and resolved. In particular, the number of protective briefs and ex parte inspection proceedings filed and processed is up more than 50% and the number of preliminary injunctions (both ex parte and with hearing) is maintained.
The report highlighted this year’s close and coordinated collaboration with the heads of GSMA and FIRA and, especially, the Police forces and its specialized technology unit, which guaranteed the effectiveness and enforceability of judicial decisions adopted during the event. The incorporation and participation in the Protocol of the EU Trademark Court of Alicante, was also flagged. This measure widened protection for the exhibitors of the Congress to include EU trademarks and community designs and increased the dissemination and knowledge of the Protocol.