Criminal proceedings in Spain are mainly divided into the following phases: 

1. First instance:

• Pre-trial phase (investigation of the case and collection of evidence).
• Intermediate phase (preparation and discussion on the initiation of the oral trial phase).
• Trial phase (examination of the evidence produced in the oral trial and the decision on the merits). 

2. Second instance:

• appeal; and (if applicable) 
• the enforcement phase (compliance with the decision on the merits).

The duration of the pre-trial phase varies, depending mainly on the proactivity of judges, public prosecutors and counsels, as well as the other legal operators involved. The average duration of the pre-trial phase of a case of standard complexity is usually between two and three years. The course of the remaining phases of the proceedings may vary depending on backlog of the corresponding court but it usually takes (at least) one more year.

Criminal actions in Spain are mostly reserved for cases where the bad faith element is clear and unquestionable, usually associated with counterfeits. The concept of bad faith, from a criminal perspective, is more linked with a clear knowledge of an illicit behaviour.

Spanish criminal law punishes the manufacture, production and importation of counterfeit goods at all levels, including retail and wholesale.

In particular, it provides:

• Proof. Because of the fundamental right to the presumption of innocence and the principle of in dubio pro reo, the burden of proof in criminal proceedings is on the public and private prosecution.
• Penalties. The penalties that may be requested are imprisonment, fines and disqualification from practicing the profession of trader. Their extent will depend on the gravity of the offence that has been committed. However, the penalties can be up to six years’ imprisonment, 36 months’ fine and five years’ special disqualification from practicing the profession related to the offence committed.
• Disposition of the goods at issue. Infringing products are usually seized at the beginning of the procedure and subsequently destroyed in order to prevent their reintroduction on the market.
• Expected involvement of rights holders in the criminal process. Rights holders may appear in the proceedings as private prosecutors. The private prosecution may request the carrying out of investigative measures, question the infringers and witnesses, promote the proceedings, submit its own indictment and request prison sentences, fines, disqualification from the exercise of the profession related to the offence committed and the appropriate civil liability and the destruction of the counterfeit goods.

Spain does not have dedicated or specialised courts to deal with IP matters for criminal proceedings, only for civil proceedings, which are the commercial courts.

The general law applicable to all IP rights (trademarks, industrial designs, patents and copyright) when it comes to civil procedure and enforcement is the Civil Procedural Act 1/2000 of 7 January 2000 (Civil Procedural Act).

In addition, each type of right has their own specific laws:

• Copyright: Royal Decree 1/1996, dated 12 April 1996 (Copyright Act). 
• Patent: Patent Act 24/2015, dated 24 July 2015 (Patent Act).
• Trademark: 
  • Trademark Law 17/2001 (TM Act); 
  • Royal Decree 687/2002, dated 12 July 2002, by virtue of which the Implementing Regulation of the TM Act is enacted (TM Implementing Regulation); 
  • Patent Act, along with the EU Trademark Directive (EU) 2015/2436 (TM Directive); and 
  • Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark (EUTM Regulation). 
• Design: 
  • Spanish Act 20/2003, of 7 July 2003, on Legal Protection of Industrial Design (SDA); and
  • Royal Decree 1937/2004, of 27 September 2004, by virtue of which the Implementing Regulation of the Design Act is enacted (the D Implementing Regulation).

Further, there is the following EU legislation: 

• Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community Designs (CDR); 
• Commission Regulation (EC) No. 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No. 6/2002 on Community Designs (Community Designs Implementing Regulation);
• Commission Regulation (EC) No. 2246/2002 of 16 December 2002 on the fees payable to the Office for Harmonisation in the Internal Market (Trademarks and Designs) in respect of the registration of Community designs (Fees Regulation); and 
• Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs.

Spanish courts have exclusive jurisdiction on the revocation and invalidity of national trademark, patent or industrial design registrations as well as on IP infringement proceedings. However, when any of such legal actions also concern a community right then the jurisdiction lies with the European Courts of Alicante, as specialised tribunals. 

