What action can an IP owner take when it finds its rights being infringed online in Spain?

Under Spanish law, there is a wide range of potential remedies in case of an illegitimate or unlawful use of IP assets, such as drawings, designs, distinctive signs, logos, look & feel, software, or patentable hardware.

IP assets may be simultaneously subject to various legal regimes that can be used to protect complementary aspects of them. Thus, a design can be protected as trademark if it is used commercially without the permission of the right holder but also as copyright work if it is copied and transformed.

The judicial remedies are regulated by a range of Spanish legislation, including the following:

• Copyright Law (Royal legislative Decree 1/1996, of 12 April, approving the consolidated text of the Copyright Law, regularising, clarifying and harmonising the legal provisions in force on the matter);
• Trademarks Law (Law 17/2001, of 7 December, on Trademarks);
• Patents Law (Law 24/2015, of 24 July, on Patents) and
• Unfair Practices Law (Law 3/1991, of 10 January, on Unfair Competition).

These pieces of legislation also allow claimants to apply for precautionary measures that aim to avoid greater damage being caused by the defendant throughout the judicial procedure, which may otherwise make it impossible to compensate to the claimant through damages alone.

In addition, mechanisms established by marketplaces, website owners and arbitration schemes to notify them of IP infringements can be very useful and are often the fastest and most cost-effective procedures to respond to IP infringements.

Copyright

In accordance with the Spanish Copyright Act, the recognized right holder may both apply for an injunction, preventing the infringer from continuing the infringing activity, and claim for damages (material and moral), based on the unlawfulness of the infringer’s behaviour. Any person, who allegedly infringes copyright may, following a court order, be required to, among other things:

• Comply with the content of the precautionary measures resolution.
• Cease and desist the infringing course of action, which may include the following:
  1. Suspending the infringing exploitation or activity and all related activities;
  2. Withdrawing from the market and destroying the unlawful or infringing material;
  3. Withdrawing, disabling, or destroying the necessary equipment, tools or any other material for the creation, manufacture or manipulation of unlawful copies; and
  4. Suspending the provision of services by intermediaries leveraged by the infringer to take up the unlawful course of action according to the provisions established to this effect in the Spanish E-Commerce Act.
• Pay for the publication of the judicial resolution derived from the infringement in a relevant Spanish press publication.
• Pay damages, which can cover not only the value of the losses suffered by the claimant but also the value of the profits not obtained by the rightholder, “lucrum cessans”, caused by that infringement. The amount of the compensation may include the investigation costs incurred for obtaining reasonable evidence about the commission of the infringement. Quantification will made according to the following criteria:

1. The negative economic consequences, including the loss of profits and the profits made by the infringer. Moral damages shall be determined according to the circumstances of the infringement, seriousness of the harm done and the extent of unlawful dissemination of work.
2. The amount that would have been received by the right holder should the infringer have requested authorisation for using the relevant copyright.

Any intentional unlawful reproduction or distribution of a copyright protected work (including any attempt to do so) can also be subject to criminal proceedings and punished with imprisonment up to four years, disqualification for the exercise of the profession related to the criminal offense for a period of two to five years, and a daily fine for up 24 months .

At an administrative level, copyright infringements may be reported to the Second Section of the Spanish Copyright Commission.  This is the competent body for safeguarding, within the competences of the Ministry of Education, Culture and Sports, copyrights against any infringement by those responsible of information society services under the terms provided for in the Spanish E-Commerce Act.

Trademarks

The owner of a trademark right which is being infringed may claim in civil proceedings, among other things:

• The cessation of acts that infringe the trademark.
• Compensation for the damage suffered.
• Measures necessary to avoid the continuance of the infringement and, in particular, the removal from the market the products, packaging, advertising materials, tagging, or any other document in which the trademark infringement has materialised. Also, seizure or destruction of the means principally used to commit the infringement.
• The destruction or transfer for humanitarian purposes, at the choice of the claimant and at the cost of the defendant, of the products illicitly identified with the trademark infringed, unless the distinctive sign can be removed without affecting the product or the destruction of it causes a disproportionate detriment to the defendant.
• To be awarded the title to the seized items or means of production if at all possible, being the value of the goods for the purpose of the damage compensation.
• That the defendant pays the costs of the publication of the judgment through announcements and notifications to those concerned.

Damages claims will take account of not only the value of the losses for the claimant but also the value of the gains not obtained as a consequence of the infringement of the rights. The right holder may also claim for damage caused to the prestige of the trademark by the infringer. The amount of compensation may include investigation costs incurred for obtaining reasonable evidence about the commission of the infringement.

The claimant can choose between the following criteria for the determination of the amount of the compensation of the damage:

• The negative economic consequences: the profit that the owner could foreseeably have made if the infringement had not occurred and the profit that the infringer has obtained from infringement of the trademark rights. Moral damage can be compensated as well, even in the absence of proven economic detriment.
• A lump sum comprehensive of the amounts that the infringer would have had to pay to the right holder of the trademark rights for the granting of a license that would have let him/her exploit the patent in a lawful way.

These actions can be taken alongside the exercise of any other civil or criminal actions.

Patents

It is unusual for patent rights to be infringed online and courts have, so far, little experience in trying to assess whether use by users in one jurisdiction of a technology hosted on a server in another jurisdiction infringes any patent.  Nor have the courts yet been asked to prohibit any website which includes an offer for sale of goods on the grounds that the goods infringe patent rights – although this is in principle contemplated under the EU IP Enforcement Directive.

Unfair competition practices

Under Spanish Law, unfair business practices are set out in the Spanish Unfair Competition Act. For these purposes the following practices, among others, are considered unfair:

• Acts of deception.
• Misleading omissions.
• Aggressive practices.
• Acts of denigration.
• Acts of imitation.
• Exploitation of others’ reputation.
• Illegal advertising.

The consequences of an infringement of the kinds specified above may be:

• A declaration of the unfairness of the conduct.
• Cessation of the unfair conduct of prohibition of any further continuance. Prohibition may be also sought against conducts not yet practised.
• Removal of the effects caused by the unfair conduct.
• Compensation of damage caused by the unfair conduct, in case of wilful misconduct or negligence by the defendant.
• Aeclaration of unfair enrichment, which will only be relevant where the unfair conduct harms the holder of exclusive rights or other of analogous nature.

The judge or court may also order, at the cost of the defendant, the partial or total publication of the judgment or, when the effects of the infringement may last long, a rectifying statement.

Unlike the actions for infringement of IP rights discussed above, the above actions can be brought by anyone affected by the unfair practice, which may range from competitors to consumers. Under Spanish law, infringements regarding unfair business practices can also be prosecuted and subject to criminal liabilities.