RESTRICTEDWORLD TRADE
ORGANIZATIONIP/Q4/ESP/1
21 September 1998
(98-3611)
Council for Trade-Related Aspects of
Intellectual Property RightsOriginal:  Spanish
REVIEW OF LEGISLATION ON ENFORCEMENT
SPAIN1
The present document reproduces the introductory statement made by the Delegation of Spain in
the review of its legislation on enforcement at the Council's meeting of 17 to 21 November 1997 2,
together with the questions put to it and the responses given.
_______________
INTRODUCTORY STATEMENT
Bearing in mind the spirit and letter of the TRIPS Agreement, it may be concluded that the
Spanish system already adequately protects the needs to be met by legislation which guarantees
intellectual property rights, by endeavouring in its various aspects to lay down rules which will properly
safeguard the important interests at stake.  To this end it introduces mechanisms for the recognition ofrights, for urgent precautionary protection against actual or imminent infringements, for redress of, and
compensation for, damage caused and for penalization of infringing conduct constituting a criminal
offence.
The Spanish legal system is closely related to the systems prevailing in European countries with
Latin roots, so that many of the statements made at this meeting by the delegations of other countries in
clear geographical and cultural proximity to Spain, such as France, Italy and Portugal, specifically asregards the basic principles of civil and criminal procedures in those States, can be regarded as also
applying to the Spanish system.  In order not to waste delegations' time, we therefore associate ourselves
with those statements.
The specific features of Spanish regulations on the enforcement of intellectual property rights in
the broad sense are treated at length in the document replying to the Check-List of Issues on Enforcement
of TRIPS
3 and in the replies to the interesting and detailed questions concerning our system put by the
representatives of the United States, Japan and New Zealand.
In our replies we have endeavoured to explain - with all the attention to detail which the
questioners deserve - the specific national characteristics of Spanish administrative and judicial, civil and
criminal, general and particular procedures and remedies for the protection of such rights.
We have to make a general reference to the foregoing documents in order to support the
assertions with which we began the present statement.  Briefly, however, the following points may besingled out:
                                                     
1 As regards laws and regulations relevant to the area under review and notified by Spain under
Article 63.2 of the Agreement, reference is made to documents IP/N/1/ESP/1/Rev.1/Add.1 and IP/N/6/ESP/1.
2 The minutes of the meeting were circulated as document IP/C/M/16.
3 Document IP/N/6/ESP/1.IP/Q4/ESP/1
Page 2
1. There is no specific procedure for a foreign indi vidual or party to initiate a procedure for the
enforcement of intellectual property rights in Spain, nor is there any restriction on so doing; it
is sufficient to demonstrate the indispensable standing which will be conferred by the
ownership of a right protected in Spain, on the assumption of the territorial jurisdiction ofSpanish courts and the applicability of their jurisdiction.
2. To deal with the possibility of procedural abuses, the Law on Civil Procedure (LEC)
establishes various precautionary mechanisms which, in general, either provide for security to
be demanded in order to meet the need, where appropriate, to compensate for any damage to
the opposing party, or require the offending litigant to pay the costs and expenses of the legal
action, which would include the other party's legal fees.
The special laws governing special actions to protect intellectual property rights reproduce the
foregoing provisions in Article 136 of the Intellectual Property Law, in Articles 129.4, 132 and
135 et seq. of the Patent Law (LP) and, by reference to the latter, in the Trademarks Law (LM).
Furthermore, in the case of criminal proceedings, besides the possibility of taking the measures
provided for in civil legislation and their "counter-cautions", the Criminal Code provides inArticles 456 and 457 for persons who bring false or excessive accusations to be prosecuted on
those grounds.
3. The adoption of emergency measures is guaranteed both by various provisions of the Law on
Civil Procedure and by the specific rules laid down in the special laws on intellectualproperty, patents and trademarks referred to in Spain's reply to the Check-List of Issues on
Enforcement.
4
As regards the possibility of delays in proceedings, from a general point of view Article 237 ofthe Organic Law on the Judiciary (LOPJ) assigns the initiation of legal proceedings to the
judicial body.  In the case of civil proceedings, Article 307 LEC restates this principle, stipulatingthat, unless otherwise provided by law, the judicial body will decide ex officio on the type of
proceedings required and to this end will issue the necessary rulings.  However, a distinction
must be drawn between the civil process, which is governed by the principle whereby an action
may be brought and proceedings continued at the instance of one party thereto and the criminal
process, whose hallmark is ex officio action, and where the judicial authorities, including the
public prosecutor, who brings the criminal action in the case of offences affecting these rights,
are required to expedite the proceedings as far as possible, although prosecution is generallydependent on the prior lodging of a complaint by the injured party or his legal representative.
