منتدى الويبو لقضاة الملكية الفكرية لعام

This is an informal case summary prepared for the purposes of facilitating exchange during the 2022 WIPO IP Judges Forum.

Session 4: Provisional Measures in IP Disputes (Part I)

Provincial High Court of Alicante (European Union Trademark Court), Spain [2022]: Decision No. 31/22

Date of judgment:  April 7, 2022

Issuing authority:  Provincial High Court of Alicante (European Union Trademark Court)

Level of the issuing authority:  Appellate Instance

Subject matter: Enforcement of IP and related laws, trademarks

Plaintiff:  -

Defendant:  -

Keywords:  Provisional measures, three-dimensional trademark

Basic facts: The dispute concerned an action for infringement of a three-dimensional trademark.  On May 21, 2021, the first instance court (EU Trademark Court Number Two of Alicante) granted provisional measures, ordering, against a bond of 10,000 Euros, the defendant to: 1) provisionally cease and refrain from the use, manufacture, offer, commercialization, etc. of the infringing products and their packaging;  and 2) provisionally withdraw from the market, at its own expense all infringing products. 

The defendant appealed the decision, asserting inter alia:  1) procedural delay in plaintiff’s request for provisional measures; 2) lack of proportionality in view of the unquantifiable reputational damage incurred by the defendant; and 3) good faith (lack of distinctive character in plaintiff’s trademark and lack of use;  and difference between the marks of the plaintiff and defendant).

Held: The Provincial High Court of Alicante partially upheld the appeal, in so far as finding that the damage to the defendant would be higher than that established by the first instance court.  The bond was set at 50,000 Euros.   

Relevant legislation:

Article 726 of Law on Civil Procedure of Spain