Cuatrecasas Jorge Llevat, Cristina Vendrell and Jorge Monclús
1. SOURCES OF LAW
1.1 What are the principal sources of law and regulation relating to trademarks and trademark litigation? (Briefly describe the role of international, federal or state laws and relevance of court decisions, list and briefly describe relevant statutes and international treaties)
In terms of substantive law, the main regulations applicable to trade mark rights in Spain are Law 17/2001, dated 7 December on trade marks (‘Trade Mark Law’), and Royal Decree 687/2002, dated 12 July which approved the Regulation for the Execution of the Trade Mark Law.
Civil proceedings are governed by the Civil Procedure Law (Law 1/2000 of 7 January) and by the provisions of the Trade Mark Law as well as the procedural provisions of the Patent Law.
Also, trade mark violations are considered a crime by Art 274 of the Spanish Criminal Code (Law 10/1995, dated 23 November, subsequently modified by Law 15/2003 dated 25 November), criminal proceedings being governed by Law on Criminal Procedure (dated 14 September 1882 as subsequently modified by Law 38/2002, dated 24 October).
Finally, the decisions of the Spanish Patent Office with respect to the granting of a trade mark may be appealed before the administrative courts, those proceedings being governed by the provisions of Law 29/1998, dated 13 July (Law on the Contentious Administrative Jurisdiction).
European legislation
Spain is a member of the European Union and the Community Trade Mark is effective in its territory according to the Community Trade Mark Regulation (Regulation EC 40/94 dated 20 December 1993, as subsequently modified ‘CTMR’). Also applicable in Spain is the First Directive of the Council dated 21 December 1988 to Approximate the Laws of the Member States Relating to Trade Marks (implemented by the Trade Mark Law).
International legislation
Spain is a member of the Paris Convention for the Protection of Industrial Property of 20 March 1883 and the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS) ratified by Spain by means of the Ratification Document of December 1994. Spain also ratified in 1998 the Trade Mark Law Treaty dated October 1994, and is a party to the Madrid Agreement and its Protocol (ratified in 1991) as well as to the Nice Agreement on the International Classification of Products and Services for Registration of Trade Marks dated 15 June (latest revision dated January 2002).
1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of a conflict?
The main source is the law. International Treaties, once published in the Official Gazette become integrated into the internal system of laws, will be directly applicable in Spain and take precedence over internal laws that are incompatible or contradictory with them. The community (EU) law takes precedence over internal law in the event of a conflict.
2. COURT AND ADMINISTRATIVE SYSTEM
2.1 Can third parties oppose/request invalidity of a national or supranational trade mark application/registration in your country? If so, on what grounds.
National Trade Marks
Opposition
Once the trade mark application is published, within two months any interested party may oppose the registration before the Spanish Patent and Trade Mark Office (‘SPTO’) on the grounds of rejection set forth by the law. Third parties (such as public entities or consumer associations) may also submit comments arguing the existence of absolute grounds of rejection. The grounds for rejection are:
Absolute grounds, signs which:
(a) cannot be graphically represented; or
(b) lack distinctive character; or
(c) are descriptive (consisting exclusively of signs or indications which designate kind, quality, quantity, intended purpose, value, geographical origin, time of production or other features of the goods or services; and those consisting exclusively of signs customary in the current language or in trade practices to designate the products or services); or
(d) consist exclusively of the shape imposed by the nature of the goods or necessary to achieve a technical result or giving substantial value to the goods;
(e) are contrary to public policy or good moral principles;
(f) may deceive the public, such as to the nature, quality or geographical origin of the goods or services;
(g) are for use in wines or spirits which include or consist of geographical indications if they identify products of another origin; or
(h) are official emblems such as flags and the like as set forth in Art 6 ter of the Paris Convention and other emblems which have public interest unless authorised by the competent authorities.
The grounds mentioned under (b) and (c) above do not apply if the sign has become distinctive for the products or services for which registration is sought as a result of its use. Also, a combination of signs falling under (b) and (c) above may be registered if the combination is distinctive.
Relative grounds (ie conflicts with previous rights), include:
(a) signs identical to previous trade marks for identical goods or services as well as signs which, because they are identical or similar to a previous trade mark and because the goods or services designated are identical or similar, there is a risk of confusion in the public (risk of confusion includes the risk of association). ‘Previous trade marks’ include national, international or Community Trade Marks having a presentation or priority date previous to the opposed trade mark, as well as Community trade marks claiming seniority from one of those previous trade marks even if this later trade mark has been surrendered or no longer exists, and also trade mark applications and unregistered trade marks notoriously known in Spain;
(b) the same grounds mentioned under (a) apply if the trade mark for which registration is sought enters into conflict with a previous trade name registered or applied for in Spain.