In civil proceedings, various responses are provided for where a party fails to act.  An endeavour
is made to prevent delays by setting deadlines (after which, if a party fails to act, certain of his
rights are regarded as reduced and he will be assumed to have already answered, to be in defaultor to have confessed if he does not appear - see Articles 528 and 583 of the LEC) or by
restricting the possibility of statements or appeals (e.g. with respect to decisions to admit
evidence) etc.  It is also possible for inaction by parties to cause the proceedings to be quashed on
grounds of legal paralysis caused by the parties' failure to act within a certain period of time
(Article 411 of the LEC on the lapsing of an application).  The award of costs (i.e. the expensesresulting from the proceedings), including those due to the opposing side in case of recklessness,
without the limitations laid down for ordinary grounds (Article 523 of the LEC, end), can also be
regarded as useful in preventing deliberate delay where legal action is taken or an appeal brought
with the object of prolonging the proceedings.
                                                     
    4 Document IP/N/6/ESP/1.IP/Q4/ESP/1
Page 3
4. It is a general requirement under Spanish law for all judicial rulings to be based on some kind
of proceedings, to be recorded in writing and to be justified or reasoned. Certain rulings may
be issued orally on the spot or in advance but must always be immediately put in writing,
including, as provided for in Article 247 of the Organic Law on the Judiciary, "the appropriate
justification".
5. The following points should be made regarding appeals under the Spanish system:
(a) As regards final decisions by the Spanish Patents and Trademarks Office, appeals
against all such decisions can be brought before the courts under the administrative
challenge procedure.  Decisions can also be challenged indirectly in the civil courts by
bringing a counter-claim for nullity of an industrial property title under an action for
infringement.
(b) As regards rulings by the judicial authorities, there are no specific limits on the right of
litigants to appeal against their procedural or definitive decisions in civil proceedings to
enforce intellectual property rights.  The provisions on appeals under the general LEC
system laid down in Articles 376 to 406 of the LEC apply in general.
In the same way as for civil proceedings, criminal proceedings are fully covered by the general
remedies system, which is regulated by Articles 216 to 238 of the Law on Criminal Procedure.
6. With regard to the notification system, this is described in detail in the replies to the questions
from the United States.  Suffice it to point out here that in general, Article 270 of the OrganicLaw on the Judiciary lays down that all parties involved, including any of them that could
suffer injury as a result of the act notified, will be notified of all procedures, decisions, orders
and judgements.  This produces a system whereby the parties will always be able to find out,
through notification, about the various legal steps being taken by the opposing party, third
parties or the judicial body.
7. As regards precautionary measures, adopting these generally requires the existence of " fumus
boni iuris ", i.e. the appearance of good law, and " periculum in mora ", i.e. the risk of damage
to the applicant if the measure is not granted immediately.
The appearance of good law must be assessed by the judge according to the merits of the
application, which themselves depend on how much justice appears to i.e. with the applicant for
the measure and on the simultaneous unlawfulness of the conduct of the person against whom the
measure is requested.
The danger to the applicant's interests of delaying agreement to the measure must not be based on
the possibility of such delay jeopardizing the outcome of the final judgement in the principal
case.  The only consideration must be whether a continuation of the infringement might harm the
applicant's interests  given the difficulty of making good the pain and suffering and patrimonialdamage being caused.