Concerning trademarks and pursuant to the TM Directive, a recent amendment of the national TM Act has granted the SPTO jurisdiction over revocation and invalidity proceedings of Spanish trademarks. Such amendment entered into force on 14 January 2023. As from that date, all invalidity and revocation proceedings must be brought before the SPTO, but the national courts retain jurisdiction over invalidity and revocation actions exercised as counterclaims in infringement proceedings or directly accumulated in conjunction with an infringement trademarks or design action.

In order to utilise available civil remedies, rights holders can best protect themselves and their intellectual properties through the registration of the corresponding rights before the SPTO or EUIPO. 

The SPTO is the relevant authority concerning the prosecution and registration of national designs, patents and trademarks in Spain. It is the authority responsible for receiving, examining and granting such rights.

Trademarks and Designs can also be registered before the European Union Intellectual Property Office (EUIPO). The EUIPO is the relevant authority concerning community designs and trademarks with a coverage in all 27 EU member states. These are valid and enforceable in Spain.

The copyrights do not need registration to be enforceable. However, in terms of evidence (mainly for legal proceedings) it is easier if the copyright has been registered before the Spanish Intellectual Property Registry.

In general, the available remedies in the case of infringements to IP rights are as follows: 

• Issuance of an injunction requesting the cessation of the infringing conduct.
• Compensation for the damages suffered and partial recovery of legal costs.
• Adoption of the measures necessary to avoid the continuation of the infringing conduct and, in particular, the withdrawal from the market of the infringing products.
• Destruction of the infringing products.
• Publication of the court decision.

Both preliminary injunctions and final injunctions are available in Spain:

• Preliminary injunctions are usually applied for together with the main action. However, they can also be requested before filing the claim based on the urgency or necessity of their adoption. In these cases, such measures shall lapse if the applicant does not submit the main claim within the following 20 days. They can be granted without hearing the opposing party (ex parte) if the applicant provides evidence of the urgency of their adoption, or evidence that proves that if a hearing is held, the object of the preliminary measure may disappear. In addition, they can be exceptionally requested after filing the main claim or while the appeal is still pending, provided that the application is based on facts and circumstances which justify the submission of such request at a later stage.
• Final injunctions are granted if the court decides that the conduct of the defendant amounts to trademark infringement.

The rights holder can claim compensation for the damages or loss of profits suffered. They can choose to calculate the compensation based on the benefit obtained by the infringer or on the royalties the claimant and owner of the right would have had to pay for using the rights lawfully.

The rights holder could claim a compensation of 1% of the infringer’s total revenue for the sale of infringing goods, only proving the infringement of their rights with no need to prove damages. 

Moral damages are also available.

Grey market products which do not come from within the EU can be legally persecuted, albeit in the civil sphere. In Spain, it is difficult for this type of seller to be held criminally liable.

The Unfair Competition law deals with this topic as well, from an advertising perspective. Article 11 highlights that the imitation of services and products of third parties is free, unless these products or services are protected under IP rights. 

However, the imitation of any service/product of a third party shall be considered unfair when it is considered to generate an association, by consumers, to another service or product or involves an improper use of the reputation or effort of others. 

Article 20 regulates as unfair deceptive practices those that generate confusion for consumers or a risk of association, regarding any product, service, trademark, commercial name … whenever these practices can affect the consumer’s economic behaviour. Article 25 regulates as unfair the commercialisation of similar goods to others being commercialised by a different person in business that induce the consumer through confusion about the origin of the product. 

Criminal proceedings

The main advantage of criminal proceedings is the almost immediate seizure of the counterfeited product by the police and, in most cases, without previously informing the infringer. 

When the priority is to clean up the market, this is undoubtedly the most convenient way. However, it has relevant disadvantages, the main one being the length of the proceedings, which can take two to three years, depending on the court in which the case falls (particularly complex cases could take four to five years). Moreover, as it is a criminal proceeding, bad faith (prior knowledge of the trademark by the infringer) must be accredited. 

