Intellectual Property- Spain On June 7 2006 several amendments to the following pieces of legislation entered into force:
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the Trademark Act;
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the Patent Act;
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the Design Act;
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the Copyright Act; and
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the Civil Procedure Law.
The amendments aim to bring Spanish legislation into line with the EU Enforcement of IP Rights Directive (2004/48/EC). The amendments were introduced into the relevant legislation through Act 19/2006.
One of the most important changes concerns compensation for damages. The rules in this field are now almost identical for all IP rights. Moreover, the right to compensation for damages has been extended to cover both the damage suffered by rights holders and loss of profits. Rights holders may claim compensation for damage suffered as a direct consequence of the infringement and investigation expenses incurred in collecting proof of the infringement. Rights holders may also claim compensation for negative financial consequences (ie, the rights holder's estimated profit had the infringement not occurred and the illicit profit obtained by the infringer) or the royalty that the infringer would have paid for a licence.
In trademark and design infringement cases rights holders may also claim compensation for the damage caused to the reputation of the distinctive sign or design (particularly where the counterfeit products are defective or where the marketing of the products does not correspond to the image that the trademark aims to convey).
Moreover, the law provides for the possibility to claim compensation for moral damage, even where no financial damage has been demonstrated. Moral damages were traditionally linked to copyright infringement; however, the new IP regulation extends the possibility to claim compensation for moral damages to trademark, patent and design infringement.
At first glance the wording of the new legislation suggests that the law emphasizes the punitive character of damages, rather than the traditional compensatory character of damages. How the courts will interpret the scope of the amendments and whether this first impression will be confirmed remain to be seen. In recent years the Spanish courts have favoured rights holders, in that the courts have been flexible in determining the actual existence of damage (ie, by considering that damage had occurred as a result of the infringement).
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