In general, Spanish civil procedure is governed by the principle of weighing the evidence in
conjunction with the residual evidence already assessed.  In proceedings to enforce intellectual
property rights the judge can estimate in each case according to that principle whether ownershipof the right has been proved, but the factors which in each case caused that requirement to be
regarded as proved can be determined only by examining specific cases and analysing the
relevant judicial rulings.IP/Q4/ESP/1
Page 4
Although unable to reach full conclusions, judges can normally assess the initial credibility of the
right with the use of a wide range of means, but the decisive evidence will preferably be in
documentary form, for example:
(a) In the case of copyright, submission of a certificate from the Intellectual Property
Register in which such rights or documentary attestations by the World Intellectual
Property Organization or other international organizations are entered in a declaratory
(non-constitutive) form.  Regarding the Spanish Intellectual Property Register,
Article 140.3 of the LPI establishes a presumption " iuris tantum " - which admits
counter-evidence - that the rights entered therein exist and belong to their holder in the
form specified in the corresponding register entry.  For example, in a case where public
notification activities are suspended, such a presumption will exist when the applicant ispresumed to be the holder of the right and the party carrying out such acts lacks
authorization;
(b) certificates of origin from the appropriate national and international bodies in the case of
geographical indications;
(c) no legal precedents exist with regard to industrial property; legal proceedings in
connection with the infringement of industrial property rights can be brought only by
registered right holders.  Proof of ownership can easily be provided by producing the
title deed.
Evidence of an infringement or imminent infringement depends on the circumstances of the case.
It will normally be possible to collect evidence in advance.
8. The deterrent nature of Spanish criminal legislation on the infringement of intellectual
property rights is evident in Title XIII, Chapter XI of the 1995 Criminal Code, and
specifically in Articles 270 to 277, 278, 279, 287 and 288.
Penalties may amount to four years imprisonment both for offences against copyright and related
rights and for industrial property offences.  The possibility also exists of imposing different types
of penalty, which may be extremely severe.  For example, it is possible to order the temporary or
permanent closure of the infringing party's business and the disqualification of that party from
following his occupation in connection with the offence committed for a period of up tofive years.
9. Regarding the questions put by New Zealand, it is indeed possible to request the adoption of
customs measures in the case of wines which employ misleading geographical indications.
Application for, and adoption of, such measures  follows the customs procedure applicable to
other goods in general and described in the replies by Spain to the Check-List of Issues on
Enforcement.
5  Thus, for the adoption of such measures an application for action must be
submitted.  In civil matters, the natural and legal persons mentioned in document IP/C/W/75
have standing to initiate proceedings for the protection of geographical indications.  In
criminal matters, proceedings may be started by the judge appointed by the court or at therequest of the Public Prosecutor's office in cases affecting the interests of the public, or of
groups of persons or interested parties.  Special attention should be drawn to the substantial
prison terms of up to four years and to the fines of up to 24-months' salary, in addition to
payment of the appropriate compensation by way of damages, imposed on those who make
illicit use for trade purposes of a designation of origin or a geographical indicationrepresenting a specific quality, where that designation or indication is legally protected in
order to identify the products covered by it (Articles 275 and 276 of the Criminal Code).
                                                     
    5 Document IP/N/6/ESP/1.IP/Q4/ESP/1
Page 5
These penalties may be accompanied by disqualification for up to five years from pursuing
the occupation connected with the offence and the temporary or definitive closure of the
convicted party's business or establishment.
10. In line with the TRIPS Agreement, Spanish regu lations provide that the costs and expenses of
civil proceedings, including lawyers' fees, are to be paid by the party whose claims are totallyrejected, unless the judge, after due consideration, decides that such payment is unjustified in
the light of exceptional circumstances.  Similar rules apply in criminal proceedings, in respect
of which it is laid down that such costs and expenses are to be paid by infringers who are
convicted.
In order to ensure that the replies given meet the legitimate expectations of delegations, we
stress our willingness to provide, within a  specific and reasonable time any clarification considered
necessary regarding the content of our system of protecting intellectual property rights.
Bearing in mind that the most important points have already been dealt with in this statement,
the Spanish delegation considers it unnecessary to read out any specific reply but is perfectly willing
to do so if requested by any of the delegations present.
REPLIES TO THE QUESTIONS FROM JAPAN
1. Please explain whether "proceedings leading to a decision on the merits of the case"
stipulated in Article 55 of the TRIPS Agreement are judicial or administrative.
Proceedings are judicial and must be initiated by the right holder within ten days of being
notified of the suspension.
2. Are there any ways other than the application stipulated in Articles 51 and 52 of the TRIPS
Agreement (hereafter referred to as "the Application") which enable a right holder to request the
competent authorities to suspend the release of the goods which infringe IPRs or which aresuspected to infringe IPRs?
Suspension of release is always agreed to at the request of the right holder when the latter
considers that his rights are being harmed or presumes that they may be harmed.
3. Please explain what term your country regards as "a reasonable period within which the
competent authorities shall inform the applicant whether or not they have accepted theApplication" stipulated in Article 52 of the TRIPS Agreement.