The most important obstacles that may result in a judgment of acquittal are:

• Requirement of proof of bad faith.
• Prescription of the procedure due to the length of the same, even if it is attributable to the public administration itself.
• Breach of the chain of custody of the products.

The criminal courts do not specialise in these types of cases. Furthermore, they handle cases of very different natures, such as murders, rapes or tax evasion procedures. This leads to the fact that once the seizure of the products has been carried out, the efficient prosecution of IP crimes become secondary to many courts.

Civil proceedings

The great advantage to civil proceedings is that they are much faster than criminal proceedings and they are conducted by judges who specialise in industrial property matters. The first instance has a duration of approximately 12 to 18 months, and it is much easier to recover damages if the infringer is solvent. Finally, it is not necessary to prove bad faith, but only to assess whether there is a risk of confusion in order to be convicted.

By contrast, the retention of the product must be requested through precautionary measures that must be agreed by the court. This may take a few months depending on the court and we already know that, depending on the profile of the offender by the time the destruction is agreed, it is possible that no product is left.

In short

Based on our experience we advise to act in one way or another based on the client’s priority for each case. If the damages are of great importance for the rights holder and the infringer is financially sound, we might favour civil prosecution. If the priority or main goal lies with the immediate seizure of goods and/or with punishing the offender as a deterrent effect, then criminal actions might be preferable.

Counterfeiters are constantly improving and evolving. In some cases, they can be highly sophisticated and well-organised operations. With the pandemic, their business grew faster and became more widespread than ever before. 

Counterfeiters have become harder to find as they operate through larger webs. For example, a single organisation might operate through dozens of different online sellers, located in various different countries. Also, they use other methods to disguise the size of the operation and diversify risks, such as, for example, small consignments, so even if some of these are located or seized, the impact to the organisation is minimal. Brands are not always keen to take action in all cases due to the high costs of the actions and the little gain obtained.

One way to address these new strategies is to spend a substantial amount on the budget destined for fighting piracy in proactive investigations and intelligence development. With information at hand, better decisions can be made and the limited resources available used in effective ways. A well-crafted, balanced and holistic approach is necessary, as usually one-off punches or uncoordinated actions lead nowhere. Also, an approach where entire sectors come together and fund actions jointly against the common enemy is being utilised more and more by companies, with great results. 

In general terms, online counterfeit activity is constantly growing while, in comparison, brick-and-mortar sales are becoming less relevant. Within the online realm, the main shift has been the increase of the sale of counterfeits through social networking sites, and we expect this trend to continue to grow in the coming years. Brands should focus their attentions on this kind of outlet. 

Live shopping via video streams has also become a problem for brands trying to fight counterfeits. No technological tools have yet been developed to target this problem effectively and offenders are taking advantage of that fact. 

“Dupe culture” has contributed to the rise in counterfeit goods being sold. It is a by-product of the counterfeit industry in that it was born with the same goal of taking unfair advantage of the investment of original brands in developing quality products, but with the added difficulty for brands that they are much harder to target. Dupes do not infringe on obvious trademarks. They do not pretend to be the real thing. They simply take pride in offering an imitation of a trendy product for a fraction of the price. Further, the idea has spread throughout society that brands are ripping off consumers, so it is therefore acceptable to buy fakes in protest. This makes it hard for brands to implement their enforcement strategies as a large portion of their success lies in educating consumers and making them aware of all the problems associated with buying illegal goods. 

Certain provisions seek to make the fight against counterfeits easier for companies and consumers and, conversely, harder for infringers and intermediaries to avoid responsibility. On 12 March 2024, the European Parliament approved the new Directive on liability for defective products (Product Liability Directive). Entering into force 20 days after its publication, member states have 24 months to transpose the Directive into national law. This Directive leads to a substantial tightening of product liability for companies compared to the previous one, extends the scope of possible liable parties and adjusts the provisions to global supply chains. It provides a gradual system of possible liable parties, which has a direct impact on the fight against counterfeits.