Also, registration may not be obtained for signs identical or similar to previous trade marks or trade names but for different products or services if, because those signs are notorious or well known in Spain, its use may indicate a link between the products or services and the owner of the previous trade mark or trade name, or if that use may imply taking unfair advantage of the previous trade mark or trade name or be detrimental to its distinctive character or to its notoriety or well-known features. Under Spanish law, a trade mark is notorious if it is generally known by the public to which the products or services are directed and it is well known if it is known by the public in general (the protection of well-known trade marks extends to all products or services, while for notorious trade marks it will extend to other products and services depending on their level of knowledge).
Relative grounds of rejection also include trade marks which are in conflict with other rights such as name or image of a person, copyright, and trade name or corporate name if there is risk of confusion and it has been used or is notorious in the whole territory of Spain. The law also prohibits registration of a trade mark by an agent or representative of the owner.
The SPTO examines the absolute grounds for refusal as well as if it conflicts with the name or pseudonym of a third party. Relative grounds for rejection of a trade mark are not examined ex officio by the Office. If there are no oppositions or comments from third parties and there is no absolute ground for refusal, the trade mark is granted; otherwise, the proceedings are suspended and the oppositions, comments or grounds for refusal are notified to the applicant. The applicant may answer those arguments within one month following the publication of the suspension and it may also withdraw or modify the application (limit the products, divide the applications, or make minor modifications).
Thereafter the Office grants or rejects the application. Against this decision the interested party may file an appeal before the Office first, and thereafter it may bring a claim before the administrative courts. If a claim is brought before the administrative courts, the party in that proceeding may not thereafter request the invalidity of that trade mark before the commercial courts for the same grounds of invalidity that were already decided by the administrative courts.
Invalidity/Cancellation
With respect to invalidity the law distinguishes between: (i) absolute grounds: same mentioned above for rejection plus the bad faith and the case where the trade mark has been requested by someone not entitled to do so; and (ii) relative grounds: the same mentioned above for rejection.
The action to request invalidity for absolute grounds does not expire. However, no invalidity may be requested if the cause for invalidity no longer exists when the action is brought, in particular if the trade mark was originally descriptive or not distinctive and has thereafter become distinctive. Invalidity on relative grounds may not be raised if the holder of prior rights has knowingly tolerated the use of a subsequent conflicting trade mark during five consecutive years, except in the event of bad faith. If an invalidity action is brought by the owner of a trade mark that has been registered for more than five years, it will have to prove the actual and serious use of its trade mark during the five years before the complaint if the other party so requests by way of exception, or justify the lack of use. Invalidity is declared by the courts.
Also a trade mark may be cancelled: (i) if not renewed at the end of its term; (ii) if withdrawn; (iii) if not used for five consecutive years; (iv) if, because of the activity or inactivity of its owner, it has become customary in the current language or in trade practices to designate the goods; (v) if, because of the use made by its owner or with the owner’s consent, it may be deceptive; (vi) if as a result of a transfer or for other reasons the owner is no longer entitled to have the trade mark. Except for grounds (i) and (ii) which are declared by the SPTO, cancellation is declared by the courts.
International Trade Marks
Rejection, invalidity and cancellation of international trade marks effective in Spain are similar to national trade marks, although additionally under the Madrid System there is the possibility of the ‘central attack’: if the trade mark which has been the basis for the international registration is revoked, withdrawn, cancelled or invalidated within a period of five years from the international registration, or later if the opposition or action was brought before, the entire international registrations fails (the Protocol allows then the transformation of the international registration into a national trade mark application).
Community Trade Marks
Opposition, invalidity and cancellation of Community Trade Marks are governed by the CTMR and handled by the OHIM in Alicante (however, when trade mark invalidity or cancellation is raised as a counterclaim in a violation action, the Spanish Community Trade Mark court in Alicante dealing with the claim – not the OHIM – will also deal with the invalidity counterclaim).
The grounds for opposition as well as invalidity and cancellation are very much similar to the ones mentioned above for national trade marks. The trade mark will be rejected even if the cause, absolute or relative ground, affects only part of the Community.
2.2 In which courts are trade marks enforced? Are they specialised trade marks courts?
The Law 8/2003, dated 9 July modified the court system and created the Commercial Courts, which are granted jurisdiction to hear, among others, cases regarding industrial property.
In civil proceedings, the law provides for the competence only of those Commercial Courts located in major cities (the cities where the Superior Court for each autonomous region sits). In particular, the competent court to deal with trade mark litigation is the Commercial Court located in the city – from among those mentioned above – that corresponds to the defendant’s domicile. If the matter concerned is a violation of trade mark rights, the plaintiff may choose between the court of the defendant’s domicile or the court corresponding to the place where the violation has occurred or where it has produced its effects. If there were several defendants and several courts could be competent, the plaintiff can choose between them.