Once the right holder has submitted all the required documentation and this is found to be
correct, the applicant is immediately informed that the application has been accepted.
4. Please explain whether a right holder is obliged to pay any fees to lodge the Application.
In Spain no fees are required for lodging the application even when this is accepted.
5. Please indicate provisions of laws and ordinances which prescribe the "proceedings leading
to a decision on the merits of the case" stipulated in Article 55 of the TRIPS Agreement.  And
please summarize their contents.
Proceedings leading to a decision on the merits of the case in accordance with Article 55 of the
TRIPS Agreement are those set out in the Check-List of Issues on Enforcement which has been fullyanswered by Spain in document IP/N/6/ESP/1.IP/Q4/ESP/1
Page 6
6. Please explain the specific procedure, if any, to be applied to the goods which are not
evident whether or not they infringe IPRs, in Article 55 of the TRIPS Agreement.
It is the right holder who, on seeing the goods and examining the experts' report, decides whether
the goods are counterfeit or not.  If they are counterfeit he must lodge a complaint with the court.  If thecustoms do not receive a copy of the complaint within the deadlines laid down for doing so in the
previous reply, release of the goods will be authorized.
7. Please explain the responsibility that the competent authorities and other related
authorities take to the right holders when they fa il to suspend the release into free circulation of
goods which infringe IPRs with regard to the suspension based on the Application or the Ex Officio
Action stipulated in Article 58 of the TRIPS Agreement.
Where the customs authorities act in good faith  they cannot be held liable in the cases mentioned
in these two questions.  However, if they act in bad faith they can be held liable under Title X of the Law
on the Juridical Regime of Public Authorities and Common Administrative Proceedings, which governs
the liability of public authorities and their personnel.
8. Please explain the responsibility that the competent authorities and other related
authorities take to the right holders when they examine goods which infringe IPRs and
nevertheless release them into free circulation with regard to the suspension based on the
Application or the Ex Officio Action stipulated in Article 58 of the TRIPS Agreement.
See the reply to question 7.
9. Please explain the responsibility that the competent authorities and other related
authorities take to the importers when they suspend the release into free circulation of goods whichdo not infringe IPRs with regard to the suspension based on the Application or the Ex Officio
Action stipulated in Article 58 of the TRIPS Agreement.
The exercise by a customs office of its powers in regard to combating counterfeit or pirated
goods does not affect its liability towards persons concerned by import operations where such persons
have been harmed by its action.
10. Is the right holder informed of identities of the importers and consignors when the
competent authorities "suspend" the goods which infringe on IPRs or which are suspected to
infringe IPRs, as well as the case where the right holder is informed of identities of the importers
and consignors stipulated in Article 57 of the TRIPS Agreement?
The right holder is given the following information:
- Value and quantity of goods;
- name and address of the importer;
- name and address of the consignee;- the customs office where the goods were seized.
11. Please explain the measures to protect confidential information in the course of the
inspection stipulated in Article 57 of the TRIPS Agreement.  And please indicate provisions of laws
and ordinances which prescribe such measures.
Royal Legislative Decree 1/96 of 12 April approving  the revised text of the Intellectual Property
Law, regularizing, clarifying and harmonizing the existing provisions in the matter.
General Tax Law (Article 113).IP/Q4/ESP/1
Page 7
Organic Law 5/92 regulating the computerization of personal data.
Order dated 27 July 1994 of the Ministry of the Economy and Finance regulating the
computerized personal data files held by the central departments and autonomous bodies of theaforementioned Ministry.
12. Please explain the procedures of detentions and seizures to be ordered by the competent
authorities based on Articles 51 and 55 of the TRIPS Agreement.
Once the complaint has been brought before the court, the established judicial procedures are
followed in both civil and criminal matters.
13. Please explain the procedures to appeal a gainst any decisions ordered by the competent
authorities based on Articles 51 and 55 of the TRIPS Agreement.
In the case of rulings by the Customs and Excise Department, an appeal can be lodged via the
administrative challenge procedure.  As regards the courts, the provisions on remedies apply both in civil
matters (Articles 376 to 406 of the Law on Civil Procedure) and in criminal matters (Articles 216 to 238
and 787 to 795 of the Law on Criminal Procedure).
