Trade marks: preliminary injunction claims

By Beatriz Diaz de Escauriaza



This article outlines the current procedure and law governing preliminary injunction claims in Spain.

Applicable law

The preliminary injunction procedure in relation to a trade mark is regulated in Spain by the Spanish Patents Act 11/1986 (the PA) and the Spanish Civil Procedural Act 1/2000 (the CPA).

This is due to the fact that the Spanish Trade Marks Act 17/2001 (the TMA) does not contain a specific set of articles regarding preliminary injunction claims. It merely states, in section 41 of the TMA, that the holder of an infringed trade mark is entitled to request the enforcement of precautionary measures from the Courts in order to put an end to the infringement. Further, the First Additional Disposition of the Act provides that the procedural aspects regulated under the PA shall be applied to the different kinds of signs falling under the scope of protection of the TMA, provided no contradictions arise between the two provisions.

Hence, when talking about a trade mark preliminary injunction claim, articles 133 to 139 PA are applicable. It is in these articles, and particularly article 134 PA, that the specific injunctions to be requested by the claimant in relation to a trade mark are set out. These injunctions are as follows:

  • Cease the infringing acts.

  • Seizure and deposit of the manufactured or imported objects infringing the trade mark owner’s rights and seizure and deposit of the means exclusively aimed at the manufacturing of the infringing products.

  • Warranty bond to ensure the payment of damages.

  • Annotations in the Spanish Patents and Trade Marks Office’s Registry and other public registries.

On the other hand, the Spanish Civil Procedural Act is applicable with regard to all those issues not specifically covered by the PA, such as:

  • the Court’s jurisdiction;

  • the nature of preliminary injunction claims;

  • the procedural requirements with which the claim has to comply so as to be admitted by the Court;

  • the filing of documents and evidence;

  • the procedural stages of a preliminary injunction claim, etc.

Therefore, although the specific injunctions that can be requested in relation to an infringed trade mark and other particularities are covered by the Patents Act, the stages and general requirements of the procedure are regulated by the CPA.

1. Requirements when filing a trade mark preliminary injunction claim.

a. “Periculum in mora” and “Fumus boni iuris”

The prerequisites of any preliminary injunction claim are (i) the existence of a danger in the delay (“periculum in mora”) and (ii) a prima facie case (“fumus boni iuris”). If the “periculum in mora” requirement is not met, the second one will not be analysed by the Court.

The “periculum in mora” requirement means that the claimant has to prove that the activity of the alleged infringer – which he has not approved - is already causing significant damage to the claimant’s rights, and that the long delays that usually occur in civil proceedings before a final decision is issued at First Instance, may result in the final judgment lacking effect.

On the other hand, the “fumus boni iuris” requirement means that the claimant has to prove that he is entitled to enforce his alleged rights and that there are good reasons to believe that these rights are indeed being infringed by the defendant. When assessing this second requirement, the Court will not thoroughly analyse whether or not the claimant’s rights are being infringed, but will merely state whether, in light of the evidence filed, it seems that his rights are being infringed. Accordingly, the decision issued by the Court in this regard shall not prejudge the decision of the main trade mark infringement proceedings.

Several recent resolutions have been issued by the Spanish Commercial Courts in relation to these two requirements.

For example, in its Resolution of 27 September 2006, the Appeals Court of Madrid upheld the judgment rejecting the preliminary injunction claim issued in first instance by the Commercial Court number 5. According to the Court, the “periculum in mora” requirement was not met because more than 16 months had passed between the claimant becoming aware of the infringement and filing its preliminary injunction claim at the Commercial Court.

Another example showing that lapse of time can be essential to the assessment of the “periculum in mora” requirement is the recent Court Order of the Community Trade Marks Court of Alicante, dated 21 December 2006. In that case, the holder of the community trade mark “HAPPY FEET” had lodged a preliminary injunction action prior to filing the main claim against, among others, the holder of the Spanish trade mark “PARTY FEET”. The claim had been rejected at first instance because seven months had passed between the sending of the cease and desist letter to the infringer and the filing of the claim. According to the Court of First Instance, the late filing of the claim had not been justified by the claimant. Therefore the Court held that the infringement had been permitted by him for at least seven months (no negotiations had been held between the parties in the meantime). As a result, the Court considered that there was no real urgency behind the preliminary injunction action. The Community Trade Marks Court revoked this decision, relying in its reasoning on the following circumstances:

  • The specific injunction sought by the claimant was not the cessation of the infringement, but seizure of the infringer's property.

  • Even though the injunction was granted by the Court, the infringer would still be allowed to develop his activity.

  • As a result, the situation allegedly permitted by the claimant did not relate to the specific injunction sought, so the lapse of seven months between the date of noting the infringement and the filing of the preliminary injunction claim would not effect the granting of the preliminary injunction.

With regard to the second requirement - the “fumus boni iuris” - the Spanish Commercial Courts have also issued some recent decisions.

For example, the Court Order issued by the Commercial Court of Las Palmas on 10 March 2005 (JUR 2005\\111488) in which a preliminary injunction claim was rejected by the Court. In that case, the claimant was the holder of the trade mark “EXCALIBUR DE LA ROSA” that had been registered to identify restaurant services. The alleged infringer was using the sign “RESTAURANTE EXCALIBUR”. The Court decided not to admit the preliminary injunction claim because the compulsory requirements had not been met. According to the Court, the alleged infringer had been using the sign “Restaurante Excalibur” before the registration of the claimant’s trade mark and the mere registration of the sign was not enough to grant the claim. Moreover, the claimant had not properly explained why the development of the infringer’s activity would cause any damage to him. As a result, the Court decided that neither the “periculum in mora”, nor the “fumus boni iuris” requirements had been met.