The Commercial Courts were created, among other purposes, so that the matters of their competence would be resolved by judges having specific knowledge in those areas. Also, in some Appellate Courts a section has been designated to hear all cases concerning industrial property rights (eg, section 15 of the Appellate Court of Barcelona is highly regarded for its expertise in that area).
To deal with Community Trade Marks, Spain created the Community Trade Mark Courts, for first instance and appeals, in Alicante and having competence in the whole of Spain for those matters.
In addition, there are also administrative courts, which are competent to hear cases filed against the decisions of the SPTO granting or rejecting a trade mark; and criminal cases concerning trade mark violations are dealt with by criminal courts. Neither administrative courts nor criminal courts dealing with those cases are specialised.
2.3 To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts that have handed down decisions in similar cases?
Under Spanish law, jurisprudence is not a source of law but rather a complement to or integration of the legal system. In order to be considered jurisprudence, there must be two according decisions rendered by the Supreme Court.
Decisions rendered by foreign courts will not be considered case law, and they will not be binding on the Spanish Courts, although they are in practice sometimes used by the Spanish Courts as guidance in particular if they deal with issues not yet addressed in any Spanish decision.
Decisions handed down by EU courts applying Community Law (for example, the First Directive on trade marks) are effective in Spain and must be observed by Spanish courts.
2.4 Do the courts deal with infringement and invalidity simultaneously? Or must invalidity actions be brought in separate proceedings
Both the Commercial Courts and Community Trade Mark Courts may deal with infringement and invalidity or cancellation actions in the same proceedings. If invalidity or cancellation actions are brought separately, for national and international trade marks the Commercial Courts are competent but for Community Trade Marks it is the OHIM that is competent.
2.5 Who can represent parties before the courts handling trade mark litigation and/or the national or supranational government agency dealing with trade mark validity issues?
In trade mark court proceedings the parties must be represented by attorney and ‘procurador’ (attorneys representing the parties in court and entrusted with filing and receiving communications with and from the courts).
In OHIM, proceedings on trade mark validity by parties not having a domicile, site or a serious commercial or industrial establishment within the EU must be represented by counsel or by an authorised representative included in the list of OHIM and with a domicile in the EU. In other cases representation before OHIM is not required.
2.6 What is the language of the proceedings? Is there a choice of language?
In administrative proceedings before SPTO as well as in court proceedings in Spain the language used is Spanish.
However, the parties may use the language that is official in the autonomous community in which the judicial actions take place. Judges may also use the official language of the autonomous community if none of the parties oppose on the basis of lack of knowledge of such language.
Before the OHIM on Community Trade Marks the language must be one of those recognised by the Office (Spanish, French, German, English and Italian). There are special rules on the language of the proceedings for opposition or invalidity.
3. SUBSTANTIVE LAW
3.1 To what extent are unregistered trade marks protected under your country’s laws?
Unregistered trade marks notoriously known in Spain enjoy the protection given by Art 6 bis of the Paris Convention and they are a ground for refusing the registration or invalidating a conflicting trade mark. Also, the user of an unregistered notorious trade mark may bring a violation action against unauthorised users. With respect to unregistered trade marks that are not notorious, protection will have to be achieved by other means (eg unfair competition actions or the law allows the user of the unregistered trade mark to bring an invalidity action against the trade mark registrations made in bad faith or to claim ownership of a trade mark if registered in fraud of its rights or in violation of legal or contractual obligations).
3.2 How is trade mark infringement assessed? Does protection extend to translations or to conceptually identical but graphically different trade marks?
The trade mark owner may prevent use of: (i) identical signs for identical products or services; (ii) similar signs for identical or similar gods or services if there is risk of confusion,; and (iii) identical or similar signs in products or services which are not similar if the trade mark is notorious or well known and the use may indicate a link between the products or services and the owner of the previous trade mark, or in general if it may imply taking unfair advantage of the previous trade mark or be detrimental to its distinctive character or to its notoriety or well known features.
Risk of confusion is at the centre of the trade mark system including the risk of confusion as to the origin of the products as well as the risk that the consumer believes that there is a legal connection between the holders of the conflicting signs. The standard used is the average consumer normally well informed and reasonably attentive.
The are several criteria the SPTO and the courts generally apply to determine whether there is confusion between signs, such as the global vision, the principle of specialty (except for notorious or well known trade marks), or that words in general prevail over graphics, or consideration of the conceptual similarity of the confronted signs.
3.3 Are there other causes of action for trade marks (eg dilution)?
Dilution is contemplated as a cause of action for notorious or well-known trade marks (see 3.2 above). At the Community Trade Mark level, the CTMR provides for a similar cause of action if the unauthorised use damages the distinctive character or the notoriety of the trade mark.
