Posted: July 7th, 2021
Commercial Court No. 5 of Barcelona, Spain, 30 December 2020, case number 66/2020 (ECLI:ES:JMB:2020:310A)
In this decision dated 30 December 2020, Barcelona Patent Courts provided some useful insights on how to meet the periculum in mora requirement (danger in delay) for the granting of precautionary measures for patent infringement in Spain.
According to Spanish procedural law, the two main requirements for precautionary measures to be granted are:
– fumus boni iuris (appearance of good right): the applicant must show that the case has good chances of being successful on the merits; in patent infringement cases, that would require to show the Court a clear patent infringement case on a prima facie basis, by providing at least a principle of evidence that justifies a favourable position in proceedings on the merits, and
– periculum in mora (danger in delay), which is a two-fold requirement:
i) the applicant shall justify that, if precautionary protection is not urgently upheld, there is a risk of irreparable harm stemming from the infringer’s unauthorized use until the case is decided on the merits; and
ii) it shall also substantiate not having incurred undue delay in requesting a preliminary injunction since it first knew about the infringement. If a long time has lapsed, it could be presumed that the applicant implicitly consented the situation.
In this decision, as will be explained below, the Court understood that the periculum in mora requirement was not met and, without even undertaking any assessment of the fumus boni iuris requirement, decided to reject the plaintiff’s request for precautionary measures.
Headnote and summary: Luis Fernández-Novoa, HOYNG ROKH MONEGIER