14. Please explain the basis for calculating the security or equivalent assurance stipulated in
Article 53 of the TRIPS Agreement that the competent authorities may require of an applicant
when they suspend the release into free circulation.
No security is required in Spain apart from a written acceptance of liability whereby the right
holder undertakes to meet his liability to the importer or exporter arising from an act or omission by theright holder, or where it is subsequently found that the goods were not counterfeit or pirated.  He must
likewise undertake to guarantee payment of any expenses incurred because the goods were kept under
customs control.  All this is laid down in Article 3(6) of Regulation (EC) No. 3295/94.  The cost of
detaining or destroying counterfeit goods will therefore in no case be chargeable to the exchequer and
should fall on the counterfeiter or, failing him, the applicant (Article 8(1a) of the EC Regulation).
15. Please explain who will pay the cost of detentions based on Article 51 of the TRIPS
Agreement or destruction stipulated in Article 59 of the TRIPS Agreement.
See the reply to question 14.
16. Please explain what kinds of cases are regarded as "the exceptional circumstances" in
which the competent authorities may allow re-exportation of counterfeit trademark goods
stipulated in Article 59 of the TRIPS Agreement.
The re-exportation without modification of counterfeit trademark goods is not permitted under
any circumstances.
17. Please indicate the names of laws and ordinances and their provisions in which the
suspension of the release of goods which infringe IPRs or which are suspected of infringing IPRs is
prescribed, as stipulated in Article 51 of the TRIPS Agreement.
Council Regulation (EC) No. 3295/94 of 22 December 1994.IP/Q4/ESP/1
Page 8
18. Please explain whether the judicial authorities have the authority to order the person who
infringes IPRs to pay the right holder expenses, including investigation expenses and appropriate
attorney's fees.  Please explain whether the Spanish legal system is consistent with Article 45.2 of
the TRIPS Agreement.6
This matter is fully dealt with under the Spanish legal system, and our legislation is thus
absolutely consistent with Article 45.2 of the TRIPS Agreement.
To answer this question a distinction must be drawn between civil and criminal proceedings.
(a) Civil proceedings
In general, the Spanish Law on Civil Procedure lays down (Article 523) that first instance costs
in declaratory judgements are payable by the party whose claims have been totally rejected, unless the
judge decides after due consideration that exceptional circumstances make such payment unjustifiable.  If
the defendant agrees to the application before answering it, costs will not be imposed unless the judge
after due consideration decides that the defendant has acted in bad faith.
Costs may also be imposed at second instance after an appeal (Articles 850, 875 and 896), and
even at Supreme Court level following a special appeal for annulment.  The judgement confirming the
decision appealed against will order costs to be paid by the appellant, unless the court after due
consideration decides that some other ruling is justified by exceptional circumstances.
In appeals for annulment, the appellant will have to pay the costs if the judgement decides
against a review of the challenged ruling on the grounds that none of the reasons put forward is
legitimate.
Costs include lawyers' fees (Article 423) as well as the fees of experts and other officials,
whether subject to a tariff or not.  Lawyers must submit an itemized breakdown of expenses.  On this
basis the Clerk of the Court will assess costs (which will not include fees for documents and other
proceedings which are of no use, superfluous or not authorised by law, or unitemized entries in bills).
(b) Criminal proceedings
Here, similar rules apply.  Article 239 of the Law on Criminal Procedure stipulates that a
decision must be taken about the payment of legal costs in orders or judgements which terminate alawsuit or any of its phases.  Such payment will be ordered against convicted infringers and in accordance
with Article 241 will include, inter alia , the fees payable to barristers, solicitors and experts, to be
confirmed by itemized bills.  Once the cost assessment has been carried out and approved, it is applied by
means of a court order as provided in the Law on Civil Procedure.  If the convicted party's assets are
insufficient to meet all financial liabilities, payment may be split up into instalments and appliedaccording to the order of priority set out in Article 126 of the 1995 Criminal Code, with third place (after
compensation of the injured party for the damage caused by the offence and compensation of the state for
its expenses) being taken by public and semi-public offences and second place (after compensation of the
injured party) being taken by offences which can be taken to law only on the initiative of a party (without
the involvement of the Public Prosecutor).
In the judgement the judge or court may order the convicted party to pay the costs or expenses
occasioned by a private prosecution under the general conditions already set out.
