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Spain implements the Enforcement Directive

The Spanish Law No. 19/2006 of 5 June 2006, enhancing the means of enforcing intellectual and industrial property rights and laying down the rules of procedure to facilitate the application of various Community regulations, was published on 6 June 2006. The purpose of the Law is to implement the provisions of Directive 2004/48/EC (the so-called ’Enforcement Directive’).

The Law No. 19/2006 of 5 June 2006, enhancing the means of enforcing intellectual and industrial property rights and laying down the rules of procedure to facilitate the application of various Community regulations, was published on 6 June 2006. The purpose of this new Law is to implement the provisions of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (OJ L 157, 30.4.2004).

Measures, procedures, and appeals for enforcing intellectual and industrial property rights in Spain are laid down in the Law on Civil Procedure (Law No. 1/2000 of 7 January 2000); the consolidated version of the Industrial Property Act approved by Royal Legislative Decree No. 1/1996 of 12 April 1996; the Patent Act (Law No. 11/1986 of 20 March 1986); the Trade Mark Act (Law No. 17/2001 of 7 December 2001); and the Industrial Design Protection Act (Law No. 20/2003 of 7 July 2003), apart from the criminal actions provided for in the Criminal Code. This specific legislation has been amended with a view to implementing the so-called ’Enforcement Directive’.

The right to information is regulated by new preliminary procedures and new measures for protecting evidence in the Law on Civil Procedure, Law No. 1/2000.

The main legislative change consists in an amendment of the provisions dealing with damages, which have been brought into line with the Directive, with two standards of calculation. In addition, damages shall expressly include the expenses supported by the right-holder as a result of investigations aimed at collecting evidence of the infringement. Unfortunately, the wording of the provisions dealing with damages in the new law is somewhat unclear compared with the previous wording. On the one hand, a definition of moral prejudice has been included, to coexist with the notion of damage to an industrial property right’s prestige introduced earlier by the 2001 Trade Mark Act. Damage to a right’s prestige was formerly held to be in addition to purely economic losses, whereas under the current wording taken from the Directive, moral prejudice would seem to come in addition to economic loss only where the first standard for calculating damages (concerning the negative economic consequences suffered by the injured party) is relied on, but not where the second standard (having regard to the amount of royalties or license fees) is used. This will be something for the courts to elucidate: indeed, if this strict interpretation were to be followed, instead of extending the protection offered to right-holders as intended, the revision would, paradoxically, be a step backwards compared to the system previously in force.

Another amendment common to the specific legislation is intended to broaden the range of available actions designed to prevent recent infringements, in particular destruction and impoundment of the means and instruments used to commit infringement.

Lastly, the time period for filing the main complaint when interim measures have been requested before the main complaint has been filed, has been shortened to 20 working days, compared with the former time period of two calendar months.

Reported by Ignacio D. Rivera Elzaburu, Spain