Firstly, manufacturers and “quasi”-manufacturers (e.g. by putting one’s name or trademark on the product) will remain liable for a product defect. In addition, manufacturers of a defective component (where that component has been integrated into or interconnected with the product) are also liable. Any natural person or legal entity that significantly modifies a product that has already been placed on the market or put into service are now also considered to be manufacturers.

If the manufacturer is based outside the European Union, not only — as at present — the importer of the defective product or component, but also the authorised representative of the manufacturer can be held liable. If neither the importer nor the authorised representative of the manufacturer is established in the EU, a fulfilment service provider (warehousing, packaging, addressing and dispatching services) may also be held liable on a subsidiary basis.

Finally, if the manufacturer, importer, authorised representative of the manufacturer and fulfilment service provider cannot be identified in the European Union, under certain conditions, distributors of the defective product and online platform providers may also be liable.

Regarding rights holders who want to take a more financially focused approach against domestic counterfeit sellers and networks, not much progress has been made. The tools continue to be the same as in previous years. A special focus needs to be placed on the online arena, which can be handled quite efficiently with the tools currently available for brands. However, physical retail locations should not be ignored by companies as counterfeiters know that nowadays companies mostly allocate their budgets to the online fight and have realised that selling through brick-and-mortar stores might be a good way to stay under the radar.

Global sites like Amazon, eBay and Etsy are active in Spain and are a must when considering the design of a comprehensive anti-counterfeiting strategy in the country. However, there are a few other country-specific sites that are very sizeable and relevant in Spain and are also critical when considering a comprehensive approach. Those are mainly Wallapop (www.wallapop.com) and Milanuncios (www.milanuncios.com). In these two marketplaces, millions of counterfeit products are sold and their take-down methodologies are not as sophisticated and up to date as their global counterparts. 

The Intellectual Property law contains a whole chapter regarding the topic of technological measures (Articles 196–198). Under this regulation the owners of IP rights can exercise actions against those who, knowingly or having reasonable grounds to know, circumvent any effective technological measure.

In addition, the same actions can be exercised against those who manufacture, import, distribute, sell, rent, advertise for sale or rent or own for commercial purposes any device, product, or component, as well as against those who provide any service that, with respect to any effective technological measure:

• is the subject of promotion, advertising, or marketing with the purpose of circumventing protection; 
• has only a limited commercial purpose or use outside the circumvention of protection; or
• is principally designed, produced, adapted, or carried out for the purpose of enabling or facilitating circumvention of protection.

Article 16 of the Information Society Services and Electronic Commerce Law regulates that third parties who are service providers won’t be responsible for illicit actions when:

• they have no actual knowledge that the activity or information stored is unlawful or that it damages the property or rights of a third party liable to compensation; or
• if they have or gain this knowledge, they act diligently to remove the products or make access to them impossible.

However, the exemption from liability won’t apply when the recipient of the service acts under the direction, authority, or control of its provider (the third party).

Spain does not have specific legislation addressing the online sale of counterfeit goods.

Steps taken when faced with an online infringer that also has a physical storefront depends on the specific characteristics of the case at hand. The enforcement authorities have specific departments to investigate offline and online infringements. 

They would normally show interest and get involved, but there are certain factors that would increase the degree of priority or importance from the point of view of enforcement authorities, such as the size/relevance of the target, the connection of the infringement with greater illicit networks (mafias, etc.), the amount of products involved or, in particular, the affectation of public safety (industries such as toys, foodstuffs, cosmetics, tobacco or pharma, for example, have an edge in this respect).

Regarding the Spanish country code top-level domain (ccTLD) “.es”, our country has voluntarily accepted the applicability of a Uniform Domain-Name Dispute-Resolution Policy (UDRP) -type procedure but with some modifications. The dispute resolution policy is a variation of the UDRP procedure regulated by Internet Corporation for Assigned Names and Numbers (ICANN). 

The relevant differences between the standard UDRP and the .ES Policies are as follows: 

The number of fraudulent websites is increasing. They are incredibly easy to set up and, once one is taken down, new ones pop up immediately. 

