Some procedural reforms are merely stopgap measures designed to correct deficiencies in the system or to fill gaps that have been revealed by judicial practice. Others, however, are so far-reaching that they forever transform the nature of litigation or the judicial system. As if it were a Three Kings’ Day gift, on January 7, 25 years ago, the legislature presented us with a law that marked a turning point in the history of Spanish procedural law.
Law 1/2000, in fact, adopted a model of adversarial civil procedure that stood in stark contrast to the one that had governed Spain since … 1881! The shift the law proposed in the methods and practices of the civil justice system—and in the working habits of the professionals involved (judges, attorneys, court representatives, and court clerks)—was so significant that a one-year transition period was required before it took effect. Our Litigation team at the time, led by Enrique Armijo and Carlos Morán among them, witnessed the impact of this law’s enactment and the efforts of all parties to familiarize themselves with its provisions and to resolve the doubts and uncertainties it raised.
All those who, at that time, were committed to defendingindustrial and intellectual property rights—once they had overcome their initial resistance to a paradigm shift—applauded the new system without reservation. The law embraced an Anglo-Saxon model of principle-based litigation (oral proceedings, immediate participation, and concentration) that aligned very well with the demands of litigation involving patents, trademarks, or copyrights.“It was a year of anxieties, hopes, fears, and expectations as the new ordinary trial procedure made its debut in the courts,” Enrique Armijo recalls.
We must not forget that the Law affected all areas of industrial and intellectual property claims: the introduction of a general preliminary proceedings process, the explicit regulation of injunctive relief with and without a hearing, and the organization of expert testimony. And a particularly exciting procedural process. “What sleepless nights we had facing the challenges of oral proceedings at the preliminary hearing and the trial!” admits Carlos Morán.
Although the Act was presented as the definitive modernization of the Spanish civil procedure system and was unquestionably technically sound, time has passed and reforms have continued to unfold. Suffice it to say that over the past 25 years , Act 1/2000 has been amended no fewer than 50 times. The most recent amendment came as recently as the start of the year, during the judicial recess, and was introduced surreptitiously: Organic Law 1/2025, dated January 2, on measures to improve the efficiency of the Public Justice Service. But that is another story. For now, let us pay a nostalgic tribute to Law 1/2000.
Enrique Armijo (Partner in the Legal Department at Elzaburu) and Carlos Morán (Partner in the Legal Department at Elzaburu)
After reviewing the achievements and evolution of the European Union Trademark and Design Court, in this fourth and final installment marking its 20th anniversary, we will reflect on the challenges facing this judicial body in the current context.
With the United Kingdom’s departure from the European Union, the Alicante court is in a key position to assume an even more prominent role in international litigation. We will analyze the opportunities and challenges brought about by Brexit and how the court can strengthen its leading role in the future.
Who could have imagined that the United Kingdom’s exit from the European Union could have the unintended consequence of strengthening the Spanish court’s rolein international trademark litigation? But that is the case—or could be—if certain key factors are taken into account in this context.
The starting point is that the European Union Trademark and Design Court in Alicante—since the EUIPO’s headquarters are located in that city—has residual jurisdiction to hear infringement actions brought between parties who do not have a domicile in Europe.
This jurisdiction makes Alicante a potentially key forum for resolving international disputes involving industrial property, especially in the post-Brexit environment.
The United Kingdom, as one of the leading countries in terms of the number of EU trademark applications and a major player in international trade, now faces a significant change in its participation in the EU trademark system.
With the UK's departure from the EU, legal actions brought by British plaintiffs against companies based outside the EU—as well as those brought by such companies against British firms—could begin to be transferred to Alicante.
Of course, such a leading role is not automatic; it must be earned. The somewhat flexible concept of“domicile”in Europe that the Court of Justice is establishing may or may not encourage the shift of litigation to other jurisdictions. But this would not be the case if the Spanish court were to establish itself as a European benchmark in this area.
On the contrary, in addition to this residual forum, there are certain opportunities forforum shoppinginvolving EU trademarks that could create anincentive to bringlitigation to Spain.
