Too often, we attend clients having registered trademarks, patents or industrial designs, who detect that certain retailers are selling products that imitate or copy the protected products.
Independently to the fact that we can require the retailer to stop offering these infringing products, we know that the real problem starts at the source of the infringing product, i.e. the manufacturer of the copies or imitations, and the person who introduces them into the market.
Intellectual property rights, infringement by foreign companies
The problem usually starts when we find out who is behind the scenes: too often, we find foreign companies, not domiciled in Spain. This implies an impossibility to request the intervention of the Spanish courts, given that, as stated in article 51.2 LEC, legal persons will be sued in the place of their domicile, or in the place where the legal relationship is to take effect, provided that they have a place of business open to the public, or a representative authorised to act on behalf of the entity.
Indeed, paragraphs 11 and 12 of article 52 LEC, include special forums in the field of industrial property and unfair competition. This allows the filing of a lawsuit even when there is not even an establishment open to the public in Spain. However, even in this case, the enforcement phase would be useless due to the lack of jurisdiction of our courts in foreign countries.
Nevertheless, we can prevent infringing products from continuing to enter the market. We will thus prevent manufacturers and importers from continuing to profit from the infringement.
Customs authorities
REGULATION (EU) No 608/2013 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 12th of June 2013 on the surveillance and enforcement of intellectual property rights by customs authorities apply for this purpose.
According to its article 1, this norm determines the conditions and procedures for action by customs authorities in relation to goods suspected of infringing an intellectual property right that are, or should be, under customs supervision or subject to customs control within the customs territory of the Union.
Upon detection of counterfeiting and piracy on intellectual property rights by foreign companies, the following steps should be undertaken
In fact, the Regulation monitoring the possibility of submitting a request to Customs applies. Once submitted, it will be sent to the other customs offices of member states informing them of the existence of industrial property rights that could be infringed. Subsequently, the inspection of consignments and containers likely to carry infringing products is reinforced among these administrative bodies. Article 3 of the Regulation provides these stipulations.
Custom authorities will immediately inform the holder of the infringed industrial property rights upon detection of these jeopardizing products. The latter must state whether he/she requests the destruction of the product, within a frame of 10 days (extendable by a further period of 10 days). The cost of the destruction of the product shall be borne by the person who appears as the holder of the cargo. An agreement may be reached with the offender, as well. Such an agreement may allow the entry of the goods in return for sufficient financial compensation. (Article 21 of the Regulation).
We are therefore faced with a means of pressure to prevent infringements of intellectual property rights from countries where we do not have jurisdiction to take action against the infringer. This method does not usually entail indemnity to compensate for the damage. However, it certainly will encourage infringers to desist from their attempts to take advantage of our clients' rights.
We at Carrillo Asesores can help you to provide your intangible assets with wider protection. Our team specialised in Trademarks and Patents will be delighted to assist you, please do not hesitate to contact us.