In certain cases we have seen that infringers recreate the essence of an original web page on a country-specific domain, thus making it look genuine. In other cases, in order to attract potential victims, we have also seen that infringers add terms such as “outlet” or “cheap”, indicating to potential customers that there are offers on the products and discouraging them from assessing the originality of the products.

It is possible that the extension of the list of TLDs has created and will continue to create more opportunities for the development of fake websites and online stores. The reality is that companies cannot be expected to own thousands of possible combinations under different TLDs and CC domains as their budgets cannot allow it. It is those gaps that infringers are using to create sites that mimic the originals and from which successful businesses selling fakes are run. 

In Spain, the sale of counterfeits takes place mainly through the Spanish platforms Milanuncios and Wallapop. 

However, the trend for profiles on Instagram, Facebook and Twitter selling counterfeit products has existed for years now and it only continues to grow exponentially as new social media sites emerge and the role of said sites keeps expanding, in particular in relation to e-commerce and trend-setting (which are of course very closely connected). 

In any case, bad actors keep finding creative ways to avoid detection or effective prosecution. To begin with, they create multiple profiles on social media sites from where they offer and sell counterfeit items, in many cases not providing accurate and truthful information about them. They also avoid using payment methods that would easily expose them.

In March 2024, the European Union passed the Artificial Intelligence Act. This Act has already entered into force and is applicable in Spain, although a gradual adoption of its provisions is foreseen. 

The Act regulates AI systems on the basis of the risks that AI could pose to the fundamental rights of citizens. To do so, it analyses their functions and purposes. The Act establishes four levels of risk: (i) minimal risk; (ii) high risk: before being marketed, they will be subject to a conformity assessment; (iii) inadmissible risk: those that violate fundamental rights and, consequently, are prohibited (for example, an AI that performs emotion recognition in the workplace or educational institution, for no justifiable reason); and (iv) specific risk for transparency: when there is a risk of manipulation specific obligations are imposed (for example, users must be aware that they are interacting with a conversational robot). Fines are also envisaged for those AI systems that do not comply with the requirements of the Act. 

Given its recent adoption, there is no case law relating to the application of the Act by Spanish Courts.

No criteria affecting lawyers have been adopted as yet in respect of the use of AI in Spain. 

However, we do see the progressive increase of Legal Tech tools, which facilitate and complement the work of lawyers. 

Several topics deriving from the application of AI in the legal field are very heavily discussed in legal forums these days. One of them, with direct impact in the IP world, is the ownership of works produced by AI. 

No modifications have been made as yet regarding the impact of AI on existing privacy legislation. Consequently, the existing contractual and non-contractual civil liability systems will apply in case of damage caused by AI systems. 

It should be noted that the European Union is drafting a Directive on liability for artificial intelligence. The purpose is to make it easier for individuals to seek compensation for damages caused by high-risk AI systems, to regulate effective means of identifying potentially liable persons and to obtain evidence relevant to the claim for damages. 

There have been cases of deepfakes in Spain, used to falsify some of our clients’ profiles on social media platforms. 

It is important to note that in October 2023 a draft law that regulates deepfakes was submitted to Congress (under No. 122/000011). It establishes, among other points, the use of deepfakes as a criminal offence and the possibility of requiring the removal of deepfakes as a specific precautionary measure in civil procedure. This shows that Spain recognises the problem and is establishing measures for its regulation. 

In April 2023 Regulation (EU) 2023/1114 on markets in crypto-assets (MiCA) was approved. The Regulation is directly applicable in Spain. Its entry into force has been organised in two stages, during 2024 and 2025. 

The Regulation regulates the issuance, offer to the public and admission to trading of cryptoassets, as well as the provision of services related to them. At the same time, it establishes obligations for service providers, which must be previously registered, as well as have management bodies, insurance policies and clear procedures for the resolution of customer disputes. Likewise, the advertising of cryptoassets is limited to the prior publication of a White Book, which must contain the main information on the characteristics and underlying technology of the currency.

