In the era of globalization, the Internet, and social media, intellectual property infringement has become a frequent and complex problem that transcends national borders. Certainly, digital tools and global connectivity facilitate both the violation and improper exploitation of these rights. Consequently, national legislations and Private International Law have the obligation to reinforce existing protections. By the way, in Spain and the European Union, this effort has been manifested in the adoption of preliminary injunctions. These constitute a fundamental tool to effectively protect intellectual property rights.
What are preliminary injunctions for intellectual property infringement?
Basically, preliminary injunctions are judicial decisions implemented before or during a legal process with the aim of ensuring the effectiveness of a future judgment. These measures seek to prevent the passage of time from harming the effectiveness of the judicial resolution. In this way, they guarantee provisional and effective protection of the disputed rights. Precautionary judicial protection is particularly relevant in cases of intellectual property infringement, where the consequences of such violations can be severe and long-lasting.
The unauthorized use of inventions, creations, or distinctive signs can cause significant damage to the holders of these rights during the legal process. For example, plagiarism of inventions or improper use of trademarks can have a considerable economic and reputational impact. The adoption of preliminary injunctions can be critical to mitigating these damages. As we said, these ensure that the right holder does not suffer irreparable losses while the case is resolved in court.
At events such as trade fairs and professional congresses, the application of preliminary injunctions proves to be an effective tool. A notable example is the action protocol implemented by the Commercial Courts of Barcelona at the Mobile World Congress. This initiative has served to protect intellectual property rights proactively and effectively.
Preliminary injunctions for industrial property infringement
Indeed, Spanish legislation provides a series of preliminary injunctions to protect industrial property rights. Law 24/2015, of July 24, on Patents (LP), regulates these measures in its articles 127 et seq., applicable to all forms of industrial property. On the other hand, it is also relevant to request any measure provided for in the Civil Procedure Law (LEC). Among the notable measures we have:
- Cessation or prohibition of infringing acts. This measure seeks to stop any action that may infringe the applicant’s right, thus preventing further damage. It is contemplated in Article 134 of the LP.
- Retention and deposit of infringing objects. This consists of ordering the retention and deposit of allegedly infringing goods to prevent their use or commercialization. Specifically, Articles 134 LP and 727.9 LEC are the legal basis for this action.
- Bond for possible indemnities. The purpose of this measure is to establish a guarantee to ensure the payment of indemnities that may arise from the infringement (Article 134 LP).
- Registry annotations. Specifically, annotations are made in the relevant registers to reflect the existence of a legal dispute over industrial property. This is established by Articles 134 of the Patent Law and 727.6 of the LEC.
By the way, the Patent Law introduces preventive briefs, a procedural instrument that allows a party to appear before the competent court to defend itself against possible preliminary injunctions that may be requested against it. This tool provides a proactive form of protection and defense for the parties involved in cases of industrial property infringement.
Additional preliminary injunctions under the Civil Procedure Law
Furthermore, the Civil Procedure Law (LEC) also provides for a series of preliminary injunctions applicable to industrial property. However, these must always conform to the nature of these rights. Among these measures are:
- Preventive attachment. The attachment of goods is ordered to ensure compliance with the future judgment.
- Judicial administration of assets. For these purposes, a judicial administrator is appointed to manage the disputed assets, ensuring their preservation and compliance with judicial decisions.
Measures for intellectual property infringement
Likewise, in the field of intellectual property law, it is possible to request preliminary injunctions. Especially when an infringement of copyright on a literary, scientific, or artistic work is detected, or when there is a reasonable and well-founded suspicion that such infringement may occur. This possibility is contemplated in Article 141 of Royal Legislative Decree 1/1996, of April 12, which approves the revised text of the Intellectual Property Law.
For these measures to proceed, the applicant must be the holder of the copyright recognized in the aforementioned law. In fact, if they do not hold this ownership, they will lack active standing to request such actions.
Unlike industrial property infringement, preliminary injunctions that can be adopted in cases of intellectual property crime include the intervention or deposit of income obtained from the illicit activity. Also, the suspension of reproduction, distribution, and public communication activity, and the seizure of illicitly produced or used copies are appropriate.
Deterrent effect and risks of preliminary injunctions
The possibility of adopting preliminary injunctions can have a strong deterrent effect on potential infringers who might try to benefit from procedural delay. Even so, these measures are not without risks. In reality, there is a possibility that they may be adopted unjustifiably, causing irreparable damage. To prevent abuses, certain guarantees against undue action by the rights holder have been established:
- Petitioner’s bond. The applicant for the measures must provide a bond to answer for any damages that may arise if the measures prove to be unjustified.
- Bond in case of restrictions. If the requested measures restrict the industrial or commercial activity of the defendant, the judge will set a bond that the defendant can satisfy to replace the restrictive measures. For these purposes, bonds will be set for specific periods of time, mainly when the measures are a consequence of industrial or commercial exploitation acts that have continuity over time.
Timing of preliminary injunction requests
Indeed, preliminary injunctions for intellectual and industrial property infringement can be requested at different times during the judicial process:
- Concurrently with the main lawsuit.
- Prior to the start of the process. In this case, it is necessary to allege and prove reasons of urgency or necessity. However, the measures will cease to be effective if the lawsuit is not filed within 20 days following their adoption. Consequently, the applicant will be ordered to pay costs for damages.
- After filing the lawsuit or during an appeal, provided that the request is based on facts and circumstances that justify the request at such times.
Of course, these provisions ensure that preliminary injunctions are used fairly and effectively, protecting both the rights of holders and the interests of defendants.
We act effectively in cases of our clients’ intellectual property infringement
At ISERN, we provide specialized legal advice on the registration and protection of trademarks, patents, and other intellectual assets both nationally and internationally. With a century of experience in the sector and a team of more than 150 highly qualified professionals, we have managed over 350,000 files and served more than 40,000 clients worldwide. This trajectory positions us as leaders in the field of industrial and intellectual property.
In the face of any infringement of our clients’ industrial or intellectual property rights, our response is swift and forceful. To this end, we ensure a solid legal defense that includes the early request for preliminary injunctions when necessary. Do not hesitate to contact us or visit us at any of our 12 offices located in the main cities of Spain to receive the best support in protecting your intangible assets.