In this regard, the fledgling court in Alicante faces both a challenge and a historic opportunity to reaffirm its position on the European judicial scene.
It should be noted—to begin with the mostcircumstantialpoint—that a new City of Justice is under construction in Alicante. Given the international scope of these cases, it is reasonable to insist that in the new building set to open (in 2025?), the European Union Trademark and Design Court (the joint courtroom that the three existing courts might share) should present the best possible image of our country.
But an iconic setting alone is not enough forthecourt’sproceedings. It is also necessary to strengthen the unification of legal doctrine among the three courts—all operating under the umbrella of the Eighth Section of the Provincial Court—through measures such as the aforementioned approach of acting in acollegialmanner.There is no room for procedural biases when the prestige of Spanish institutions in the eyes of the world is at stake.
In the meantime, we must conclude this commemorative series as we began it: with warm congratulations to the court on its twentieth anniversary. While the song says “twenty years is nothing,” for the European Union Trademark and Design Court, these have been years of development, specialization, and consolidation.
As attorneys, we can only express our gratitude for your work, and we hope that you will continue to be a pillar in the defense of industrial property rights in Europe.
Carlos Morán, Partner in the Litigation Practice Group at ELZABURU
To mark the 20th anniversary of the EU Trademark and Design Court,
Last week, we examined the evolution of this court. To continue this commemorative series, this week we will take a closer look at the achievements made possible by its specialization.
Over the years, the Alicante court system has established a solid body of judicial doctrine that has influenced European case law. In this article, we will explore how specialization has enabled the court to successfully handle complex cases and establish itself as a leading authority in this field.
Twenty years later, it is clear that the dream of judicial specialization in European Union trademarks and designs has become a tangible reality. The development of case law by the Spanish courts has gone hand in hand, it must be said, with the prolific activity of the Court of Justice of the European Union, which issues about twenty rulings a year, primarily on trademark matters.
But our court has also played a part in this. Of the 27 preliminary rulings requested by Spanish courts, 6 came from Alicante. And some, such as theCynologiqueruling,which put an end to registration immunity, have set new directions for litigation.
This specialization we are referring to is evident in theease withwhich Spanish courts today issue rulings that were once almost unthinkable: preliminary injunctions against online infringements, which involve the blocking of websites; the interplay of the principles of good faith or abuse of rights, or the doctrine of estoppel in infringement or nullity actions; and the awarding of damages that, while not punitive, at least provide real satisfaction to the plaintiff—to name a few examples.
It is not surprising that the number of cases before this court remains high. According to statistics from the General Council of the Judiciary (CGPJ), nearly one hundred cases were filed in 2023 with the Courts of Alicante regarding Community trademarks.
Despite its achievements, new challenges have arisen for this court, which, despite its years of experience, seems to be constantly put to the test. Its ability to adapt and evolve in the face of these challenges will be crucial to maintaining its status as a leader in the protection of industrial property rights in Europe.
We will discuss the court's new challenges in our next issue.
María Cadarso, Associate in the Litigation Department at ELZABURU
In light of the recent anniversary of the EU Trademark and Design Court, in this first installment we explore how the decision to establish this court in Alicante came about.
In this second installment, we will analyze the many changes the Court has undergone during its 20 years of existence. We will examine how it has evolved in terms of both its structure and its jurisdiction, and how it has established itself as a leading authority in the protection of industrial property rights in Europe.
Over the past twenty years, the Alicante court specializing in trademarks and designs has undergone continuous evolution, evident in three key areas.
First, its name has changed several times. Initially known as the Community Trademark Court, it was renamed the European Union Trademark and Design Court, and more recently, the term “European Union Trademark Court of First Instance” has come into use.
These are not merely cosmetic changes; the latter name suggests a collegial approach by the courts with jurisdiction over the matter, similar to the Barcelona Patent Court of First Instance.
Another significant development is the expansion of the court system. While initially only Commercial Court No. 1 in Alicante had jurisdiction over disputes involving European Union trademarks and designs, Commercial Court No. 2 soon assumed these functions, and more recently, the newly created Commercial Court No. 4, also in Alicante. Only Commercial Court No. 3, located in Elche, has been excluded from this specialized jurisdiction.