3.4 Can a trade mark be enforced against a domain name, a trade name, a pseudonym or other distinctive signs?
The trade mark owner may prohibit the use of its trade mark as a domain name or in communication networks. The law also provides for enforcement against trade names and corporate names and it sets forth that if a court orders the change of a corporate name for violation of a trade mark and said change is not carried out within one year, the company will be dissolved by operation of law.
3.5 On what grounds can a trade mark be invalidated?
See detail in question 2 above.
3.6 Must use requirements be satisfied to maintain the trade mark registration? If so, is there any definition of what constitutes use?
Non-use of a trade mark for five consecutive years is a cause for cancellation. If a trade mark has not been used during five consecutive years and the owner requests the invalidity of a subsequent right the defendant may oppose such non-use; the same applies in violation actions, wherein the defendant may also oppose such non-use.
The five year period mentioned above does not apply when circumstances independent from the will of the owner prevent using the trade mark (such as import restrictions or official requirements imposed on the goods for which the trade mark is registered).
The law does not define use but it provides that deemed use includes: (i) use by a third party with the owner’s consent; (ii) use in a way that does not change significantly from the way in which the trade mark is registered; and (iii) attaching the trade mark to goods or to their presentation even if done only for export purposes.
For Community Trade Marks the same five-year use requirements exists, and the non-use is a cause of cancellation as mentioned above. Also the validity of a trade mark cannot be challenged on the basis of an earlier trade mark that has not been used during that five-year period, and non-use can be raised as a defence in infringement proceedings.
3.7 What other defences, if any, are available to an alleged infringer? Does your country’s law provide for prior user rights?
Defences available in infringement proceedings include the cancellation or invalidity of the opponent trade mark and in some cases prior use (notorious or well-known trade marks or, if this is not the case, the user could still counterclaim ownership of the trade mark if it could prove that it had been registered in fraud of its rights or in violation of legal or contractual obligations). Prior use is also recognised for unregistered trade names if a conflict arises with subsequent trade marks provided the trade name is notorious or it has been used in the whole territory of Spain.
3.8 To what extent can enforcement of a trade mark expose the trade mark holder to liability for an antitrust violation?
The existence and the exercise of the rights are different issues. While a trade mark may validly exist, its exercise may constitute antitrust violation.
3.9 Can a court only partially invalidate a trade mark?
Partial invalidation or cancellation is admitted if the cause of invalidity or cancellation only affects part of the products or services for which the trade mark is registered. The same applies for Community Trade Marks.
3.10 Is it possible to amend a registered trade mark during a lawsuit?
In general, modification of a trade mark once granted is not permissible (it is possible to modify an application). However, it is possible to divide a trade mark already registered during the proceedings of an appeal brought against the decision of the SPTO granting or denying the trade mark, if by doing so the controversy is focused only on one of the divided trade marks.
3.11 Are there any grounds on which an otherwise valid trade mark can be deemed unenforceable, owing to misconduct by the trade mark holder, or for some other reason (eg expiry of time limit)?
See above question 2.
3.12 Can a trade mark holder bring a lawsuit claiming both trade mark infringement and unfair competition for the same set of facts? Is it possible to bring parallel unfair competition proceedings, whether or not the trade mark is registered?
Actions of trade mark infringement and unfair competition may be brought jointly. Although this is not always the case, the same set of facts may constitute a trade mark violation and also may constitute acts of unfair competition such as, for example, an improper use of the other party’s reputation or efforts.
Under the Civil Procedure Law, at the time of bringing an action all the facts and legal grounds in which the claim may be based should be raised and they may not be reserved for a subsequent action, and thus it does not seem possible to have parallel proceedings. In any event, should parallel proceedings be brought on similar facts, one proceeding would interfere with the other and it would be suspended until the other was resolved.
4. PARTIES TO LITIGATION
4.1 Who can sue for trade mark infringement (trade mark holder, exclusive licensee, non-exclusive licensee, distributor)? Does a licensee need to be registered to sue?
The trade mark owner may sue for trade mark infringement. Also, unless otherwise agreed, the holder of an exclusive license (but not the non-exclusive licensee) may bring infringement actions. The non-exclusive licensee may however request through a notary the trade mark owner to bring legal action and if the owner fails to do so within three months, the licensee may do so in his own name.
The Trade Mark Law stipulates that licences only have effect against third parties of good faith when they have been recorded in the Trade Mark Register. This has been traditionally interpreted as requiring registration of the licence for bringing infringement actions, but recent court decisions no longer require registration (this principle has been set by decision of the Appellate Court of Barcelona dated 30 January 2004 and, for Community Trade Marks, decisions of the Spanish Community Trade Mark Court dated 10 July 2005; 26 July 2006 and 20 November 2006).