In Spain, there are laws that protect IP rights holders against the illegal reproduction of their content via streaming. Some of the main ones are: (i) Law 1/2000, of 7 January, on Civil Procedure; (ii) Royal Decree of 14 September 1882 approving the Code of Criminal Procedure; (iii) Legislative Decree 1/1996, of 12 April 1996, approving the revised text of the Intellectual Property Law, regularising, clarifying and harmonising the legal provisions in force on the matter; and (iv) Law 34/2002, of 11 July, on Information Society Services and Electronic Commerce. 

Site blocking orders are available in Spain. There are two ways to request them: (i) through a judicial proceeding, where precautionary measures or cease of use actions can be requested; or (ii) through an administrative proceeding, in which the safeguarding of rights in the digital environment is required to the Second Section of the Intellectual Property Commission. 

The most recognised case is the enforcement carried out by LaLiga, the entity managing professional soccer competitions in Spain, against websites that illegally broadcast soccer matches. LaLiga has been able to: (i) block websites, even by means of “dynamic blocking” precautionary measures, which implies identifying new URLs, domains and/or IP addresses, without the need to go to court; (ii) block bars/restaurants that broadcast soccer matches from illegal pages; and (iii) in a first instance decision that is not yet final (it was issued in March 2024), they were granted the possibility to require internet access operators to share the IP address of users who shared the content illegally (it remains to be seen how the case will develop as a Supreme Court ruling dated 3 October 2014 established that the IP must be considered as personal data and, therefore, access to it is shielded).

Everything that is visible to an infringer is a target for copying and falsifying. Hence, infringers also copy QR codes. The problem is that if an original QR code is simply copied, it will also point to the web page of the legitimate brand, therefore leading consumers to think the product in question is original. That is why many rights holders are noticing an increase in this kind of brand abuse. 

However, mechanisms exist that prohibit copying a code several times; for example, rendering the code unreadable after a third copy. Brand owners are constantly developing technical features to limit the impact that the abuse of this technology can have on them.

Spanish border enforcement measures are based on the Law on mutual recognition of criminal decisions in the European Union (23/2014 of 20 November 2014) and Regulation (EU) 608/2013 of 12 June 2013 on the enforcement of IP rights by customs authorities. By virtue of this regulation, very effective and cost-efficient seizures can be obtained at the time of entry of counterfeit goods at Customs, not just in Spain, but of any EU member state. Destruction of such infringing goods can be ordered and obtained without the need for filing any kind of legal measure, provided the importer does not object to such seizure and destruction simplified request. Quite often, said destruction requests go unopposed, making the system very useful and efficient for IPR holders.

Rights holders must register their IP rights with Customs. Once that happens, Customs would automatically detect and inform the rights holder if any potentially infringing product is detected at any EU border. Upon confirmation of the counterfeit nature of any given products entering the country and a specific request for destruction by the rights holder, Customs would inform the importer and proceed to order the destruction in case the request goes unopposed. The only costs incurred by rights holders would be those associated with the destruction of the products. 

The system is very well organised by the Tax and Customs Administration and works very well at the Spanish level. Communication and coordination between the different authorities is very efficient. It is a very well-structured procedure from beginning (seizure) to end (destruction). This system can only be activated if the rights holder has registered his IP rights with customs previously.

The main benefits are its efficiency in terms both of cost and time. Its main downside is that in case the importer opposes the simplified destruction procedure, then a legal action must be brought by the rights holder in order for the products to remain seized. 

The system has been essentially the same since its implementation in 2013 and we are not aware of upcoming substantive modifications.

Border enforcement may lead into civil or criminal proceedings if the simplified destruction goes unopposed.

Customs officials and police authorities usually work very closely in the fight against counterfeits (intelligence sharing, joint training, and so on). 

The information provided by Customs officials is substantive enough to allow brand owners to make the necessary checks and provide answers confirming (or not) the counterfeit nature of products entering the country. In particular, the names of importers and exporters are provided, together with the place (city, port) of exportation and importation, number of wares and pictures of same. This allows rights holders to initiate investigations or judicial proceedings against infringers, in addition to completing the simplified destruction process at Customs.

