🇪🇸 Spain

14    SPAIN

14.1    LEGAL FRAMEWORK

Spanish legislation in the civil area is harmonized since, although each state is free to promulgate their own rules, these must be in accordance and respect the general principles established by the European Union.

14.2    MAIN PRINCIPLES

In accordance with Spanish legislation all litigation between parties shall meet the following characteristics.

  1. In Spain, in regard to civil and mercantile matters, the Civil Procedure Law differentiates in function to the amount and subject between what type of trial is applicable to the specific case.
  2. Regardless of its amount, lawsuits in the area of unfair competition, intellectual property and publicity shall be decided in an ordinary trial except if they exclusively concern amount claims in which case they shall be dealt with by the corresponding proceeding in function of the amount claimed (an ordinary procedure corresponds if the claimed amount is more than 6,000€).
  3. The competent Courts are Mercantile Courts when dealing with complaints in which actions are exercised related to unfair competition, intellectual property and publicity.
  4. The process begins with the exercise of one or various actions through a complaint. Said action or actions are initiated by a subject that in procedural terms is deemed an actor or a complainant, who submits to a jurisdictional body a request so that their position is protected in litigation and their rights or legitimate interests protected. Such a request is addressed to the other subject deemed a defendant who according to the actor disturbs the right or legitimate interest, the protection of which is sought.
  5. In all judicial actions, the Judges, Magistrates, Prosecutors and other civil servants at the Courts and Tribunals shall use Castilian Spanish as the official language of the procedure. Likewise, if the parties do not object, the official language of a specific Autonomous Community may be used.
  6. There shall be a translation of all documents drafted in a language that is not Castilian Spanish or if the case, the official language of the Autonomous Community in question.
  7. In the area of intellectual property within an ordinary procedure, the holder of the rights may commence the termination of those actions that infringe upon them in addition to requesting the appropriate indemnification for the damages that have been caused whether economical or moral.
  8. Likewise, a request may be made prior to the commencement of judicial actions that the appropriate precautionary measures be adopted in order to urgently undertake the protection of their rights and avoid damages which could occur until the judge resolves the question.
  9. Notwithstanding the rules of Private International Law and those of a special nature, which could be applicable in the specific case, in Spanish legislation the general rule is that in the case of a defendant who is a natural person, the territorial jurisdiction shall correspond to the tribunal of the domicile of the defendant and if they did not have one in the national territory it shall be the competent judge of their residence in said territory.

Insofar as business owners and professionals, in litigation arising from their business or professional activity they may also be sued in the place where said activity takes place and if they had premises in different locations then in any of them at the actor’s choice.

Insofar as the territorial competence of the legal persons (companies) they shall be sued in the place of their domicile or in the place where the legal situation or relationship to which the litigation refers has arisen or must take effect provided that in said place it has an establishment open to the public or a representative authorized to act on behalf of the entity.

Specifically, and in particular among others, in the processes where there is the exercise of lawsuits concerning infringements of intellectual property the competent tribunal shall be the tribunal in the place in which the infringement has been committed or there exists evidence of commission or in which illegal items are found at the choice of the complainant.

In the area of Unfair competition the tribunal of the place where the defendant has their establishment shall be competent and in the absence of this their domicile or place of residence and when they do not have one within Spanish territory, the tribunal of the place where they have performed the act of unfair competition or where its effects have occurred at the choice of the defendant

In the area of Industrial Property, the tribunal which is competent shall be that which the Special legislation in this area indicates and which determines that the Mercantile Courts of the domicile of the defendant are the ones which are competent.

14.3    IMPORTANT MILESTONES OF A TRIAL

In Spain, ordinary trials are handled in the following phases:

14.3.1    Complaint

It is initiated by means of the lodging of a complaint in which must appear the identification of the actors and the defendant, the domicile or residence for the service of process, the facts, legal bases and the realization of that which is requested.

The documents which evidence the facts alleged by the complainant must be included as well as the expert reports on which they are supported.

The complaint must be signed by the lawyer and procurator.

It must be pointed out that in the ordinary Spanish procedure the intervention of the “procurator” is mandatory. The procurator is a technical representative before the court who among other functions is in charge of the notices between the court office and the party.

Each party of the process (complainant and defendant) has to have a procurator.

The procurator is an independent professional is paid fees apart from those of the lawyer.

14.3.2    Acceptance of the complaint

Acceptance of the handling of the complaint, service of process to the defendant and answer. The Judicial Secretary, having examined the complaint, shall issue a decree admitting it and shall have it transferred to the defendant in order for them to answer it in a period of 20 days.

14.3.3    Hearing prior to the trial

Once the complaint has been answered the Judicial secretary within 3 days shall convoke the parties for a hearing. The prior hearing shall be held within a period of 20 days from the convocation. The lawyer shall attend the hearing mandatorily.

