Spain: Judicial trend in favor of the protection of IP right holders

04 Mar 2025    3 minute read
Intellectual Property Counterfeit Damages Spain Courts

In brief

The High Court of Alicante, which serves as the seat of the European Union Trademark and Design Court in Spain and is one of the most important courts in the field of intellectual and industrial property in the country, has recently handed down two pivotal decisions in both civil and criminal matters. These rulings are particularly noteworthy as they highlight a trend towards stronger protection of the interests and rights of innovative companies holding IP rights. In particular, both rulings set important precedents in combatting infringers who exploit free competition to benefit from the innovator's reputation, as well as in fighting the counterfeiting of trademarks and protected designs.

Contents

In depth

The civil judgment resolves the classic dispute between an innovative company, a leader in its sector, and a competitor whose new product, placed next to the innovative product on store shelves, mimics the most distinctive elements of the original. This causes consumers to immediately recognize the new product as a "house brand" imitation of the renowned original. In this case, the most characteristic and distinctive element of the original product was part of the trademarks protected by the plaintiff.

The European Union Trademark and Design Court has ruled in favor of the plaintiff, determining that the defendant infringed upon the plaintiff's registered graphic and well-known trademarks. The Court found that the defendant used a sign identical to the plaintiff's to advertise its product and incorporated it into the packaging alongside elements clearly identifiable with those protected by the plaintiff. According to the Court, this will inevitably lead the public to associate the infringing product with the genuine one, which has been protected by IP rights for many years and enjoys high recognition due to the plaintiff's substantial advertising and promotional investment over decades. In summary, the Court concluded that the infringing company, through its unlawful actions, sought to position itself in the market space held by the plaintiff, leveraging the plaintiff's appeal, reputation, and prestige, and thereby capitalizing on the plaintiff's commercial efforts.

For these reasons, the European Union Trade Mark Court has ordered the infringing company to cease selling the product, withdraw from the market—even if this means addressing its customers—destroy the stock of packaging, and compensate the plaintiff for the damages incurred. Moreover, a coercive fine will be imposed if the infringer fails to comply with the order.

In the criminal proceedings, the judgment addresses a case where the convicted parties sold various infringing products, including those that reproduced Registered Community Designs (RCD) protected by the plaintiff, but without incorporating the plaintiff's trademarks. This conduct is part of an increasingly growing trend in the counterfeit market, where infringers sell "semi-finished" counterfeit products. These products are exact copies of the registered designs protected by the rightsholders – typically very famous and recognizable designs – and at the point of sale to the end consumer, patches of the famous registered trademarks are attached to the counterfeit products.

The High Court of Alicante has confirmed that the aforementioned actions are punishable under Spanish criminal law and constitute a crime against industrial property under Article 273 of the Spanish Criminal Code. The High Court sentenced those responsible for commercial acts to prison terms, imposed a fine equivalent to double the profit obtained, ordered the judgment to be published in official newspapers, and mandated the payment of compensation exceeding EUR 100,000.

Particular attention should be given to the following considerations made by the High Court of Alicante:

  • It is not necessary for the defendants to know the specific registration number of the designs they infringe. It is sufficient for them to be aware that these designs are protected by third parties. Professionals in a certain sector cannot evade their responsibility by claiming ignorance of the registered designs due to the absence of a cease and desist letter. This is especially true for well-known designs of recognized prestige, which are undoubtedly familiar to professionals in the relevant sector.
  • Whether or not the consumer is misled as to the genuine character of the product is immaterial. The relevant criminal offenses are not intended to protect the end consumer from deception, but to safeguard the exclusive exploitation of industrial property rights, to which the prestige or commercial reputation of their owner is attached. It is irrelevant whether there is (or not) confusion between the counterfeit product and the genuine one.
  • The High Court confirms that in the case of offenses of infringement of industrial property rights (legal assets protected by Articles 273 and 274 of the Spanish Criminal Code), the damage is inherent and does not require additional proof.

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We want to thank Berta Cabañas, Rut Alemany, and Adriana Sanjurjo, trainees at Baker McKenzie, for their contribution to this legal update.

Contact Information
Cristina Duch
Partner
Barcelona
cristina.duch@bakermckenzie.com
Silvia Saenz de Ormijana
Associate
Barcelona
silvia.saenzdeormijana@bakermckenzie.com

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