SPAIN Law and Practice Contributed by: Marina Gómez, Arochi & Lindner
7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants An alleged infringer may bring a denial action or a boast action in which they ask a court to rule on the existence or non-existence of an infringe - ment. Article 61 bis 6 of the TM Act states that a denial action may not be brought together with an action for nullity or revocation. 7.7 Small Claims In Spain, small trade mark and copyright claims (under EUR2,000) can be resolved through the small claims procedure (juicio verbal) in civil courts, governed by the Civil Procedure Law. Cases are heard by first instance courts or com - mercial courts, depending on the issue. The SPTO collaborates with the World Intellec - tual Property Organization (WIPO) Arbitration and Mediation Center to offer mediation for intel - lectual property disputes, including trade marks and copyrights. While the SPTO does not pro - vide mediation directly, it supports the process by facilitating access to WIPO’s services, includ - ing logistical support such as meeting spaces. Mediation is voluntary, non-binding, and led by a neutral mediator specialising in intellectual prop - erty. The process is governed by Law 5/2012 on Mediation in Civil and Commercial Matters and WIPO regulations, ensuring confidentiality and cost-effectiveness. 7.8 Effect of Trade Mark and Copyright Office Decisions The SPTO is not competent to rule on trade mark infringement disputes. For these cases, it is nec - essary to go to court.
7.9 Counterfeiting and Bootlegging The incorporation or reproduction of the ele - ments of a trade mark, without the consent of the owner, on protected goods or services in a form identical to or indistinguishable from the original will be considered counterfeiting. An infringer may be civilly and/or criminally lia - ble depending on the activity carried out. There are different ways of combating counterfeiting through civil, criminal or customs proceedings. Furthermore, smuggling is generally considered to be the importation or exportation of goods without presenting them for clearance at cus - toms offices and without paying the correspond - ing taxes, as well as the trading, possession or circulation of non-EU goods lawfully traded without complying with the legally established requirements. It should be noted that the crime of smuggling is not typified in the Penal Code but in the Organic Law 12/1995, of 12 Decem - ber, on the repression of smuggling. 8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings The Civil Procedure Act contains special pro - visions applicable to trade mark and copyright proceedings. In Spain, there are several commercial courts with exclusive jurisdiction to hear industrial and intellectual property disputes. Once proceedings have been initiated, the parties must provide evi - dence to support their claims in accordance with the rules on the burden of proof. The case will be decided by the judge.
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