SPAIN Law and Practice Contributed by: Marina Gómez, Arochi & Lindner
In addition, compensation may be claimed for the damage caused to the prestige of the trade mark by the infringer, and for the investigation costs incurred in obtaining evidence. In the case of trade mark infringement, in fixing the damages, the following shall be taken into account at the option of the injured party: • the negative economic consequences, includ - ing the profits that the owner would have made through the use of the trade mark had the infringement not taken place or, alterna - tively, the profits that the infringer has made as a result of the infringement; and • a lump sum, including (at least) the amount the infringer would have had to pay to the trade mark owner for the granting of a licence that would have enabled them to use the trade mark in accordance with the law. In the case of non-pecuniary damage, compen - sation will be payable, even if the existence of economic loss is not proven. In addition, among other circumstances, the repu - tation and prestige of the trade mark and the num - ber and types of licences granted at the time the infringement began will be taken into account. In the case of damage to the prestige of the trade mark, the following will also be taken into account: • the circumstances of the infringement; • the seriousness of the injury; and • the degree of dissemination in the market. Finally, where infringement of a trade mark has been judicially declared, the owner of that trade mark will – in any case and without the need for any proof – be entitled to receive, as compensa - tion for damages, 1% of the turnover achieved
by the infringer with the unlawfully marked goods or services. 10.3 Attorneys’ Fees and Costs Each party will pay the costs and expenses of the proceedings incurred at request, as and when they are incurred. The unsuccessful party in the pro - ceedings will pay the costs of the proceedings, which will include lawyer’s and solicitor’s fees. The courts will calculate the court costs, the total amount of which may not exceed one third of the amount of the proceedings, for each of the litigants who has obtained such a ruling. In principle, inestimable claims will be valued at EUR18,000. 10.4 Ex Parte Relief Compensation for the damage caused may be claimed directly from the defendant or claimed in civil proceedings where the law requires notice to be given to the defendant as part of the pro - ceedings. 10.5 Customs Seizures of Counterfeits or Parallel Imports EU legislation provides for a procedure concern - ing goods suspected of infringing intellectual property rights which are, or should be, under customs supervision or subject to customs con - trol within the territory of the EU. The intervention of the customs authorities will consist, among other things, of the detention of goods suspected of infringing certain intellectual property rights until they are destroyed, or until it is determined that they are indeed goods that infringe intellectual property rights. The holder whose industrial or intellectual prop - erty rights are infringed may file an application for action to be taken by the customs authorities.
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