This proliferation of courts may require a certain degree of collegial or coordinated action to prevent inconsistencies—both procedural and substantive—despite how unusual this may seem in the organization of the trial courts.
Jurisdiction has been the third area in which the Court has shown significant evolution. Since its inception, one of the most significant debates in litigation practice has been the scope of the jurisdiction of the European Union Trademark and Design Court. Originally limited to actions for infringement of European Union trademarks or designs, this restrictive approach was soon replaced by the application of the procedural principle of vis atractiva. This allowed the Court to hear actions for the invalidation of corporate names, infringement of national trademarks in conjunction with European Union trademarks, and copyright actions related to European Union trademarks.
This interpretation was subsequently endorsed by the legislature, which transformed what were initially jurisprudential criteria into statutory criteria. An example of this is the recent Organic Law 7/2022, which amended Article 86 quinquies of the LOPJ. This development has allowed the court to focus on what is truly essential: the development of a solid body of judicial doctrine.
In our next installment, we'll take a closer look at the achievements made possible by this specialization.
Ana Sanz, Associate Partner in the Litigation Practice Group at ELZABURU
September 1 marks the 20th anniversary of the launch of the European Union Trademark and Design Court, based in Alicante.
At ELZABURU, we have been closely involved in the launch of this judicial body, where we have been active from the very beginning. For this reason, we will be celebrating its anniversary throughout the month of September with a series of articles that will allow us to look back on its development, achievements, and the challenges it currently faces.
We invite you to join us on this journey.
How do you measure the maturity of a court? Is it simply a matter ofage?Should we heed the famous tango and think thattwenty years are nothing?
Two decades have passed since the launch, on September 1, 2004, of the European Union Trademark and Design Court and the court of the same name within the Provincial Court of Alicante. To say the least, during that time the new judicial body has not only grown (in scope and number of cases) but has alsoexpanded(in the number of courts) and is now in more than reasonable shape (thanks to the prestige earned through its rulings).
It’s not all sunshine and roses, of course. In any journey, it’s impossible to avoidthe occasionalshadow. But overall, as we’ll try to highlight, we’re dealing with a newly established jurisdiction that has achieved a remarkable level of specialization and represents a very viable option for industry and business when it comes to litigation.
Much of the success of this unique jurisdiction is due to the decision made by the Spanish authorities at the time to establish a single court, based in Alicante, to hear cases arising from Regulation 40/94 on the Community trademark. It was not the only option the new regulation offered to Member States, but concentrating these cases in Alicante was consistent with the location of the then Office for Harmonization in the Internal Market (OHIM) in that city and ensured faster and more effective specialization.
The startingpointwas none other than the 2003 insolvency reform, with the amendment of Articles 86 bis cuatri and 82.4 of the Organic Law on the Judiciary by Organic Law 8/2003; but thegoalwas achieved with Royal Decree 1649/2004, dated July 9. This was the regulation that designated Commercial Court No. 1 of Alicante to serve as the Community Trademark Court and did the same for the appellate level with the Eighth Section of the Provincial Court of Alicante.
Those who tookup the causeof establishing a new jurisdiction at that time were Mr. Rafael Fuentes Devesa, who was in charge of Commercial Court No. 1, and Mr. Enrique García Chamón, president of the Eighth Division.
Both judges, who still share a courtroom, have left an indelible mark on the development of this judicial body.
However, this court’s decision was nonetheless a risky one. The Community trademark system (a newly created title with a single registration and effects throughout the European Union) had come into effect with the first applications in 1996, and judicial involvement was key to assessing the impact of this new instrument.
Not surprisingly, depending on the chosen jurisdiction criterion, the system provides for a Spanish court to extend its jurisdiction to the entire European Union, since its judgments are enforceable in all other countries.
The truth is that, in a short time, the court inspired such confidence that there was a clearshiftin trademark litigation toward Alicante.
But he still had a long way to go… We’ll save the rest of his story for the next installment.