In the prior hearing a settlement or transaction of the parties shall be attempted, procedural questions shall be examined which impede the continuation of the process, the issue of the process shall be established with precision and in the case that it were necessary evidence shall be proposed and admitted.

14.3.4    Trial

Once the evidence has been admitted, the Judge or Judicial Secretary shall indicate the trial date which shall be held in a period of 1 month from the time the hearing took place.

The aim of the trial shall be the practice of evidence and the formulation of conclusions therein.

14.3.5    Decision

The decision shall be issued within 20 days following the termination of the trial. If within the period in which to issue the decision, the final proceedings were agreed upon the period in order to issue them shall be suspended

The periods established by law are not usually complied with by judges (since the courts are saturated with matters underway.) Therefore, an ordinary procedure may take 1 or 2 years to be resolved depending on the Court that handles it.

14.3.6    Appeals

Against the Decisions of the Courts and Judicial Secretaries, which are unfavorable, the parties may initiate the appeals provided by law. The periods in which to appeal shall be calculated from the day following the notice of its clarification or its refusal.

In Spanish law there are various classes of appeals in function of the type of decision contested or whether the underlying reasons are material or procedural.

It must be pointed out here that the appeal through which one may seek that in accordance with the facts and legal basis formulated before the court of first instance the decision is reversed and another decision issued which is in favor of the appellant.

The Provincial Audience courts decide on these appeals.

After this type of appeal there only remains the Cassation Appeal before the Supreme Court which concerns solely appraisals.

14.4    THE PRELIMINARY RULING QUESTION BEFORE THE EUROPEAN COURT

Notwithstanding the aforementioned and regarding the subject of community law, any Judge in Spain when it has doubts on the application of a community regulation in a specific cause of action may pose a preliminary question to the Tribunal of Justice of the European Union. The Tribunal shall not decide on the issue and shall limit itself to informing the national Judge on the scope or the significance of the community rule.

14.5    LAWYERS’S FEE

In Spain it is normal to request the judge to order the opposing party to pay  judicial costs. In this sense, the judges usually award them in the case that they deem all the allegations of the complaint frivolous and bad faith in litigating is detected. Costs refer to expenses of defense and representation, costs generated by experts, advertisements, certifications and similar documents.

14.6    INTELLECTUAL PROPERTY ACTIONS

Against any infringement of rights regulated in Spain in the area of Intellectual and Industrial Property, civil, criminal or administrative actions may be exercised.

On the civil subject, these actions shall be exercised through the procedure for an ordinary trial and are summarized as follows:

  • Declaratory judgment of null and void or infringement.
  • The suspension of the infringing activity.
  • The prohibition that the infringing party renew it the infringing activity.
  • The commercial removal of illegal samples and their destruction.
  • The disabling and in the necessary case, destruction of the
  • moulds, plates, negative matrixes and other elements designated exclusively to the reproduction of the illegal materials.
  • The sealing of the apparatus used in the non-authorized public communication as well as the instruments used in order to facilitate the suppression or the non-authorized neutralization of any technical device.
  • The confiscation, disabling and in the necessary case, the destruction of the instruments on the infringing party’s account, whose sole use is to facilitate the removal or non-authorized neutralization of any technical device used in order to protect a computer program
  • The suspension of services rendered by intermediaries to third parties who make use of them in order to infringe on intellectual property rights.

Insofar as the indemnification for damages and injuries due to the holder of the infringed right it shall include not only the value of the loss that they have incurred but also that of the earnings which they have stopped due to the infringement of their right. In the case of moral damages their indemnification shall proceed even when an economic injury has not been proven. For their valuation, attention shall be given to the circumstances of the serious infraction of the injury and degree of illegal diffusion of the work.

The Statute of Limitations for an action in order to claim for damages and injuries in the area of Intellectual Property shall be 5 years from when the person with standing could exercise it.

Likewise in the case of infringement or when there exists a rational fear and based on the fact that it is going to occur imminently the judicial authority may decree on the request of the holders of the rights, precautionary measures that according to the circumstances were necessary for the urgent protection of said rights and that are summarized as follows:

  • The intervention of the earnings that have been obtained with the illegal activity
  • The suspension of the activities of reproduction, distribution and public communication according to the cases
  • The seizure of reproduced or used samples and the material used for reproduction and public communication.
  • The confiscation of the equipment, apparatus and materials used.

14.7    INDUSTRIAL PROPERTY ACTIONS

14.7.1    Brand

The owner of a registered brand may exercise before the jurisdictional bodies through an ordinary judgment the civil actions that correspond against those who infringe on their rights and request the necessary measures in order for their safe-keeping, regardless of submission to arbitration, if it were possible.

