Implications of the Spanish Act on international judicial cooperation in civil matters and the amendments of the Spanish Organic Act of the Judicial Power for international litigation in intellectual property matters
The past month of July, several laws which directly affect the autonomous international civil law system have been adopted in Spain. Two of them have certain implications on international litigation in the field of intellectual property: the Act 29/2015 on international judicial cooperation in civil matters (in Spanish) and the Organic Act 7/2015 of the Judicial Power (in Spanish). The purpose of this post is to briefly explain the referred implications.
Amendments on the grounds of international jurisdiction established in the Organic Act of the Judicial Power
Among many other amendments, the Act 7/2015 modifies the grounds of international jurisdiction established in the former art.22 of the said act. With the new draft, these grounds are regulated in articles 22 (exclusive jurisdiction), 22.bis (express and tacit submission), 22.ter (general jurisdiction of the defendant’s domicile), 22.quarter (special grounds of jurisdiction on non-patrimonial matters) and 22.quinquies (special grounds on patrimonial matters).
Despite so many modifications, it must be born in mind that, in practical terms, the implications of these changes are scarce as to litigation in relation to intellectual property matters. This is a consequence of the prevalence of the European and conventional instruments in this field, as art. 21.1 reminds us.
Thus, art.22.bis (express and tacit submission) becomes inapplicable to intellectual property disputes (no matter whether they have a contractual or non-contractual nature). This is due to the fact that, since the entry into force of Brussels I bis Regulation, its choice of jurisdiction stipulations are applicable regardless of the domicile of any of the parties (art.25). This was already so in relation to the tacit submission.
Paragraph 4 of art.22.ter is worth mentioning since it finally offers a legal solution for those cases in which the plaintiff files a lawsuit in Spain while existing a choice of jurisdiction to foreign courts (derogation fori). According to this stipulation, even if the defendant is domiciled in our country “the court will stay the proceedings and will only be able to deal with the matter if the foreign courts have declared themselves incompetent”. However, this stipulation is only applicable when the foreign court is one belonging to a non-EU member state (if the derogatio designates the Court of a Member State, art. 25 of Brussels I Regulation is applicable).
It remains to be seen the scope of application of the stipulation, since the provision determines its inapplicability in matters governed by mandatory law. In this sense, we ask ourselves what Spanish courts will do in relation to agency contracts, since Spanish courts have been very protective with these contracts up to the date. This is so because first additional provision of Act 20/1992 of agency contracts (in Spanish), which establishes the obligation to litigate before the courts of the agent’s domicile.
Art. 22.ter establishes the general forum of the defendant’s domicile, which is not applicable to these matters because of art.4 of Brussels I regulation. However, the incorporation of a definition of “defendant’s domicile” is very important as to jurisdiction issues, so it is no more necessary in these cases to apply articles 40-41 of the Spanish Civil Code: “2. The domicile of natural persons for the purposes of this article shall be considered to be in Spain when the person has its habitual residence in Spain. It shall be deemed that legal entities have their domicile in Spain when they have in Spain their headquarters or their main administrative office or their office from which they exercise their main institutional functions.”
It is also very interesting the fact that this disposition includes a ground of jurisdiction for the case of plurality of defendants. Thus, “3. in case of plurality of defendants, Spanish Courts will be competent when at least one of the defendants has its domicile in Spain, provided that only one action is brought or that several actions are brought, having all of them a common link in relation to their subject-matter or their cause which recommend their accumulation”. Once more, it must be highlighted that this forum will only be suitable in order to accumulate actions against defendants domiciled in third states, since art.8 of Brussels I bis Regulation is applicable for those defendants domiciled in EU-member states.
Lastly, special grounds of jurisdiction are regulated in art.22.quinquies. For disputes having non-contractual nature, Spanish courts will have jurisdiction “when the harmful event occurs within the Spanish territory” (letter b). The legislator has been very brief in the wording of the provision, so it must be construed considering the plenty jurisprudence of the CJEU in relation to the current art.7.2 of the Brussels I Regulation.
For disputes having contractual nature, a minor change has been introduced, since letter a) indicates that Spanish Courts will be competent “when the obligation underlying the claim has been or must be fulfilled in Spain”. As it can be observed, the forum celebrationis, which was present in the previous draft and which was correctly criticized for its exorbitance, is now eliminated.