Likewise, in the Court Order of 8 November 2004 (JUR 2004\\301841), the Appeal Court of La Rioja rejected a preliminary injunction claim because the claim did not comply with the “fumus boni iuris” requirement. According to the Appeal Court, there was no likelihood of confusion between the disputed signs. Moreover, it was said that the claimed link between the loss of revenues suffered by the claimant and the defendant’s alleged infringing activity had not been proved in the preliminary injunction proceedings.

b. Real and effective use of the Trade Mark

The PA sets out a third requirement in relation to obtaining a preliminary injunction for patent infringement claims: article 133 PA states that a preliminary injunction action based on infringement of a patent can only be lodged when the patent is in use by its holder, or at least, when serious and real preparations have been made in order to start working the patent. Although the wording of this article refers expressly to patents, and not to other industrial property rights, part of the Spanish doctrine also considers it to be applicable to trade marks. According to this line of thought, there is no basis for claiming the enforcement of an injunction as a precautionary measure if the claimant is not in fact using the sign which is the subject-matter of the claim. Otherwise, the real purpose pursued by the claimant through the preliminary injunction action would be contrary to the underlying rationale for such an action. On the other hand, according to article 41.2 TMA, the defendant to trade mark infringement proceedings is entitled to request from the claimant proof of use of the sign over the five years prior to the filing of the claim.

A clear example of this theory is the Court Order issued by the Court of First Instance of Cantabria on 22 September 2004 (AC 2004\\1958), which states that this requirement is also applicable to trade mark preliminary injunction claims since it is included in article 133 of the PA.

Likewise, the Judgment issued by the Appeals Court of Madrid, dated 5 April 2002, (JUR 2003\\46429) expressly states that this third requirement is not met by merely filing the preliminary injunction claim. The real and effective use of the sign must be evidenced by material and external acts performed by the claimant.

In other decisions, however, no reference is expressly made to this third requirement.

c. Bond

Pursuant to article 728.3 CPA, the claimant shall also offer a bond to cover any possible damages that the granting of the injunction may cause to the defendant. It is hard to assess the amount of this bond, since it depends on a number of circumstances such as the nature of the injunction claimed, the defendant’s business, etc.

The bond must be offered at the start of procedings, when filing the preliminary injunction claim. Pursuant to article 732.3 CPA, the mere indication of willingness to offer a bond is not sufficient. Instead, the CPA clearly states that both the nature and the amount of the bond shall be specified when filing the preliminary injunction claim.

Several recent decisions support this requirement.

As an example, we note the Court Order issued by the Appeals Court of Madrid on 31 July 2006 (JUR 2006\\269952), where it was said that a generic offer made by the claimant is not enough. Likewise, the Appeals Court of Valladolid (JUR 2006\\252750) and the Appeals Court of Alicante (JUR 2006\\260099) rejected a preliminary injunction claim because the claimant had only expressed his willingness to offer a bond and had requested the Court to determine the specific amount.

Notwithstanding the above, there have been prior decisions where the bond requirement was not so strictly construed (AC 2005\\757; JUR 2005\\126107; JUR 2005\\110413).

One of the particularities of the PA is that an injunction can be replaced with a bond by the Court if enforcement of the injunction is likely to limit the defendant’s commercial activity. In that case, the Court would specify, when granting the injunction, the amount of the bond to be provided by the defendant.

2. Procedural stages in a preliminary injunction procedure

Preliminary measures in Spain can be requested before an action on the merits (which is not common, especially in patent cases), simultaneously or at a later stage during the course of the action. The right to file evidence to support the statements raised in the claim expires once the claim is filed, i.e. once the writ seeking an injunction has been filed with the Commercial Court, the claimant cannot file any further documents.

a. Preliminary Injunction claim prior to the action on the merits

The filing of the preliminary injunction action before the action on the merits must be based on reasons of urgency.

Provided the claim is admitted by the Court, and therefore the injunction is granted, the plaintiff must initiate proceedings on the merits within twenty days. Otherwise, the injunction granted will cease to be enforceable against the defendant. Moreover, the claimant will be requested to pay a bond to cover the damage caused to the defendant if the injunction is later found to have been unjustified.

The twenty-day-term to file the action on the merits is one of the novelties introduced into Spanish Law through Act 19/2006 on the protection of IP rights (which transposed Directive 2004/48/EC into Spanish Law). Before this legislation was enacted, the term specified in the PA to file the main claim after the granting of the preliminary injunction was different from the term specified in the CPA. While the term provided under article 139 PA was two months, the term specified in article 730.2 CPA was twenty days. Now that the two provisions have been harmonised, there is only one twenty-day-term to file the action on the merits).

b. Preliminary Injunction hearing

After the filing of the application, the Court calls both parties to a hearing at which they explain their arguments, supported by evidence, regarding the alleged infringement and the requirements to grant the proposed injunction (prima facie case and danger in delay). After that hearing, the Court will issue a decision on the matter, either granting the injunction and specifying the amount of the bond, or rejecting it.

Notwithstanding the above, it is also possible to ask the Court to grant the injunction without hearing the defendant (“inaudita parte”) due to urgency, or if alerting the other party and having a hearing could deprive the injunction of any effect. If so, the Court may grant the injunction within five days.

In its Order granting the injunction, the Court would assess separately compliance with the general preliminary injunction requirements and the reasons for granting the injunction without hearing the defendant.

Although a Court Order granting an injunction can be appealed by the defendant before a higher Court, the injunction will be enforced in the meantime.

On the other hand, a Court Order granting an injunction “inaudita parte” – which will be served on the defendant immediately – and a Court Order rejecting a preliminary injunction application cannot be appealed before a higher Court[1].

[1]although it should be noted that once the decision to grant an injunction “inaudita parte” has been served on the infringer, he can file a writ of opposition against the injunction granted.