SPAIN Law and Practice Contributed by: Marina Gómez, Arochi & Lindner
• the attribution of ownership of the seized goods, materials and means, where possible; and • the publication of the judgment at the expense of the convicted party by means of notices and notifications to the persons concerned. For their part, the copyright holder may request the cessation of the infringer’s unlawful activity and demand compensation for the material and moral damages caused, and may request the publication or dissemination, in whole or in part, of the court or arbitration decision in the media at the expense of the infringer. In accordance with the provisions of Article 34 of the TM Act, an infringement will be constituted for use in the course of trade, without the con - sent of the proprietor: • of a sign which is identical to the trade mark and is used for goods or services identical to those for which the trade mark is registered; • of a sign which is identical or similar to the trade mark and which is used for goods or services identical or similar to the goods or services for which the trade mark is regis - tered, if there is a likelihood of confusion on the part of the public (the likelihood of confu - sion includes the likelihood of association between the sign and the trade mark); or • where the sign is identical or similar to the trade mark (regardless of whether or not it is used for goods or services which are identical or similar to those for which the trade mark is registered), when the trade mark enjoys a reputation in Spain and the use of the sign without due cause takes unfair advantage of the distinctive character or the repute of the trade mark, or where such use is detrimental to such distinctive character or repute.
Furthermore, copyright infringement will exist when a protected work is used (reproduced, translated, adapted, exhibited or performed in public, distributed, broadcast, or communicated to the public) without the permission of the right- holder and when such use is not included within the limits of copyright. 7.3 Factors in Determining Infringement See 7.2 Legal Claims for Infringement Lawsuits and Their Standards . 7.4 Prerequisites and Restrictions to Filing a Lawsuit The law does not expressly provide for a certain requirement to be fulfilled prior to the filing of the lawsuit. However, it is advisable to send a cease-and-desist letter to the alleged infringer, urging them to cease their conduct and to pay compensation for the damage caused. 7.5 Lawsuit Procedure The courts competent to hear trade mark and copyright infringement disputes are the com - mercial courts. In the second instance, the pro - vincial courts have jurisdiction; and in the third instance, the Supreme Court has jurisdiction. The parties must be represented by a lawyer and a solicitor in the proceedings. Foreign owners may file infringement suits provided they have a valid registration in Spain (ie, trade mark in Spain or trade mark in the EU), or a well-known trade mark. The claim must be accompanied by the docu - ments and evidence supporting the claims; as such, costs may be incurred prior to filing for the preparation of market studies or expert studies, among others.
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