Selection of Specialized Courts in Industrial Property Rights for Certain Autonomous Communities in Spain
The Official Journal of December 30th, 2016 (in Spanish) publishes the Agreement of the Permanent Commission of the General Council of the Judicial Power that designates certain first instance courts of Catalonia, Madrid and the Valencian Community as the courts with exclusive competence to know about civil actions in the field of trademarks, patents and industrial designs.
The Agreement favours the specialization of our courts in industrial property. At first sight, this should imply a higher technical quality of the decisions and a shorter term for the substantiation of the procedures.
Furthermore, forum shopping is severely limited, something that benefit defendant’s due process right and favours the uniformity of the case law. In relation to the first aspect, art. 118 of the new Patent Law (that will enter into force in April) still allows certain alternatives for the plaintiff to practice forum shopping in cases where the infringement took place all over Spain, and neither the defendant nor his representative in Spain are located in Madrid, Catalonia or Valencia. In these cases, the second paragraph of sections 3 and 4 allows the plaintiff to file the complaint at his own discretion before the specialized courts of any of these Autonomous Communities. Needless to say, the duration of the procedures in these specialized courts would be one of the main aspects to bear in mind to make the choice.
Finally, the Agreement avoid a dangerous situation that we had already pointed out in a previous post. Before the 30th December 2016, the only specialized courts in Spain where those of Barcelona (Agreement of the General Council of the Judicial Power of 23 November 2011). If the new Patent Law would had entered into force without this new agreement being adopted, according to Art. 118 every civil action related to an Industrial Property rights should have been substantiated before the first instance court of Barcelona. This would have created a tremendous back log for those courts and procedures would have been severely delayed. We hope that the new Agreement avoids this situation.
Related Posts:
- Comments on the Objective and Territorial Competence of Spanish Courts to Hear about Actions for Annulment of Patents
- The hazards of choice of forum clauses in favor of foreign courts
- Spain ran low in 2012 regarding National IP rights
- The European Account Preservation Order, a New Provisional Measure for IP Cross-border Disputes