This briefing note deals with policies that should be followed by companies participating in trade fairs, with the two-fold objective of ensuring effective and immediate protection of their intellectual property rights against infringement and minimising the risk of interim (injunctive and other) relief which could hamper or hinder, in full or in part, their commercial activity during such trade fairs.
GÓMEZ-ACEBO & POMBO is one of the most active Iberian law firms on this subject, particularly in recent years with the Mobile World Congress being held in Barcelona.
Trade fairs are the stage on which companies reveal their innovations to the market. These forums are a frequent scene of disputes over infringements of intellectual property rights such as invention patents or utility models, trade marks, trade names, industrial designs, plant varieties or copyrights.
The objective of this memo is to make businesses aware of the need to adopt measures and apply internal procedures that will afford them greater success when facing the challenges that their participation in trade fairs poses from the point of view of intellectual property rights, both in protective terms (that is, when a company suspects that showing its products at a trade fair may give rise to an application for interim relief due to an infringement of third-party intellectual property rights) and enforcement terms (in those cases where a rights owner suspects or becomes aware that the products being shown at the trade fair by one of its competitors might infringe its rights).
2. In terms of preparing for the enforcement of an intellectual property right against a third party
Companies would be well advised to put the following initiatives into practice prior to or when registering as an exhibitor at a trade show:
Step 1 - Competitive intelligence (I): Identify the exhibitors
As soon as the list of exhibitors is available, they should identify any competitors and other exhibiting companies which, on account of their business sector, the degree of similarity of their products and services with those marketed by one’s own company, the prior existence of demand or warning letters or any other circumstances, have a higher probability of launching products or offering services in infringement of the company’s intellectual property rights.
Step 2 - Competitive intelligence (II): Analyse the characteristics of the products and services
Once the company has identified the exhibitors liable to market products or services that collide with its own intellectual property rights, it should obtain, either from external sources or from the company’s own sales or marketing department, detailed information on the products or services in question. In particular, it should obtain information on the aesthetic, technical and functional features of such products, their composition as well as any other attributes that distinguish them, distinctive signs used to identify them, format and advertising materials used to promote them as well as the dates they first came to market, were launched, etc.
Step 3 - Review the strength and validity of the company's intellectual property rights and define its strategy
After identifying the competitor and the product in question, the intellectual property rights that have been infringed and the soundness of the evidence collected, the company must examine the relevant findings of fact and test the strength and validity of the rights in question, the company’s legal standing to assert it and any other substantive and formal aspects that could hamper or hinder such assertion before a court of law, such as the registration of user licenses for those rights, proof of genuine use of the right, etc.
Step 4 - Select procedural tools
Finally, the company must choose the appropriate procedural tool, as the case may be, to obtain an interim remedy either allowing the owner of the intellectual property right to collect conclusive evidence of the infringement during the trade fair (by way of pre-trial disclosure or inquiries) or preventing its competitor from displaying any products liable to infringe the applicant’s intellectual property rights at the trade fair (restraint, detention and custody of relevant property, etc., whether or not ex parte).
3. In terms of protection
The main risk facing any company participating in a trade fair by exhibiting its product portfolio, whether or not new, is dealing with an application for interim relief on the grounds of an infringement of intellectual property rights or, worse yet, an interim remedy granted ex parte which entails a complete or partial withdrawal of its products from the trade fair stand or, in the worst case, the closure of the stand during the trade fair.
The entry into force of the new Patents Act on 1 April 2017 gives carte blanche to the practice of filing protective letters with Spanish courts – until now only permitted by the courts of certain Spanish cities on the basis of legislation governing non-contentious (in re) proceedings - in connection with any disputes involving not only invention patents or utility models, but any intellectual property right.
A protective letter is a procedural pre-trial tool whereby a company suspecting or fearing (for instance, as a result of its participation at a trade fair as an exhibitor) that it will be the subject of an ex parte interim remedy applied for by the holder of an intellectual property right, appears before the competent court and files a written statement of case, primarily in order to prevent interim relief from being made at all or, in the alternative, from being made ex parte. If the protective letter is accepted, the right holder will be notified such acceptance and the granted protection will be valid for months.
This legal device, which is common in other European countries such as Germany, the Netherlands or the United Kingdom, was previously only accepted on an exceptional basis by certain Spanish courts, particularly those in Barcelona in the context of the well-known Mobile World Congress, which every year for the past years has gathered the world’s main mobile device manufacturers in Barcelona.
Now that protective letters can be filed anywhere in Spain, companies would be well advised to put an internal action plan in place that takes advantage of this new legal device. Such protocol should incorporate the following three steps:
Step 1 - Prepare a risk map
Companies must, with sufficient time in advance of any trade fair where they intend to exhibit, identify potential or ongoing claims against it for infringement of intellectual property rights in connection with products or services already on the market or yet to be launched, as well as the intellectual property rights asserted in such claims.
Step 2 – Assess the risk and the arguments that may be raised by the defence
After identifying the rights asserted by the claimants, the grounds for the claims and the products or services at issue, the company must analyse the legal status and strength of those rights, their validity, the cogency of the contention that the rights were infringed and any factual background that may be relevant to assess the likelihood of success of a potential application for ex parte interim relief. The aforementioned background includes the time elapsed since the right holder became aware of the alleged infringement up to the date of the risk assessment.
A full assessment will require taking into account the possible impact on the company’s profits of a temporary restraining order or preliminary injunction prohibiting the marketing of the product, the amount of damages the company could be ordered to pay to compensate for the infringement of the rights in question, the effects an order to withdraw a product or close the stand during the trade fair could have on the company’s reputation... Furthermore, procedural aspects related to the applicant’s standing to apply for interim relief or bring an action for infringement of rights, evidence of genuine use of the claimant’s trademarks, etc., should also be considered.
Step 3 – File a protective letter
In light of the findings of the above risk assessment, filing a protective letter before the competent companies court will be appropriate where a company intending to exhibit its products at a trade fair concludes that an application for ex parte interim relief is likely.
The protective letter needs to include both the factual and legal arguments, protective or not, on which the filing party bases its petition to not uphold a specific application for ex parte interim relief and the reasons why a possible application for interim relief would not have sufficiently well-founded reasons of urgency to be awarded ex parte. The company should evaluate the advisability of including evidence of the statements regarding the lack of urgency of a possible application for remedies, the non-existence of any infringement, the invalidity of the rights that could be asserted against the party filing the protective letter or any other circumstances that could be relevant to the case.
We believe the general introduction by companies’ intellectual property departments of the offensive and defensive procedures described above, including the filing of protective letters, prior to participation in a trade fair, will contribute, on the one hand, to strengthening the protection of exhibiting companies’ intellectual property rights that are liable to be infringed during the fair and, on the other hand, to giving exhibitors tools to reduce the risk of being subjected during the fair to legal measures that could hinder their commercial work or undermine their reputation vis-à-vis their competitors.