Spanish Act 29/2015 on International Judicial Cooperation in Civil Matters
The first important change of this act is connected with the amendments introduced in the Spanish Organic Act of the Judicial Power. It has to do with the regulation for the first time in our autonomous system of international lis pendens and related actions. Indeed, the referral of art.22 nonies of the Spanish Organic Act of the Judicial Power to the “procedural law” in order to regulate these matters must be understood as done to articles 37 to 39 of the Spanish Act on International Judicial Cooperation and not to the internal regulation of lis pendens and related actions. These new provisions give a suitable and well-thought answer to both pathological situations. Nevertheless, they will not be applicable to disputes in relation with intellectual property matters (or in relation with any civil or commercial matter included in Brussels I Regulation). The reason: the new Brussels I Regulation regulates since January 2015, not only the lis pendens and related actions “intra-EU” (between Courts belonging to different EU-member states, articles 29 and 30), but also the “extra-EU” cases (situations in which the Court of a EU-member state is dealing with a case with identical parties, subject-matter and cause action to another proceeding in course in a third State, articles 33 and 34).
Another aspect to underline is contained in article 33, which deals with the proof of Foreign Law. This provision does not change the current system of the present art. 281.2 of the Spanish procedural Act (in Spanish) which establishes the burden of proof on the interested party with the optional intervention of the Judge, although it clarifies that “exceptionally, in those cases where neither of the parties have proved the content and currency of the Foreign Law, the Spanish Law may be applied”. With this clarification, a hypothetical dismissal of the claim founded on a lack of proof of the Foreign Law is discarded, although part of the doctrine supported this solution which, in certain cases, seemed to be fair in order to avoid fraudulent procedural strategies.
Without any doubt, the two more relevant changes introduced by the Spanish Act on International Judicial Cooperation deal with the recognition and enforcement of decisions adopted in another Member State or in a third State.
For the second case, article 851 and subsequent articles of the Spanish Procedural Act of 1881 are repealed. The recognition and enforcement of these decisions will be accomplished according to articles 41 to 55 which, although they don’t change substantially the previous system (it is still necessary to go through the exequatur), they update and clarify the existent system, since they provide certainty about the competent bodies, the proceeding, the dismissal reasons (they have been updated following the jurisprudence of the Spanish Supreme Court) and the impossibility of carrying out a revision on the merits. Furthermore, an incidental recognition system has been introduced that will be certainly useful to invoke the res iudicata effect.
For the first case, the 2nd Final Provision of the Spanish Act on International Judicial Cooperation introduces a new 25th Final Provision in the Spanish Procedural Act which includes rules to make easier the recognition and enforcement in Spain of decisions covered by the new Brussels I Regulation. As known, this Regulation completely eliminates the exequatur procedure so, for cases of recognition of either declaratory or res iudicata effects of a decision, or even for cases of enforcement of a decision, it won’t be necessary to “go through any court proceeding” or to obtain a “previous declaration of enforceability”. However, the grounds of denial of the recognition or the exequatur in the previous version of the Brussels I Regulation will still be applicable for the denial of the automatic recognition or enforcement.
Besides this, the Spanish Act on International Judicial Cooperation introduces updated mechanisms (articles 5-33) for those cases in which in an on-going proceeding in Spain it is necessary to ask for judicial assistance of foreign authorities in order to make a notification or to obtain evidence (or vice versa). Of course, these provisions become applicable in absence of European instrument in the matter – it should be kept in mind that notifications between EU-member States are made according to Regulation 1393/2007 and the obtaining of evidence is regulated by Regulation 1206/2001 – or in absence of bilateral or multilateral agreements with the State where the process must be carried out.
Related Posts:
- The hazards of choice of forum clauses in favor of foreign courts
- Comments on the Objective and Territorial Competence of Spanish Courts to Hear about Actions for Annulment of Patents
- On the Different Interpretation of Forum Delicti Commissi in Relation to EU Trademarks and National Trademarks
- CJEU Judgment “Brogsitter”: Is It Possible to File an Extracontractual Action when the Parties under Litigation are Linked by an Intellectual Property License?