Remedies against importers caught importing counterfeit products would be the seizure and subsequent destruction of the imported counterfeit goods unless the infringer files an objection. The time for lodging a complaint is limited to 10 days and can be extended for another 10 days.

It is possible to train law enforcement and Customs on counterfeiting issues and product identification in Spain. Most law firms offer this service because brands are very often involved and welcome at these trainings by authorities who are quite eager to improve their knowledge on the affected brands/products and their ability to react effectively to the importation of counterfeits. 

The COVID-19 pandemic has not impacted the regime beyond the slowing down of the courts following the pandemic-related cessation of court activity from March to June 2020. 

However, the amount of counterfeit goods coming into Spain and other EU countries has increased due to the pandemic, particularly through online sales.

The main trend was the increased use of online tools. Under confinement, consumers turned to online marketplaces to satisfy their needs. This fuelled a significant growth in the online supply of counterfeits. The sharp increase in counterfeits affected not only medicines and personal protective equipment, but also other products such as luxury products, consumer goods, etc.

Spain does not have a national IP law enforcement coordination body or organisation with these powers.

6.1 Should I pursue an infringer through criminal or civil actions, or both? 

Unfortunately, the answer to this question is not straightforward and it depends on the various characteristics of the case, the infringer and/or the infringement. The type of brand, and its positioning in the market as well as its overall goal, also play a major part in deciding what the ideal course of action should be. 

6.2 Would I be able to claim (and obtain) compensation if I go the civil or criminal route? 

The answer is yes in both cases, but there are many caveats and particularities to be kept in mind. Again, careful consideration should be taken of all applicable factors in order to choose the most appropriate option for the client.

6.3 What if it is a repeat offender? Would the recommendation change? 

In this case criminal actions tend to be a more attractive alternative as the prospects of the infringer getting effective jail time increase significantly. That will be in itself attractive for many brands and also serve as an incentive to settle (and pay higher sums) for the infringer. 

There are no further relevant updates in Spain which have not already been covered in this chapter.

OEPM/SPTO (Oficina española de patentes y marcas/Spanish Patent and Trademark Office)

Main authority in Spain entrusted with the registration and protection of trademarks, patents, industrial designs and other IP rights (www.oepm.es).

EUIPO (European Union Intellectual Property Office)

Manages the registration and protection of EU trademarks and designs, in all member countries of the EU under a single registration. It plays a crucial role at the European level and its decisions have a direct impact in Spain (www.europa.eu).

WIPO (World Intellectual Property Organisation)

The WIPO is relevant for the protection of international trademarks through the Madrid System; although not specific for Spain, Spain is a member and participates in the Madrid System (www.wipo.int).

COAPI (Association of Industrial Property Agents)

Brings together all IP registered agents in Spain, professionals who advise on and manage the protection of IP rights (www.coapi.org).

ANDEMA (Association for the Defence of Trademarks)

Works in the protection and defence of Spanish trademarks, promoting awareness and the fight against counterfeiting (www.andema.org).

AMRE (Spanish Association of Reputed Brands)

Promotes and defends the interests of well-known and reputed Spanish brands at an international level, improving the protection and valuation of these brands in global markets (www.marcasrenombradas.com).

AUTOCONTROL (Association for the Self-Regulation of Commercial Communication)

Although more focused on advertising, AUTOCONTROL plays a key role in trademark protection by ensuring that advertising programs and campaigns comply with regulations and do not infringe IP rights (www.autocontrol.es).

FIAB (Spanish Federation of Food and Drink Industries)

Represents the interests of companies in the food and beverage sector, including the protection of their trademarks and the fight against counterfeiting (www.fiab.es). 

CEOE (Spanish Confederation of Business Organisations)

Representative organisation for Spanish companies, defending their interests and providing a forum for dialogue between shareholders, government and other interested parties. Through its IP Commission, the CEOE works to promote and defend IP rights of Spanish companies (www.ceoe.es/es). 

