Damages no longer need to be proved

In an unfair competition case (Decision 1217/2004, December 23 2004), the Spanish Supreme Court has extended the in re ipsa doctrine of damages to intellectual property by holding that the mere declaration of infringement automatically entitles IP rights holders to compensation for damages without having to prove the existence of actual damage. The decision seems to put an end to the Supreme Court's ambivalence as to the need to prove damages in IP infringement. The court had previously defended both the in re ipsa doctrine and the need to prove the existence of actual damage.

Here, the Supreme Court stated that an infringement that did not enrich the infringer or damage the claimant seeking to stop the illicit activity would be a rare one, as economic interests are always inherent to commercial activities. The Supreme Court also recognized the possibility of granting moral damages in some cases of trademark infringement.

Another important and recent development in Spanish IP law is the implementation of the amendments to the Spanish Penal Code, which form Law 15 of November 25 2003. The amendments establish some important changes that reinforce the scope of protection available to trademark holders.

One of those changes refers to parallel imports. Up until October 1 2004, genuine products imported into Spain from outside the European Economic Area were considered a civil infringement - although some courts had ruled that because the marks used on parallel imports were genuine, there was no likelihood of confusion and, therefore, no infringement. The penal reform has made parallel imports a criminal offence, irrespective of the genuine character of the mark.

The law has also removed the need for an IP rights holder to file a complaint with the police or public prosecutor for these authorities to take action against alleged infringers. Both the police and prosecutors may now act ex officio against suspected IP crimes.

Pedro Merino, Grau Baylos & Angulo, Madrid