                                                     
    6 Reference is made to the Spanish reply to question 5 on the Check-List of Issues on Enforcement
(document IP/N/6/ESP/1).IP/Q4/ESP/1
Page 9
The Spanish judicial authorities can therefore order the infringer to pay these expenses incurred
by the right holder who is the plaintiff in civil proceedings, or the injured party in criminal proceedings
whether he appears in court or not.
Regarding the possibility for the judicial authorities of ordering the infringer to pay damages to
the holder of the intellectual property right even when the former does not know, or had no reasonable
grounds for knowing, that he was guilty of an infringement, the following should be stated:
(a) Under Spanish legislation an error of fact or law concerning the perpetration or
non-perpetration of an infringement of intellectual property rights does not necessarily
prevent the infringer from being exempted from civil liability.  It is therefore logical that,
if the infringer has been unjustly enriched and the legitimate right holder has sufferedcorresponding harm, an action to compensate the injured party for the harm suffered
may be brought.
(b) The foregoing is not possible in criminal proceedings in which the civil action or liability
goes together with, and is incidental to, criminal liability.  Where no intent or punishablenegligence exists, the agent cannot be regarded as guilty, and therefore no criminal
infringement has occurred.  Under such circumstances, civil liability, i.e. compensation
for the damage caused, cannot be imposed in the verdict of not guilty delivered at the
end of the criminal proceedings.  For such compensation to be sought, the appropriate
civil actions must be initiated as part of civil proceedings.
With regard to specific rules on industrial property, Articles 62 to 71 of Section VII (Proceedings
for Infringement of Patents) of Patent Law 11/1986 of 20 March contains detailed rules, which are
referred to in Article 8 of Law 11/1988 of 3 May on the legal protection of layout designs (topographies)
of semiconductor products.  This question is also dealt with in Section IV, Chapter II (Articles 35 to 40),of Trademark Law 32/1998 of 10 November, which is similar in form to the preceding law, and in
Article 144 of the Industrial Property Law of 16 May 1902.
The legislation described demonstrates that Spanish law gives the judicial authorities the power
to order any party infringing industrial property rights to pay all the expenses of the affected right holder,
including compensation for damage and legal costs.
REPLIES TO THE QUESTIONS PUT BY NEW ZEALAND
1. With regard to Spain's reply to question 14 in the Check-List of Issues on Enforcement
7,
could Spain advise whether the practice of customs officers informing the department upon
detecting goods presumed to be counterfeit or pirated, for which action has been granted, has any
applicability to wine bearing misleading geographical indications, and if so, identify the relevantlegislation and describe the practice followed?
To date, Spain has not requested any customs action for wine bearing misleading geographical
indications.  In any case, such wines would be fully covered by the customs procedure used for other
goods in general and described in Spain's replies to the Check-List of Issues on Enforcement.
7  T h e
relevant legislation is quoted in the section in that document concerning special requirements relating to
border measures.7
Regarding Spanish legislation on the protection of geographical indications, we refer to the
legislation under that heading in document IP/N/1/ESP/1/Rev.1.
                                                     
7 Document IP/N/6/ESP/1.IP/Q4/ESP/1
Page 10
2. With regard to Spain's reply to question 15 on the Check-List of Issues on Enforcement, we
should be grateful if Spain could clarify whether or not action may be requested in the case of wine
bearing misleading geographical indications.
The adoption of customs measures can indeed be requested in the case of wines bearing
misleading geographical indications.  The application for, and adoption of, such measures follows the
customs procedure applicable to other goods in general and described in Spain's replies to the Check-List
of Issues on Enforcement.8  For the adoption of such measures, an application for action must therefore
be submitted.
REPLIES TO THE QUESTIONS PUT BY THE UNITED STATES
General obligations
1. Please describe briefly the procedure that must be followed by a foreign party to initiate an
enforcement procedure in the courts and cite the legal authorities establishing those procedures.
No restrictions exist and there is no specific procedure for a foreign person or party to initiate a
procedure for the enforcement of intellectual property rights in Spain.  Anyone can initiate the procedureprovided certain general requirements are met.  Normally the only requirement is to have suitable legal
representation and guidance in the form of a solicitor or barrister, except in cases, - for example, the
urgent procedure provided for in Articles 136 et seq. of the Intellectual Property Law (LPI, as revised and
approved by Royal Legislative Decree 1/1996 of 12 April 1996) - where it is not even necessary to have a
solicitor or barrister, all that is needed being a written application for adoption of the measure signed bythe interested party or his legal representative.  It is consequently sufficient to demonstrate the
indispensable standing which will be conferred by ownership of a right protected in Spain, on the
assumption of the territorial competence of Spanish courts and the applicability of their jurisdiction.