These actions are summarized as follows:

  • Declaratory judgment of nullity or infringement
  • The termination of the acts that infringe on their rights.
  • The indemnification of damages and injuries incurred.
  • The adoption of the measures necessary in order to prevent that its infringement continue and in particular that the products, packing, publicity material labels be removed from economic trading and the confiscation or destruction of the measures aimed at committing the infringement.
  • The destruction or termination for humanitarian purposes if it were possible at the choice of the complainant and at the cost of the non-prevailing party of the illegally identified products which are in possession of the infringing party.
  • The allocation of ownership of the confiscated products, materials and means in which case the value of the goods effected shall be attributed to the amount of the indemnification of damages and injuries (insofar as there is an excess amount the owner of the registered brand shall compensate the other party for this surplus)
  • The publication of the decision at the cost of the losing party by means of advertisements and notices to interested parties.

Likewise, the infringement of a right of Intellectual Property usually produces damages to the holder for which there must be compensation by indemnification means due to damages and injuries.

The indemnification of damages and injuries shall consist of not only the losses incurred but also the lost profits of the owner of the registration of the brand which is the cause of the infringement of their right. The owner of the brand registry may request the indemnification of the damage caused to the prestige of the brand by the infringing party especially by a defective realization of illegally branded product or an inadequate presentation of those in the market as well as research expenses incurred in order to obtain reasonable proof of the commission of the infringement object of the judicial procedure.

For the establishment of the indemnification for damages and injuries, the following shall be taken into account on the choice of the injured parties.

  • The negative economic consequences (profits that the holder would have obtained by means of the use of the brand if the violation had not taken place and those that infringing party has obtained as a consequence of the infringement).
  • The amount that as a price the infringing party would have had to pay the holder for the concession of a license that would have permitted them to undertake their utilization.

As with Intellectual Property the infringement of a right of Industrial Property enables the holder of that infringed right to request the adoption of precautionary measures that tend to ensure the actions that are going to be undertaken.

Actions arising from the infringement of a registered brand shall have a 5 year Statute of Limitation, counting from the day on which they could be exercised.

14.7.2    Patent

The holder of a patent may exercise before the jurisdictional bodies through an ordinary judgment procedure the civil actions that correspond against those who damage their right and demand the necessary measures for their safe-keeping.

Specifically, the holder of the patent right which is damaged may request:

  • The suspension of the acts that infringe on their right.
  • The indemnification for damages and injuries incurred.
  • The confiscation of the objects produced or imported with the infringement of their rights and the means designated to its production.
  • Attribution of ownership of the objects or means confiscated in which case the value of the goods effected shall be attributed to the value of the indemnification awarded (as for that which exceeded it the holder of the registered brand shall compensate the other party for the excess amount).
  • The adoption of the measures necessary in order to prevent the infringement of the patent from continuing and in particular the transformation of the objects or means confiscated or their destruction when it were indispensible in order to impede the infringement of the patent.
  • The publication of the decision finding that the party infringed on a patent.

The indemnification for damages and injuries comprise not only the value of the loss that has been incurred, but also that of the profit that has not been obtained by the holder as a result of the infringement of their right. The indemnification amount may include if the case the research costs incurred in order to obtain reasonable evidence of the commission of the infringement which is object of the judicial proceeding.

In order to establish the indemnification for damages and injuries the following shall be taken into account on the choice of the prejudiced party:

  • The negative economic consequences among which are the foreseeable profits that the holder would have obtained from the economic exploitation of the patented invention if the competition of the infringing party had not existed and the profits that the latter would have obtained from the exploitation of the patented invention.
  • The amount which as a price the infringing party would have had to pay the holder of the patent due to the granting of license that would have permitted them to undertake its economic exploitation in conformity with the law.

The Statute of Frauds for actions arising from the infringement of the patent rights shall be 5 years counting from the day on which they could be exercised.

In the area of Intellectual and Industrial Property without prejudice to the civil actions that may be exercised and that we have mentioned previously, the decisions of the Spanish Office of Patents and Brands, being acts arising with the Administration, are appealable via the contentious-administrative regimen.

Likewise and in regard to the criminal area, the Spanish Criminal code provides a punishment for crimes related to Intellectual and Industrial Property with sentences that range from a fine to imprisonment. For which, any subject who considers themselves aggrieved has the standing in order to initiate penal proceedings either through a criminal report or by means of a lawsuit.

