Court orders blocking of Chilean website

Spain
On June 7 2010 the Third Commercial Court of Barcelona ordered the blocking of a website that featured a promotional campaign for Nestlé cereals. 
 
On June 2 2010 companies Société des Produits Nestlé SA and Nestlé España SA applied for an interim injunction against a natural person, who apparently resided in Chile. They alleged that the defendant infringed their trademarks and other IP rights. The defendant operated a website featuring a promotional campaign for cereals launched by Nestlé España on the occasion of the 2010 World Cup in South Africa.
 
Nestlé España acted as the owner of the IP rights in the design and programming of the website at issue, while Société des Produits Nestlé acted as the owner of several Spanish and international trademark registrations for cereals, which were reproduced on the website.
 
The plaintiffs asked that the court:
  • order the blocking of the defendant's website so that users were unable to access it from Spain. In order to implement such a measure, the various providers of Domain Name System services in Spain should prevent the conversion of the defendant's domain name into its internet protocol address. If necessary, the competent public authority should ensure that the providers are complying with the order.
  • order that the defendant cease using Société des Produits Nestlé's trademarks and/or any other sign confusingly similar to the marks, and cease reproducing the design and programming of Nestlé España's website, under pain of penalty of €600 for each day of non-compliance.
The plaintiffs requested that, due to the special circumstances of this case, the measures be adopted without hearing the defendant and before the submission of the claim. Five days later, the court granted the plaintiffs' application in full.
 
First, the court declared that it had territorial jurisdiction to hear the application for an interim injunction under Articles 52(11) of the Civil Procedure Act and 125 of the Patents Act. Article 125, which applies to trademarks, allows a plaintiff to bring a claim before the court which has jurisdiction over the territory where the infringement took place. To reach this conclusion, the court reasoned that, even though the defendant's website was administered from Chile, it was accessible from any country in the world. Therefore, the infringement could be said to have taken place in any country where the website was accessible, including Spain. Moreover, as the trademarks at issue were Spanish marks or international marks with effect in Spain, the Spanish courts had to ensure their protection.
 
Second, the court concluded that the case at hand fulfilled the procedural conditions necessary for the adoption of the requested interim measures - that is:
  • an arguable case;
  • proof that delay would cause the relief requested to be ineffective;
  • the provision of an indemnity bond to cover any damages that the order may cause; and
  • the existence of special circumstances justifying the adoption of the measures ex parte and prior to the filing of the lawsuit.
With regard to the possibility of applying for interim measures before the filing of the lawsuit (which, under Article 730(2) of the Civil Procedure Act, is allowed in cases of urgency and necessity), the court took into account the following factors:
  • the fact that the World Cup, which was at the centre of Nestlé España's promotional campaign, was due to start shortly;
  • the difficulty in locating the defendant, due to the fact that he resided outside Spain and that there was no specific address of service; and
  • the obviousness of the infringement, the risk of confusion between Nestlé España's website and that of the defendant, and the possibility that consumers wishing to participate in Nestlé España's campaign might unknowingly give their details to the defendant.
Moreover, the court recognised that the interim measures should be adopted without first hearing the defendant. Under Article 733(2) of the Civil Procedure Act, this is possible in emergency cases or where there is a risk that communication with the defendant might frustrate the success of the measures. The court pointed out that there was a risk that the plaintiffs' case might be hampered due to the easiness with which websites can be transformed or moved.
 
Finally, the court considered that the measures applied for were adequate for the protection of the plaintiffs' industrial and IP rights.
 
The decision will be welcomed by IP rights owners, as it offers a fast and practical way of prosecuting those responsible for the operation of websites that infringe industrial and IP rights - even where the website at issue is administered from outside Spain.
 
Carlota Viola, Grau & Angulo, Barcelona

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