2. Please identify any requirement that a foreign party must meet to initiate a proceeding in
the courts that is not required of a national or resident of Spain and cite the legal authorities
providing for those differences.
Access to Spanish courts is not subject to any restriction as such, apart from the rules concerning
their jurisdiction and territorial competence.  However, as is to be expected, it is vital for a non-resident
foreigner to demonstrate that his right is protected in Spain.
3. Articles 41.1 and 48 of the TRIPS Agreement require establishment of safeguards against
abuse of enforcement procedures, including provision for adequate compensation for injury
suffered because of such abuse.  Please describe the means available under the law of Spain to
prevent abuse of judicial procedures or to remedy damages suffered as a result of such abuse and
cite the legal authorities for those means.
In general, the Spanish Civil Code stresses that it does not countenance the abuse of law or, by
extension, procedural abuse in any of its forms.
To counter the possibility of procedural abuses, the Law on Civil Procedure (LEC) lays down
various preventive mechanisms which normally take the form of requiring a security in order to provide,
where necessary, for compensation for any injury that may be caused to the opposing party and even for
payment of any costs incurred.  This applies to those who want their appeal to be granted "in both effects"
(Article 381 LEC) and to those seeking the provisional execution of a judgement which has been
appealed against (Article 385 LEC) or whose annulment is sought (Article 1722).  An identical solution isusually employed when the adoption of precautionary measures that may occasion injury is allowed, for
                                                     
    8 Document IP/N/6/ESP/1IP/Q4/ESP/1
Page 11
example when preventive seizure occurs;  in such a case the judge is authorized to order the requesting
party to deposit a sufficient security to meet any damage and costs that may result.  A litigant guilty of
abuse will also be deterred by having to pay the costs and expenses of the case (including paying the fees
of the opposing party's lawyer).  This point is covered in general in Articles 523 LEC as regards
first-instance proceedings and in Articles 850, 875, 896 and 1715 LEC for appeals.  The principle thatemerges from these provisions is that costs are payable by the party whose claims have been totally
rejected.
More specifically, the provisions in the special proceedings for the enforcement of intellectual
property rights (to which the foregoing generic measures apply in general) are the following:
Regarding the adoption of urgent precautionary measures, Article 136 of the LPI makes it
possible, before the decision is taken, for the judge to require the applicant to deposit an adequate
security, excluding personal security, to cover the harm and costs that may result from adoption of the
measure.
Likewise the Patent Law (LP) - see Articles 129.4 on preliminary steps for the taking of evidence
and 135 et seq. on the specific procedure for adopting precautionary measures - and the Trademark Law
(LM), which lays down the general framework for applying the LP to trademark protection, provide for
similar security in the specific enforcement procedures; the judicial body must require a
"counter-caution" or security from the plaintiff or applicant in order to meet the cost of any harm that may
result from using the measure.  Article 132 LP provides that the party affected by evidential activitiesmay in any case demand that the requesting party pay for the costs and damage which these may have
caused him, including loss of earnings.  This is without prejudice to the general liability for damages
which may be payable by the party requesting the measures, where such damages have taken place.
With regard to criminal proceedings, in addition to the possibility of applying civil protection
measures and their "counter-cautions", the Criminal Code envisages, with respect to persons making false
or improper complaints, the possibility of such persons being prosecuted for making false or misleading
accusations (Articles 456 and 457 of the Criminal Code).
4. Please explain any provisions in the enforcement system in Spain that ensure expeditious
remedies.  In addition, please explain what provisions are available to prevent deliberate delays by
the parties to a proceeding and indicate the circumstances in which such provisions will be applied.
The most effective measures are those relating to the interlocutory execution of judgements and
precautionary measures (see the LPI, LP and LEC).
With regard to precautionary measures, in addition to the general ones provided for in the general
rules of the LEC there are the specific precautionary measures for the enforcement of intellectual property
rights which have already been referred to in the replies by Spain to the Check-List of Issues on
Enforcement.