Enrique Armijo, Partner in the Litigation Practice Group at ELZABURU
The annual Mobile World Congress, the world's largest mobile phone and technology trade show, is fast approaching. As usual, the event will take place at the Fira de Barcelona exhibition center over four days, beginning on Monday, February 26, and ending on Thursday, February 29.
Given that more than 2,000 leading companies in the fields of information technology, electronics, and telecommunications participate in this conference—showcasing new telecommunications products, mobile applications, and software innovations to a global audience—the Mobile World Congress becomes, year after year, a setting prone to potential conflicts between companies, primarily due to possible infringements of intellectual and industrial property rights.
For this reason, for several years now, the Commercial Court of Barcelona, as well as the EU Trademark Court in Alicante, have implemented an On-Call and Rapid Response Protocol. This protocol serves the dual purpose of avoiding, to the extent possible, the adoption of interim measures without a hearing for the defendant and, at the same time, implementing effective measures to protect those rights.
Under this Protocol, the courts undertake to rule on the admissibility of requests forpreliminary orders(intended to prevent the adoption of interim measures without a hearing of the defendant) on the same day they are filed (within 24 hours). In addition, they undertake to rule on requests forprecautionary measureswithin 2 days (48 hours), scheduling a hearing within 10 days if apreventive brief has been filed.
The Protocol will take effect on February 1 and will remain in effect throughout the month of February until the last day of the conference, February 29.
The report on the implementation of the Protocol, published by the courts of Barcelona and Alicante regarding the 2023 Mobile World Congress, revealed that the overall number of cases filed that year was the highest in the past four years. This demonstrated a clear recovery in the volume and number of cases filed compared to the years prior to the pandemic, a growing trend that the report forecasts will continue for the upcoming 2024 Mobile World Congress.
Now is the time for companies participating in the Mobile World Congress to plan ahead and take the necessary steps to ensure the protection of their rights and avoid potential setbacks during the event.
ELZABURU has played a significant role, participating in approximately 25% of the cases resolved by the courts under the Mobile World Congress Protocol over the past 6 years. This year, the firm will once again provide support to its clients by implementing measures both to effectively safeguard their industrial and intellectual property rights and to mitigate any risk of unexpected actions by third parties that could jeopardize their normal participation in the upcoming congress.
María Cadarso, Associate at ELZABURU
The challenges, risks, and opportunities for exhibitors and holders of patents, trademarks, and designs are back as the MWC takes place in Barcelona in late February 2023!
With its proverbial punctuality, the “Barcelona Commercial Court,” in conjunction with the European Union Trademark and Design Courts in Alicante, has just released its newPROTOCOLFOR ON-CALL DUTY AND RAPID RESPONSE FOR THE MOBILE WORLD CONGRESS 2023.
It should be noted that this Protocol marks the starting point for mobile phone companies to finalize theirstrategiesin light of the possibility (for some) or the risk (for others) that precautionary measures will be adopted to prevent the display of mobile devices and other computing and communication devices (tablets, laptops, wearables, etc.) that infringe on patent, trademark, or design rights.
Depending on each party’s position, the strategy involves the appropriate use of thethree procedural mechanismsto which the Protocol willgive priority:preliminary proceedings (to verify whether the infringing content is being displayed),injunctive reliefwith or without a hearing (to compel the cessation of display), andpreventive briefs(to avoid the risk of surprise actions by rights holders).
According to the Findings Report published by the Barcelona Commercial Court, the previous edition of MWC in 2022 resulted in amisleading outcome: six preliminary notices and only two fact-finding proceedings.
It is important to remember that the previous edition was still held under the shadow of the pandemic, with attendance taking place primarily online rather than in person.
Next year, however, all signs point to the MWC regaining its massive turnout (more than 100,000 attendees, 2,499 exhibitors), and the “swords” of intellectual property will once again be at the forefront.
Mari Cadarso, Associate at ELZABURU
As of yesterday, the Court of Justice has issued another ruling regarding the exhaustion of trademark rights in cases involving the resale of the original product.