For Community Trade Marks, Art 22.3 of the CTMR provides that the licensee of a Community Trade Mark may only bring actions for trade mark infringement with the owner’s consent. However, the exclusive licensee (but not the non-exclusive) may bring that action if having requested the owner it fails to bring the action within an appropriate time period.
4.2 Under what conditions, if any, can an alleged infringer bring a lawsuit to obtain a declaratory judgment on non-infringement?
Any interested party may bring an action against the owner of the trade mark requesting the court to declare that a particular act does not constitute infringement of the trade mark.
Before bringing this action the interested party must, through a notary, ask the owner of the trade mark whether the trade mark conflicts with the use the claimant is making or with the serious and effective preparations the claimant has made. After one month from the date of such request, if the owner has not answered or if the claimant does not agree with the owner’s position, he may bring the action for non-infringement.
This declaratory action may be exercised jointly with an invalidation action. It is also possible that the defendant in such action counterclaims for violation. But declaratory action may not be brought by any person against whom a claim for infringement of the said trade mark has already been instituted.
For Community Trade Marks, the declaratory action is also admissible.
4.3 Who can be sued for trade mark infringement? Can the company directors be sued personally? Under what conditions, if any, can someone be sued for inducing or contributing to trade mark infringement by someone else?
All individuals or companies that have taken part in the violation may be sued.
In case of violation carried out by a company, the company is liable. The directors may be found liable if there are circumstances that justify piercing the corporate veil (such as confusion between sole director and company, in the case decided by the Appellate Court of Malaga dated 3 June 1997).
In criminal proceedings, the action cannot be brought against a legal entity or corporation. Consequently, if a corporation is involved, criminal actions for trade mark violation must be directed against the company directors.
Contributory infringement has been particularly considered in connection with internet service providers. The Law 19/2006 dated 5 June implementing in Spain the Directive 2004/48/EC concerning the respect of intellectual property rights, provides that measures such as an injunction or other measures to prevent the continuation of a violation may be taken against intermediaries whose services are used to violate the trade marks even if their behaviour is not considered a violation, provided such measures are proportionate and not discriminatory.
4.4 Is it possible to add or subtract parties during litigation?
In litigation against several parties the claimant may waive its action or desist in the claim against one of the parties provided that there is no necessary litisconsortium (need to have all the defendants in the claim when the action cannot be divided). Also a party may be subtracted on the same terms if one defendant settles the claim against it.
Adding parties is possible at the preliminary hearing by the claimant if, in case of necessary litisconsortium, one or several of the parties which needed to appear as defendant had not been previously named by the claimant. If the proceeding is pending, a third party having legitimate interest but that is not a party may ask the judge to be considered a party. Also in some cases the law allows the parties to call a third party to intervene in the proceedings.
5. ENFORCEMENT OPTIONS
5.1 What options are open to a trade mark holder when seeking to enforce its rights in your country?
The trade mark owner whose rights have been violated in Spain may bring civil or criminal actions before the competent authorities
5.2 Are criminal proceedings available? If so, what are the sanctions?
Criminal action may be brought against those who knowingly violate the trade mark. The penalties are six months to two years in prison and a penalty of 12 to 24 months. Such penalties may be increased to one to four years of prison and a penalty of 12 to 24 months and prohibition on carrying out the profession related to the crime for a period between two to five years if there are special circumstances, eg when the crime is especially serious.
5.3 Are border measures available?
Pursuant to the provisions of Regulation EC 1383/2003, the customs authorities may be requested to intervene to withhold merchandise when they suspect that the merchandise attempting to enter Spain infringes a valid trade mark.
5.4 To what extent are courts willing to grant cross-border or extra-territorial injunctions?
The provisions of the Brussels and Lugano Convention (and the Regulation 44/2001 on jurisdiction and recognition and enforcement of judgments in civil and commercial matters) are applicable in Spain.
With respect to national or international trade marks, to the extent that the validity of the trade mark may be raised as a defence in the proceedings and that pursuant to Art 16.4 of the Brussels Convention such validity is of the exclusive competence of the court of the territory where the trade mark was granted, and considering also the position stated by the European Court of Justice in its decisions in the cases GAT v Luk (C-4/03) and Primus v Roche (C-539/03) it seems unlikely that the Spanish court will grant cross-border or extraterritorial injunctions.
With respect to Community Trade Marks, if the Spanish court were competent under the CTMR to deal with a violation of a Community Trade Mark and it required a cross-border injunction, Art 99.2 of the CTMR provides for the competent court to take such measures that will be effective in the territory of any other Community Trade Mark member state.
5.5 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?
We are not aware of any case where Spanish courts have dealt with the blocking effects of a foreign torpedo action. In our view, however, unless there was a clear abuse of the proceedings the courts would most likely apply the provisions of the Brussels Convention giving effect to such torpedo actions.