In particular, and in accordance to this regulation, an offense against intellectual property occurs when:

  • In order to obtain a direct or indirect benefit and to the detriment of a third party, to duplicate, plagiarize, distribute, publicly communicate or otherwise exploit, wholly or partly, a literary work or performance – artistic or scientific – or its conversion, interpretation or artistic performance thereof scheduled on any sort of medium or communicated by any means, without the consent of the holders or assignees of the respective intellectual property rights.
  • Who, in the provision of services of an information Company, with a view of gaining a direct or indirect economic benefit, and to the detriment of third parties, provides in an active and non-neutral manner and without being limited to a merely technical process, access or detection on internet of projects or services subject to intellectual property without the the consent of the holders or assignees of the respective intellectual property rights, particularly by offering catalogued and classified lists of links to the projects and content previously mentioned, even if said links had been initially provided by the beneficiaries of their services.
  • As well as those who:
  1. Export or intentionally store copies of the projects, productions or versions referred to in the first two paragraphs of this article, including digital copies without aforementioned consent when they are intended to be reproduced, distributed or publicly communicated.
  2. They intentionally import these products without such consent when they are intended to be duplicated, distributed or publicly communicated whether they have a lawful or unlawful origin in their country of provenance. However, importation of such products from a European Union State shall not be punishable when those have been acquired directly from the holders of the respective intellectual property rights in said State, or with his consent.
  3. Encourage the implementation of the conduct referred to in paragraphs 1 and 2 of this article eliminating or altering, without the consent of the holders or assignees of the respective intellectual property rights, the effective technological measures introduced by them in order to prevent or restrict their implementation.
  4. With a view to obtaining a direct or indirect economic benefit, in order to provide third parties with access to a copy of a literary, artistic or scientific work or to its conversion, interpretation or artistic performance thereof scheduled on any sort of medium or communicated by any means, without the consent of the holders or assignees of the respective intellectual property rights, bypass or ease the circumvention of effective technological measures to prevent it.

In the area of Industrial Property will incur in an offense against industrial property those who:

  • For industrial or commercial purposes, without a patent or utility models holders consent and with knowledge of its registration, manufactures, imports, possesses, uses, offers or introduces objects protected by such rights into the market. Also regarding objects protected by third parties of an industrial or artistic model or design or semiconductor topographies.
  • Whoever uses or offers the use of a patented process, or possesses, offers, introduces into the market, or uses the product directly attained from the patented process.
  • Who with industrial or commercial purposes without the consent from a holder of an industril property right registered under the trademark law and with knowledge of its registration:
  1. manufactures, produces or imports products including a distinctive sign which is identical or similar thereto, or
  2. offers, distributes or wholesale marketing of products which include a distinctive sign which is identical or similar thereto, or stores them for that purpose when they are identical or similar products, services or activities for which the industrial property has been registered
  • Whoever for industrial or commercial purposes without the consent from a holder of an industrial property right registered under the trademark law and with knowledge of its registration offers, distributes or markets retail, or provides services or develops activities which include a distinctive sign identical or similar thereto, when they are identical or similar products, services or activities for which the industrial property has been registered
  • The occasional sale of products.
  • Whoever for agricultural or commercial purposes without the consent of the holder of a plant variety certificate and with knowledge of its registration, manufactures or duplicates, arranges for manufacture or duplication, offers for sale, sells or markets in any other way, exports or imports, or possesses for any of the aforementioned purposes, plant material for duplication or multiplication of a protected plant variety according to National or European Union legislation on plant variety protection.
  • Who uses in the course of trade a designation of origin or geographical indication representative of a particular quality legally protected in order to identify the products safeguarded by them, with knowledge of this safeguarding. this document according to the new legislation

The Spanish Penal Code contemplates the possibility that those crimes deemed flagrant and which are committed against Intellectual and Industrial Property rights be tried by the procedure provided for by the “Law on Quick Trials”. In order for a crime to be able to be tried by means of this procedure, a series of requisites are established among which it is contemplated that the crime is flagrant, in the sense that there is no solution of continuity between the commission of the punishable fact and the police actions that lead to the citation or arrest, that it concerns some of the specifically valued crimes and that it deals with a punishable fact in which an instructor facility is detected that is to say, that the investigation is short and simple.

Note that with the entry into force of Organic Law 1/2015, which amends the Criminal Code and presents new developments in intellectual and industrial property, modifications are made regarding criminal acts that were already regulated, and which we have adjusted in this document according to the new legislation.

The concept of misdemeanor, for less serious offenses, is removed and therefore not punishable.

Additionally, the reform has substantially extended the confiscation regulation, in other words, the possibility for the judge or court to order the delivery of goods, effects and profits used as an instrument and /or which are the proceeds of crime, extending its implementation to crimes against intellectual property.

Furthermore, amendments are made to the Criminal Procedure Law which have implications in the area of intellectual and industrial property, thus extending the possibility of early elimination of the effects seized from crimes against intellectual and industrial property provided they are assessed by an expert and sufficient samples are preserved for further verifications.

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