On February 21 2017 the General Council of the Judiciary's February 2 2017 agreement – which exclusively assigned competence to hear IP matters that arise under the Patent Act 24/2014, the Trademark Act 17/2001 and the Industrial Design Act 20/2003 to certain commercial courts in the autonomous communities of Catalonia, Madrid and Valencia – was published in the Official State Bulletin.

Background

The agreement arose from Article 118 of the Patent Act, the second paragraph of which states that:

"Objective competence shall be attributed to the Commercial Court Judge of the city where the High Court of Justice is located in those autonomous communities in which the General Council of the Judiciary has agreed to exclusively assign the knowledge of the patent cases."

According to the first additional provisions of the Trademark Act and the Industrial Design Act, the abovementioned article also applies thereto. These first additional provisions were amended by Final Provisions 3 and 4 of the Patent Act 2015, respectively, in order to comply with the changes to the Patent Act.

Similarly, a paragraph regarding the exclusive assignment of cases to the EU trademark courts when joint actions are exercised and one of them is based on an EU community registry has been added to the first preliminary provision of both the Trademark Act and the Industrial Design Act.

Assignment of competence

According to the General Council of the Judiciary's agreement, the assignment of competence regarding the abovementioned matters is as follows.

Catalonia Barcelona Commercial Courts 1, 4 and 5 will handle civil proceedings brought under the Patent Act and the Industrial Design Act. Barcelona Commercial Courts 2, 6, 8 and 9 will handle civil proceedings brought under the Trademark Act.

Madrid Madrid Commercial Courts 6 to 11 will handle civil proceedings brought under the Patent Act, the Trademark Act and the Industrial Design Act.

Valencia Valencia Commercial Court 2 will handle civil proceedings brought under the Patent Act. Valencia Commercial Courts 1 and 3 will handle civil proceedings brought under the Trademark Act and the Industrial Design Act.

Comment

This agreement has accomplished the long-awaited consolidation of the Spanish commercial courts' specialisations in IP matters (particularly with regard to patents, trademarks and industrial designs).

The agreement took effect on April 1 2017, coinciding with the new Patent Act's entry into force.

For further information on this topic please contact Guillem Villaescusa at Grau & Angulo by telephone (+34 93 202 34 56) or email (g.villaescusa@gba-ip.com). The Grau & Angulo website can be accessed at www.gba-ip.com.

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