5.6 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve trade mark disputes?
Arbitration may be used to resolve trade mark violations and disputes involving licensing agreements or other forms of transactions relating to trade marks. Arbitration is accepted in disputes involving relative grounds of trade mark invalidity, but it is not admissible when the dispute concerns absolute grounds of invalidity, an area reserved to the competence of the courts.
Arbitration may also be used for resolving disputes with owners of earlier trade marks or rights that arise during the proceedings for registration of a trade mark, and the resolution is recognised by the SPTO (those proceedings albeit available have had no practical effect).
No arbitration is contemplated for Community Trade Marks.
6. PROCEDURE IN CIVIL COURTS
6.1 What is the format of trade mark infringement proceedings?
The procedure for trade mark infringement is commenced with a complaint submitted to the Commercial Courts.
When the complaint is admitted, the defendant is given 20 days to answer it. Once the defence against the complaint has been submitted, the court will set a date for the preliminary hearing. At the preliminary hearing: (a) an attempt is made to reach an agreement between the parties; (b) the trial issues formulated by the parties will be examined; (b) the controversial facts will be established; (c) and the evidence that the parties wish to introduce will be proposed and admitted.
The parties may also request (either in the complaint or in the answer to the complaint or in some cases at the preliminary hearing) the judge to appoint a judicial expert to issue a report on the matter subject to controversy. It is usual to request an account expert report in order to assess the compensation claimed by the plaintiff. Further, if the court considers that the evidence proposed by the parties is insufficient it may also suggest the parties that a judicial expert is appointed.
At the preliminary hearing a date is set for the trial. At the trial, the evidence submitted by the parties is examined and each of the parties makes the final conclusions on the facts and legal grounds for its position.
The proceeding finishes with the final judgment, which is subject to appeal before the Appellate Court.
6.2 Are disputed issues decided by a judge or a jury?
The disputed issues are decided by a judge.
6.3 To what extent are documents, affidavits, witnesses and/or (court-appointed or private) experts used? Is it possible to cross-examine witnesses?
Those facts on which the complaint is based must be properly proved (eg trade mark’s ownership, notoriety, utilisation, etc). Together with the complaint and the answer to the complaint, the parties will bring all evidence (both documentary and expert) on which they support their rights.
At the trial the evidence proposed and admitted will be carried out. With respect to witnesses and expert witnesses, they are subject to examination and cross-examination, and the judge himself may formulate the questions as he deems appropriate.
6.4 To what extent is survey evidence used (eg to support acquired distinctiveness, likelihood of confusion)? What level of cost should one expect incur to carry out survey? Are these costs recoverable from the losing party?
Survey evidence is a very important element of proof of distinctiveness, notoriety or likelihood of confusion in trade mark infringement proceedings. As mentioned above, the parties will bring all evidence (including survey, expert opinion, documents, etc) on which they support their rights. Moreover, the parties can ask the court for the designation of a judicial expert in order to develop a survey.
Cost of a survey may vary greatly depending on how it is conducted. The cost of a survey with a target of 300 people may be between €4,000 to €5,000.
Costs of the proceedings including the costs of expert evidence and survey may be recovered as described in question 10.2 below.
6.5 Is evidence obtained for criminal proceedings admissible in civil proceedings, and vice versa?
Evidence obtained in a civil proceeding is admissible in a criminal proceeding and vice versa.
6.6 To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted? If it is not permitted, what other, if any, mechanisms are available for obtaining evidence from an adverse party or from third parties?
No discovery is contemplated by the law.
The Spanish Patent Law, however, provides for ‘inquiries to substantiate facts’, which are applicable to trade marks, and which allow the claimant to request from the court, as preliminary evidence preparatory to the proceeding, that the court orders urgently the verification of the facts that may constitute the trade mark violation, through an inspection carried out by the judge with experts on the premises where the alleged violation may be taking place.
Additionally, the recent Spanish law 19/2006, of 5 June on the enforcement of intellectual property rights, provides for some additional pre-trial evidence in cases of violation of trade marks: ie evidence to collect data on the origin and distribution networks of infringing products, and the request for exhibition of banking, financial, commercial and accounting documents from the person that is deemed to be responsible for the violation. In those cases, the requesting party must offer a bank guarantee against damages that may result from carrying out that evidence.
The carrying out of evidence in advance may also be requested from the court when there is a well founded fear that said evidence may not be carried out subsequently; in any case the complaint must be filed within two months of obtaining the advanced evidence. It is also possible to request preventive measures, prior to bringing the complaint, to preserve an item on which it is intended to carry out some evidence from being lost or destroyed; the measures will cease if the complaint is not filed within 20 days.
