Unfair Competition

The use of protective writs in unfair competition cases in Spain

Cloe Adelantado & Miguel Vidal-Quadras

On 29 March 2023, the first preventive letter (protective writ) in Spain was admitted in a case of unfair competition. The Commercial Court of Barcelona granted the request that, except for duly justified reasons of urgency, preliminary injunctions should not be granted without a hearing against the company filing the preventive writ, for alleged infringement of articles 4 or 15 of the Law on Unfair Competition.

It is highlighted in the Order that the preventive letter, as it is known in Spain, appeared for the first time with the name Schutzschrift in Germany in a Judgment of 14 May 1965 of the Hamburg High Court of Justice, precisely in a procedure of unfair competition. In English it is known as a protective letter or protective writ and has spread to courts in countries such as Switzerland, Holland, Belgium and France.

In Spain, it began to be recognised in patent matters from the Order of the Commercial Court No. 4 of Barcelona of 18 January 2013 and was subsequently regulated for the first time in Spain through art. 132 of Act 24/2015, of 24 July, on Patents, thus validating what until then had been a court and forensic practice. The Court pointed out that by means of its inclusion in the patent procedural regulations, extended to trademarks and industrial designs, the application of the preventive writ was extended.

In its decision, the Court wondered whether the preventive writ could be extended to cases of infringement in matters of unfair competition. At first glance, it would seem to rule out such a possibility as it is not expressly provided for in a legal provision. However, given that the pre-emptive injunction arose precisely from the procedural practice employed prior to its positivisation, the court considered the need to investigate to what extent its use in matters of unfair competition could be justified in the case of an analogous situation in which a provision referring specifically to the fact of taking advantage in the market of a competitive advantage acquired through the infringement of rules was alleged, Therefore, as the Commercial Court no. 8 of Barcelona had ruled on intellectual property matters in an Order of 25 February 2020, it considered that in the case under analysis there was a situation analogous to that regulated in article 132 of Law 24/2015 which justified the extension of said provision to the infringement of unfair competition which was the object of the preventive writ that was being presented.

Based on these considerations, the Court of Barcelona admitted the preventive writ with effect from the date of its submission on 24 March 2023, and ordered the opening and formation of the corresponding separate piece of evidence for preliminary injunctions.

Those companies that were expected to request preliminary injunctions would finally do so, albeit not immediately, but almost seven months later, on 10 October 2023. On the 13 of that same month, the Court, that had had access to the preventive writ, rejected the preliminary injunctions requested ex parte on the grounds that the request was made too late and summoned the parties to a hearing in November.

This is an interesting precedent that shows the usefulness in Spain of this judicial instrument not only for the matters for which it was initially designed, but also for other similar matters, in that example a case of unfair competition. In contrast to this flexibility on the part of the courts of Barcelona, on 31 March 2023, Commercial Court no. 5 of Madrid rejected the same request for the analogical application of patent law to unfair competition law, considering that there was no room for an extensive interpretation of the provision of the Patent Act and that the preventive writ was limited to someone who considered that preliminary injunctions could be sought by the holder of a patent to bring an action under the Patent Act.

This is thus an interesting case of analogical extension, in the specific case of a rule of the Patent Act imported into our judicial practice only recently and limited in its application to a large extent to the Barcelona courts, to a situation not contemplated by the Patent Act, but similar to the one it provides for, on unfair competition. We will have to see how it evolves in the future. Nonetheless, we can conclude that the Barcelona courts are taking a more flexible approach to the application of the law, focusing on the resolution of conflicts that arise in the market and open to providing solutions that facilitate the actions of economic agents.