Elzaburu, covid-19 statement

 

Have all IP litigations in Spain come to a halt?

The state of alarm declared in Spain as a result of the spread of COVID-19 could lead to consider that court proceedings are placed entirely on hold for fifteen days. However, we would like to draw attention to certain differences that shall be observed depending on the nature of the action:

1. On-line Infringements

The procedure for safeguarding against on-line copyright infringements remains operational. The removal of illicit content can still be requested by means of the on-line procedure of the Ministry of Culture’s Intellectual Property Commission. There are no changes either with respect to the possibility of removing content from Internet platforms via the corresponding dispute resolution mechanisms.

2. Civil actions

The full closure of the courts has not been ordered, although measures have been put in place compromising many procedures:

Periods of limitation for action: the substantive periods of limitation for bringing new actions are suspended until the state of alarm is lifted.

New complaints: these may be lodged on-line, although the National Judicial Council and some administrative offices of the courts have warned that only urgent briefs meeting the urgency requirement laid down in the Declaration of the State of Alarm must be filed.

Deadlines in ongoing proceedings: these have been suspended and will resume when the state of alarm is lifted.

Public hearings: these have been suspended and will have to be rescheduled when the situation returns to normal.

Interim relief measures/preventive briefs: in principle, a petition for interim measures or a preventive brief may be filed in urgent cases (if necessary to avoid irreparable harm to the legitimate rights and interests of the parties) but since time limits are suspended and no hearings may be held, it is unlikely that they will be processed. It is important to keep in mind that the period of suspension due to the state of alarm will not prejudice any future consideration of periculum in mora (risk ensuing from delays).

General processing: progress in proceedings is doubtful as any progress implies setting time limits and the courts are effectively closed.

3. Border measures

Customs seizures are governed in Spain by an EU Regulation but are applied by a Spanish administrative body. Therefore, the situation is different:

Filing new applications for Customs Action: nothing prevents this as they are filed on-line.

Renewal of applications for Customs Action: the time periods remain in force both in the case of Spanish customs surveillance and European Union customs surveillance. Renewals may be filed on-line without any problem.

Customs seizures: the seizure of counterfeit goods has not been formally halted. Notifications are still being received and the deadlines are still in place.

4. Police actions

Nothing has been stated in this respect, although this type of action for crimes that are not a priority has obviously been suspended, that is:

Summons and offers to be joined to proceedings: these have been suspended, even though some notifications in relation to past actions are still being received and dealt with.

Raids: street markets and fairs have been prohibited and all non-food stores are closed.

Complaints: while the police may still accept complaints, it is unlikely that investigations will be undertaken in relation to the crimes.

5. Criminal actions

The Criminal courts continue to operate but only for priority crimes. Crimes against IP rights are not considered a priority. Consequently:

New complaints: although these may be filed on-line with the Duty Court, normally they have always been filed with the police. Therefore, the first option would be questionable in terms of efficiency and would be contrary to the warnings of the National Judicial Council.

Hearings and deadlines regarding ongoing proceedings: these have been suspended. We have been informed that they will be rescheduled.

6. Contentious-administrative appeals

The deadlines for contentious-administrative appeals against decisions of the Spanish Patent and Trademark Office have been suspended. This implies that all proceedings are effectively halted.

7. Appeals before the Court of Justice of the European Union

Appeals before the General Court against decisions by the EUIPO and proceedings before the Court of Justice (in cassation appeals against judgments of the General Court and in relation to referrals for preliminary rulings arising from national litigations) are governed by the legislation of the European Union. On 19 March the Court announced changes to its working arrangements, as follows:

Hearings in ongoing appeals: hearings scheduled up to 3 April have been adjourned and the parties are being informed.

Pending deadlines in ongoing appeals: pending deadlines are extended by one month from the aforementioned date

New deadlines in ongoing cases: any new time limit fixed from the aforementioned date will also be increased by one month.

New appeals: Time limits for lodging appeals before the General Court or appeals against decisions of the General Court will continue without being suspended and must, therefore, be complied with.

8. Warning letters

Warning letters can continue to be sent via the Spanish Postal Service’s on-line procedures and certified emails, although it is doubtful whether they can be delivered to companies or establishments. It is also worth considering whether it is the best time to do so or if it would be better to prepare them to be sent at a later date.

9. Investigations

Investigations relating to on-line infringements continue. In situ investigations are not possible due to the restrictions on travel and the closure of establishments, but preparations can be made.

10. Domain name complaints

To date WIPO has not communicated the suspension of ICANN’s UDRP dispute resolution proceedings. It is possible to file complaints.

ELZABURU’s operational capacity

As our firm has already advised, the entire workforce of ELZABURU is working as normal, from home, by means of our virtual desktop, and we are able to submit briefs to any Authority on-line and to continue preparing briefs and strategies in accordance with our clients’ needs, for when the effects of the coronavirus crisis subside.

 

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Links of interest:

 

RD. 463/2020. Declaration of the state of alarm (Procedural and administrative time limits in Additional Provisions two, three and four)

National Judicial Council decision

Decision of the CJEU

National Judicial Council Decision