6.7 What level of proof is required for establishing infringement or invalidity?
The governing principle is the free assessment of the evidence by the judges provided that the assessment shall not be illogical or contrary to reason or contrary to the evidence.
On the other hand, any contradiction must be resolved so that the doubt falls on the party who carries the burden of proof, and the burden of proof shall fall on the party who petitions the infringement or, as the case may be, the invalidity or cancellation of the trade mark.
6.8 How long do trade mark infringement proceedings typically last? Is it possible to expedite this process?
The duration of legal proceedings depends on the workload of the court involved and the complexity of the issues at stake. In general terms, legal proceedings up to a ruling at first instance can take around 12 months. It is not possible to expedite this process although interim remedies may be requested as described in question 8 below.
6.9 What options, if any, are available to a defendant seeking to delay the proceedings? Under what conditions, if any, can proceedings be stayed? How can a plaintiff counter delaying tactics of defendant?
There are certain situations that involve the suspension of the main proceeding. For example: (a) if the claim is brought before a court which lacks competence, the defendant may raise such issue and results in the suspension of the main proceeding until it is resolved; or (b) in cases where the law allows the defendant to call on a third party to intervene in the proceeding, such a request will be handled in a separate proceeding and the main proceeding is suspended; (c) also when applicable the defendant may raise as a defence that several parties should be joined as defendants and if considered appropriate, the plaintiff will be instructed to file the claim again before the additional parties, and the proceedings will be suspended until they reply.
Also, both parties may by agreement request the suspension of the proceeding to try to settle the case (if the judge deems it appropriate, the proceeding will be suspended).
The law offers the judge the possibility to impose a fine on the party who has acted against the rules of procedural good faith (for example, if the court considers that the defendant has made claims that abuse the law or that involve fraud against procedural law).
7. FINAL REMEDIES
7.1 What remedies are available against a trade mark infringer (final injunction, delivery up or destruction of infringing goods, publication of the decision, recall-order, monetary remedies etc)?
The trade mark owner may seek: (a) cessation of the infringement; (b) indemnification of damages; (c) measures to prevent continuation of the infringement, such as withdrawal from the market of the infringing products and seizure or destruction of the means used for infringement at the infringer’s expense; (d) destruction or, if possible, cession with humanitarian aims, at election of the owner of the trade mark and at the infringer’s expense, of the infringing products, except if the trade mark may be eliminated without affecting the products or if destruction was disproportionate; (e) ownership of the items seized, their value being then deducted from the indemnification of damages; (f) publication of the judgment, at the infringer’s expense.
7.2 To the extent it is possible to obtain a final injunction against future infringement, is it effective against the infringer’s suppliers or customers?
The Spanish Trade Mark Law does not expressly foresee that the owner of a trade mark can obtain a final injunction against future infringements. However, some authors consider that in case the owner of a trade mark seeks cessation of the acts that infringe his rights; such request should include the prohibition of those acts not yet committed when there is a risk of such commission.
If the distributors and customers are not part of the proceedings the ruling will not affect them.
7.3 What monetary remedies are available against a trade mark infringer (reasonable royalty, loss of profits, or some other basis)? Are punitive damages available? If so, under what conditions?
Compensation includes: (a) loss incurred; (b) loss of profits; (c) the loss of reputation of the trade mark caused by the infringer especially by means of a defective execution of the products marked with the trade mark or inadequate presentation of those in the market, and (d) investigation expenses.
Lost profits shall be calculated in accordance with one of the following criteria, at the choice of the injured party: (a) negative consequences, including profits the owner could foreseeably have earned if there had not been the infringement and profits earned by the infringer. In case of moral damage, it should be compensated by the infringer even if economic damages have not been proved; (b) the amount the infringer would have paid to the owner for obtaining a licence. To calculate the damages it will consider notoriety, fame and prestige of the trade mark, and the number and class of the licences granted at that time.
The owner of a trade mark shall be entitled to claim as damage, without any evidence, the amount of one per cent of the turnover made by the infringer with the infringing products or services. Such amount will be higher if the owner proves higher damages.
8. PRELIMINARY RELIEF
8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunctions) and under what conditions?
Any interested party may request the court to adopt preventive measures to ensure the effectiveness of legal action.
The preventive measures that may adopted are those required to ensure the enforceability of the judgment, including for example: (i) cessation; (ii) withholding and storing of infringing items and the means for their production; (iii) security for indemnification of damages; (iv) provisional notations at the registry; and (v) prohibition of immediate threatened actions. It is also possible to adopt all those preventive measures against those intermediate third parties whose services are used by the infringer to infringe trade mark rights, even when the acts of such intermediates do not constitute trade mark infringement.