The judgment stems from a preliminary ruling requested by a Finnish court in the context of a dispute between “SodaStream” and MySoda Oy regarding an alleged infringement of the SODASTREAM and SODA-CLUB trademarks.
SodaStream is an international company that manufactures and sells carbonation devices that allow consumers to make sparkling water and flavored carbonated beverages using tap water. In Finland, SodaStream markets these machines with a refillable carbon dioxide cylinder, which it also sells separately. The SODASTREAM and SODA-CLUB trademarks are engraved on the labeling and on the aluminum body of those cylinders.
MySoda, a company domiciled in Finland, sells in Finland carbon dioxide cylinders originally manufactured and marketed by SodaStream, which are intended to be reused and refilled numerous times. MySoda, after receiving, through distributors, SodaStream carbon dioxide cylinders that consumers have returned empty, refills those cylinders, removes the label bearing the original brand name, and replaces it with its own labels, which feature the MySoda logo, leaving the original brand name engraved on the body of the cylinders visible.
The preliminary ruling sought to determine whether the owner of a trademark who has marketed products bearing that trademark in a Member State—products that are intended to be reused and refilled numerous times—has the right to oppose the subsequent marketing of those products, in that Member State, by a reseller who has refilled them and replaced the label bearing the original trademark with another label, while still leaving the original trademark visible on the products in question.
Based on existing case law, it was clear that the sale of a refillable gas cylinder by the owner of the trademarks appearing on it exhausts the exclusive rights, such that competitors may refill and exchange the empty cylinders. However, replacing one set of labels with another may be subject to penalties when the conditions under which the product is marketed undermine the legitimate interests of the trademark owner.
When interpreting that exception to the exhaustion of trademark rights, the Court of Justice had previously taken into account only the specific characteristics of the pharmaceutical market. With this ruling, the Court is venturing into a different market.
The key to the ruling is determining whether there is a mistaken impression regarding the economic link between the trademark owners and the reseller who refilled the bottles. Although it is up to the national court to make that determination based on the circumstances of the case, the ruling does not hesitate to provide some interpretive guidelines.
The criteria set forth in the ruling in this regard are quite comprehensive (the degree of clarity of the information provided by the label, industry practices, and whether or not the original trademark remains visible), but it gives the impression that it does not fully side with a “condemnation” in the case at hand and prefers to leave the final decision on the matter to the discretion of the national court. It would not be surprising if each party interpreted the ruling in its own way and if we had to wait for the Finnish court’s decision to learn the outcome.
Author: Enrique Armijo Chávarri
The judgment of the Court of Justice of the European Union (“CJEU”) dated October 13, 2022, in Case C-256/21 reveals that filing a lawsuit for infringement of a European Union trademark carries risks. If the trademark is vulnerable in terms of its validity, its owner risks the defendant filing a counterclaim for invalidity. Faced with this defense, it is out of the question to simply throw in the towel, withdraw the lawsuit, and wait for the case to end.
If the defendant continues to seek a declaration of invalidity of the trademark in the proceedings, the European Union Trademark Court retains jurisdiction to do so even if the plaintiff withdraws the action. This is the ruling of the Court of Justice.
The ruling stems from a request for a preliminary ruling filed by a German court in the context of a trademark infringement lawsuit brought by KP, as the owner of the EU word mark “Apfelzügle,” against TV, the owner of a fruit farm.
The defendant filed a counterclaim seeking a declaration of invalidity of the trademark to the extent that the term “Apfelzügle” refers to a convoy used for apple harvesting, consisting of several trailers pulled by a tractor.
At the trial hearing, the plaintiff formally withdrew her claim of infringement, but the defendant maintained its counterclaim seeking the invalidation of the trademark registrations.
Given that the jurisdiction of a European Union Trademark Court to declare a trademark invalid is limited to the case of a counterclaim in an infringement action, since general jurisdiction lies with the European Union Intellectual Property Office (“EUIPO”), the German court questions whether the European Union Trademark Court retains jurisdiction to rule on invalidity even after the action for infringement of that trademark has been validly withdrawn.