AEBRAND (Spanish Association of Branding Companies)

Brings together companies engaged in branding and focuses on the promotion and protection of trademarks as essential assets for companies (www.aebrand.org).

ANDEMAR (National Association for the Defence of the Registered Trademark)

Focused on trademark defence and the fight against unfair competition and counterfeiting at both a national and international level (www.andemar.es).

ADEPI (Association for the Development of Intellectual Property)

Encompasses different organisations and professionals in the IP field, including specialised lawyers, trademark and copyright experts, and company representatives. Working for the promotion and protection of IP rights in Spain (www.adepi.net).

INCIBE (National Institute of Cybersecurity)

Official entity in charge of the prevention of fraud, fraudulent websites and cybercrime (www.incibe.es).

Guardia Civil y Policía Nacional/Civil Guard and National Police

As part of the state security forces, these two Spanish bodies actively participate in the fight against counterfeiting and unauthorised use of trademarks, co-operating with other entities and carrying out operations to prevent the infringement of IP rights (www.policia.es and www.guardiacivil.es).

Chambers of Commerce

Although Chambers of Commerce are not primarily organisations dedicated to trademark protection, they do play a complementary role in providing advisory and support services to businesses in this area, especially in the broader context of promoting trade and business competitiveness. They can provide IP-related services and resources, including trademarks, especially in terms of business counselling and foreign trade promotion (www.camara.es).

AIPPI España (Spanish Association of Lawyers Specialising in Intellectual and Industrial Property)

Being part of the international AIPPI, this association brings together lawyers and professionals working on the protection of IP rights with a broad focus on the protection of IP rights (www.aippi.es).

ECTA (European Communities Trademark Association)

Acts as a forum for professionals focused mainly on the field of trademarks and designs in Europe. A major objective is to promote an efficient and coherent system throughout Europe (www.ecta.org). 

MARQUES (Association of European Trademark Owners)

Association representing trademark owners and IP professionals, focused on the European context. The mission is to promote and improve the protection and management of trademarks in Europe and elsewhere, as well as to foster collaboration and expertise exchange among its members (www.marques.org).

INTA (International Trademark Association)

Global non-profit organisation that brings together trademark owners, trademark law professionals and other IP stakeholders around the world (www.inta.org).

In Spain, most of both public and private organisations play crucial roles in the realm of IP and, regarding brand protection in particular, in different ways. These include, among others, the registration and protection of IP rights, enforcement procedures against infringement, and offering educational seminars and training programs. These institutions work collaboratively to ensure strong defence mechanisms for IP, providing comprehensive support to rights holders and fostering an environment that promotes innovation and fair competition.

Entities such as ANDEMA or the various Chambers of Commerce issue certificates of reputation for trademarks that substantiate their claim before these entities with appropriate evidence. The validity and significance of these certificates are highly regarded by the SPTO, the EUIPO or the courts when assessing the reputation of a sign. 

Entities like MARQUES or ECTA act as amicus curiae in cutting-edge legal proceedings and may offer arguments, provide specialised information, or share viewpoints that could benefit brand owners and ultimately the court when issuing decisions on matters related to IP. Although they are not direct parties to the litigation, their involvement can be essential for the court proceedings and ensuring fairness and justice in the outcome of the litigation.

INCIBE is an official entity responsible for cybercrimes, to which the existence of fraudulent websites can be reported. It has a specific section called the “Internet User Security Office” (OSI), which is dedicated to helping users protect themselves against online threats, including the option to report websites used to commit fraud (including the sale of counterfeits). 

Concerning EUIPO, their Enforcement Authority is responsible for ensuring the enforcement of IP rights across the EU. This includes overseeing and co-ordinating actions to combat counterfeiting, piracy, and other infringements of trademarks and designs. The authority works closely with national Customs and other enforcement authorities, rights holders, and other stakeholders to enforce IP rights effectively and protect businesses from infringement.

These are some of the specific examples of entities helping with the awareness and enforcement of IP in Spain.