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Enforcement of IPRs in Spain


Enforcement of IPRs
Counterfeit goods are readily available at a cheaper cost in tourist hotspot areas like La Jonquera, which is close to the French border.
Fashion accessories and pharmaceuticals are the goods that most often face counterfeiting and piracy in Spain.
They are as follows:
  • « Ley de patentes » (11/1986 of March 20);
  • « Ley de marcas » (17/2001 of December 7);
  • « Ley de protecciónJurídica del Diseño Industrial » 20/2003 of July 7);
  • The Royal Legislative Order 1/1995 of April 12; and
  • The Royal Law-Order of July 26, 1929.
Trademarks, Patents, Topography of Demi-conductors, Designs, Biotechnology, and Plant Varieties are the different types of IPRs protected by IPR enforcement in Spain.
The parties must be represented in the Spanish courts by an attorney at law and an attorney representing the parties in court and entrusted with filing and receiving communications with and from the courts (procurador). Parties not having a domicile, site, or a serious commercial or industrial establishment in the EU must be represented by an industrial property agent.
In administrative and court proceedings in Spain, the language ordinarily used is Spanish. Therefore, it is necessary to have a translated copy of each document being submitted to the court.
However, in court proceedings the parties can use any other language that is official in the community in which the judicial actions take place. Judges can also use that official language if none of the parties oppose its use on the basis of lack of knowledge of the language.
For initiating trademark proceedings, no prior cease and desist letter is required.
However, the infringers are only liable for damages if they have been properly notified in advance about the trademark and the infringing behaviour, and they have been formally asked to cease infringing. Therefore, it is advised to send a cease and desist notice.
Yes, the period within which an action for infringement can be brought is 05 years from the time when the action could have been brought (a knowledge requirement). If the infringement is continuous, the time limit runs only from the time the infringing behaviour has ceased.
A) Government Authorities - Yes
B) Police Officials - Yes
C) Judiciary - Yes
D) Customs - Yes
A) Injunctions - Yes
B) Monetary Compensation - Yes
C) Raids - Yes
D) Seizures - Yes
E) Destruction - Yes
Other civil remedies in Spain include the transfer of ownership of the infringing goods and the means intended to commit the infringement; and publication of the judgment at the infringer’s expense.
The timeframe for civil actions for the protection of registered and unregistered trademarks is around 01 year at first instance and around 02 years for an appeal judgment.
In this scenario, the judge can impose a fine on the party that acted against the rules of procedural good faith.
A) Responsible Authority - Commercial Court of the domicile of the defendant
B) Imprisonment Term - Trademarks: imprisonment of between 01 and 04 years for manufacturing, importing, offering, distributing, commercialising, or storing wholesale counterfeit goods; imprisonment of between 06 months and 03 years for offering, distributing, or commercialising retail sale counterfeit goods; imprisonment of between 06 months and 02 years for street vending and occasional sale of counterfeit goods (if certain requirements are met, imprisonment can be substituted by a fine); Patents and Designs: 06 months to 02 years.
C) Monetary Fine - Trademarks: The fine is decided on a case to case basis depending on quantification of the evidence produced during the course of the proceedings.
In this scenario, the judge can impose a fine on the party that acted against the rules of procedural good faith.
ADR mechanisms are sometimes used to resolve disputes around contractual issues involving patent rights. However, they have been barely used in disputes involving patent infringement.
The remedies available under border control measures (customs) in Spain include fine and destruction of goods.
The applicant must bear the costs of customs intervention during enforcement.
The goods are released from detention if an IP rights holder abuses the enforcement measures in Custom Recordal of IPRs.
Court proceedings