The withdrawal of a lawsuit alleging infringement of European Union trademarks does not end the litigation when there is a counterclaim for invalidation.
The CJEU’s response was significant: if the European Union Trademark Court were no longer competent, the defendant would have had to file a new action with the EUIPO to obtain a declaration of invalidity, and the plaintiff would have withdrawn from the lawsuit without prejudice to its registered ownership. In other words, filing an infringement action would not entail the risk of losing the trademark because, in the event of a counterclaim for invalidity, it would suffice to withdraw the action.
The CJEU, however, puts a stop to that strategy. The ruling notes that the determination of the validity of a European Union trademark falls under the “shared” jurisdiction of the EUIPO and the European Union Trademark Courts in the event of a counterclaim filed in response to an infringement action. Once the counterclaim has been filed, the European Union Trademark Court not only retains its jurisdiction—even if the plaintiff withdraws its infringement action—but is also, in a sense, required to rule on the validity of the trademark.
Although under the Spanish procedural system the same conclusion could have been reached by applying the principle of “perpetuatio iurisidictionis,” the CJEU’s ruling establishes an important legal doctrine in the specific context of actions involving European Union trademarks. It also draws attention to that other, unwritten principle of “procedural prudence,” which should never be lost sight of when bringing legal actions.
Author: Ana Sanz
On September 29, 2013, the China (Shanghai) Pilot Free Trade Zone (FTZ) was established in the Pudong New Area, covering 120.72 km². It is a regional free trade zone established by the Chinese government. By the end of 2019, in the FTZ, (i) more than 12,000 foreign-invested enterprises had been established, and (ii) more than 2,800 overseas investment projects had been completed, with Chinese investment exceeding 90 billion U.S. dollars.
Recently, on September 21, 2022, the Shanghai Pudong New Area Primary People’s Court (“Shanghai Pudong Court”) published the document “White Paper on Commercial Litigation Involving Foreign and Foreign-Invested Enterprises,” which compiles key information on commercial litigation involving foreign-related enterprises and foreign-invested enterprises since the publication of the “Opinions of the CPC Central Committee and the State Council on Supporting the High-Level Reform and Opening-Up of the Pudong New Area and Building Pudong as a Pioneer Area for Socialist Modernization” in July 2022.
From August 2021 to July 2022, the Pudong Court in Shanghai accepted 1,301 cases involving foreign-related and foreign-invested enterprises (excluding intellectual property and financial cases) and resolved 1,305. The White Paper reveals the following:
The cases analyzed in the White Paper reveal the following trends:
Commercial litigation involving innovative industrial sectors—such as new electric vehicles, mobile energy, semiconductor chips, and artificial intelligence-related technology—is on the rise.
There are various types of disputes concerning the internal management of companies: investments, the validity of shareholder or board of directors’ resolutions, mergers, spin-offs, and the dissolution of companies, as well as disputes among investors
Litigation over equity incentives is increasing significantly, with disputes arising over the legal nature, interpretation, application, and valuation of such incentives;
Litigation related to new business models in the digital economy is on the rise.
The digital economy has given rise to numerous innovative business models, such as digital marketing, advertising in new media, online education and training, account management services, and the promotion of customer traffic through e-commerce, among others. Since no optimized regulations have been established in this area, the Shanghai Pudong Court listed some key issues for resolving disputes in this field: determining the validity of new types of contractual clauses, such as “exclusive agent,” “exclusive media outlet,” “non-compete,” and “valuation adjustment mechanism”; converting digital output into consideration and distinguishing the actual effect of traffic in the virtual world, etc.
Along with the White Paper, seven typical cases were published that involved issues such as the application of foreign laws to determine the validity of arbitration clauses, the application of international conventions on assistance to foreign courts in the investigation and collection of evidence, and the determination of the legal attributes of pro forma invoices in cross-border trade, etc., which, on the one hand, allows the public to gain insight into foreign-related litigation accepted by the Shanghai Pudong Court, and, on the other hand, provides cases that serve as valuable references for future similar litigation.
Author: Dan Liu