The measures require the petitioner to evidence fumus boni iuris (that the right is likely to succeed in the proceedings) and periculum in mora (waiting for the end of the proceeding may prevent or make more difficult the effect of the remedy requested).
8.2 Is ex parte relief available, where defendant is given no notice at all? If so, under what conditions?
Preliminary relief may be adopted without hearing the other party (in audita parte) when the petitioner proves that there is urgency or that the hearing may compromise the outcome of the relief requested.
8.3 Is plaintiff entitled to ask for an order that the defendant’s premises are searched and a description of the infringing goods (and the accounting relating thereto) is made in order to establish proof of infringement (saisie-contrefaçon)? If not, what other mechanisms, if any, are available for seizing and preserving evidence for trial?
The ‘inquiries to substantiate facts’ and other measures to preserve evidence are admissible as described in 6.6 above.
8.4 Can the defendant put the validity of a trade mark in issue in preliminary injunction proceedings?
The defendant may raise the issue to discuss whether the petition meets the requirement of fumus boni iuris although the court will not take a decision as to the validity at this stage, and some courts reject consideration of this issue on the basis that the matter should be discussed in the main proceedings and not at this stage
8.5 What is the format of preliminary injunction proceedings?
The plaintiff submits a request for preventive measures with the documents evidencing fulfillment of their requirements. Preventive measures may be requested together with the main complaint; exceptionally they may be requested before (see 8.9 below).
Then at the hearing the parties state their respective positions and carry out the evidence they consider necessary (if approved by the judge). The court then rules on the measures.
8.6 To what extent are documents, affidavits, witnesses, survey evidence, and/or (court-appointed or private) experts used in preliminary injunction proceedings?
In the preliminary relief each one of the parties must make use of all those documents that support their petition and may request the submission of other types of evidence (witnesses, experts, etc) on which to base their right.
8.7 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?
The level of evidence that must be provided is lower than that required to rule on the main proceedings. The judge, on the evidence filed, must reach the conclusion that there is a basis for the action being brought; there must be prima facie evidence supporting the claim.
8.8 How long do preliminary injunction proceedings typically last?
Ordinarily a preliminary injunction may take around three to five months.
8.9 Where a preliminary injunction is granted, is it necessary to start main proceedings to confirm the preliminary injunction?
Preventive measures may be requested before filing the complaint provided that the main proceedings are initiated within 20 days from the granting of such measures. If the proceeding is not instituted within that term, the court will release or revoke the measures, order the petitioner to pay legal costs and will declare the petitioner responsible for the damages caused to the defendant.
9. APPEAL PROCEDURE
9.1 What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?
The decisions of first instance may be appealed before the Appellate Courts.
With respect to the rulings handed down by the Appellate Courts, there is only an extraordinary appeal before the Supreme Court subject to certain rules: (a) for reasons of amount (greater than €150,000); (b) or for those situations where there is ‘cassational interest’ (in general, when there is contradictory case law).
9.2 How long do appeal proceedings typically last?
Duration may vary depending on the court involved. Appeal proceedings can take between 18 and 24 months.
10. LITIGATION COSTS
10.1 What level of cost should one expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and/or appeal proceedings?
The party must pay the fees of attorneys and ‘procuradores’. Unlike the attorneys, the fees of the ‘procuradores’ are fixed and they vary depending on the amount of the litigation involved.
Companies bringing proceedings whose net business volume in the immediately preceding taxation period was greater than five million euros must pay a judicial tax (both in the lower and appellate courts). The amount of this tax is calculated as follows: fixed amount (between €90 and 600) plus variable amount (a rate depending on the amount in dispute).
Also, if a party requests the appointment of a judicial expert, the party who requests it must pay the fees of such expert.
10.2 Are costs recoverable from the losing party?
If a party succeeds on all counts the court will charge the costs to the losing party, unless the court determines that the case presents serious doubts in fact or in law. If only some part of the petitions of a party have been accepted, each party will bear its own costs except if the court considers that one of the parties has litigated in bad faith. With respect to attorney’s fees, the recovery may not always include all the fees borne by one of the parties but only as determined by the court on the basis of the criteria set forth by the applicable bar association.
11. FORTHCOMING LEGISLATION
11.1 What are the important developing and emerging trends in your country’s trade mark law?
The trend is to increase the means of enforcement for trade marks.
12. USEFUL REFERENCES
12.1 Please identify any useful works of reference relating to trade mark law and trade mark litigation in your country including useful websites.
M. Lobato, Comentario a la Ley 17/2001, de marcas, Ed. Civitas, 2002.
C. Fernández-Nóvoa, Tratado sobre derecho de marcas, Ed. Marcial Pons, 2004.
A. Bercovitz Rodríguez-Cano, Comentarios a la Ley de Marcas, Ed. Thomsom-Aranzadi, 2003.
www.oepm.es.
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