9
For copyright and related rights, Articles 133 et seq. of the LPI allow a right holder to make a
written request that the competent judge should take urgent protection measures.  There is no complete
catalogue of measures allowing the judicial authority to order the precautionary measures (including the
unnamed measures referred to in Article 1428 of the LEC) needed for the urgent protection of the rights
concerned.
Very short deadlines are laid down in order to prevent undue delays (urgent notification of the
initial plea to the parties, immediate taking of evidence, decision given the day after the expiry of the
                                                     
9 Document IP/N/6/ESP/1.IP/Q4/ESP/1
Page 12
ten-day period following submission of the initial plea etc.), and special arrangements are made for
preferential treatment with respect to the bulk of cases.
With regard to patents, prior even to submission of the application the person with standing can
demand the "checking of facts" referred to in Articles 129 and 130 of the LP.  This consists of a series ofinvestigative activities whose purpose is to assemble, via the judge, the factual elements needed to prove
infringement of the patent and thereby to justify the demand for a conviction.  Its implementation depends
on an examination of its relevance and necessity and on respect for the proportionality principle.
The LP expressly provides for two types of precautionary measure:  preventive filing of the
application in the Industrial Property Register (Articles 134.4 and 12.4) and a series of measures
supporting the demand for a conviction, such as a cessation of infringement activities, the detention andstorage of the object of the infringement and the provision of security in compensation for damage.  Such
measures may be requested before, after or together with the application.
To avoid delays, deadlines are strict and short (no appeal may be made against admission of the
evidential period, on which a ruling must be given in five days from submission of the application;appearance before the court must take place within six days from the end of that period and six days are
allowed for adoption of the final decision).
For trademarks, trade names and titles of establishments, the LM refers generally to the rules laid
down in the LP, so that the foregoing remarks also apply here.
In general, it should be added that, regarding the possibility of delays, Article 237 of the Organic
Law on the Judiciary (LOPJ) accords the procedural initiative to the judicial body and to this end issues
the necessary rulings.  For civil proceedings, Article 307 of the LEC restates this principle stipulating
that, unless otherwise provided by law, the judicial body will decide ex officio on the type of proceedingsrequired and to this end will issue the necessary rulings.  However, a distinction must be drawn between
the civil process, which is governed by the principle whereby an action may be brought and proceedings
continued at the instance of one party thereto, and the criminal process, whose hallmark is ex officio
action, and where the judicial authorities, including the public prosecutor, who brings the criminal action
in the case of offences affecting those rights, are required to expedite the proceedings as far as possible,
although prosecution is generally dependent on the prior lodging of a complaint by the injured party or
his legal representative.
In civil proceedings, various responses are provided for where a party fails to act.  An endeavour
is made to prevent delays by setting deadlines (after which, if a party fails to act, certain of his rights are
regarded as reduced and he will be assumed to have already answered, to be in default or to have
confessed if he does not appear - see Articles 528 and 583 of the LEC) or by restricting the possibility ofstatements or appeals (e.g. with respect to decisions to admit evidence) etc.  It is also possible for inaction
by parties to cause the proceedings to be quashed on grounds of legal paralysis caused by the parties'
failure to act within a certain period of time (Article 411 of the LEC on the lapsing of an application).
The award of costs (i.e. the expenses resulting from the proceedings), including those due to the opposing
side in case of recklessness, without the limitations laid down for ordinary grounds (Article 523 of theLEC, end), can also be regarded as useful in preventing deliberate delay where legal action is taken or an
appeal brought with the object of prolonging the proceedings.
5. Article 41.3 of the TRIPS Agreement requires that decisions on the merits of a case
preferably be in writing, the better to determine the reasoning on which the decision is based.Please state whether judges must render their decisions in writing and cite the legal authorities
requiring such written opinions.
It is a general requirement under Spanish law for all judicial rulings to be based on some kind
of proceedings, to be recorded in writing and to be justified or reasoned. Certain rulings may be issuedIP/Q4/ESP/1
Page 13
orally on the spot or in advance but must always be immediately put in writing, including, as provided
for in Article 247 of the Organic Law on the Judiciary, "the appropriate justification".
More specifically, Article 248 of the same instrument, which is basically identical with the
stipulations in Articles 369 to 372 of the LEC, provides for three types of judicial decisions, namelyrulings, orders and judgements.  Both orders and judgements are always reasoned and will contain in
separate numbered paragraphs the factual background and the appropriate legal reasoning, together with
the operative terms agreed on.  Decisions relating only to the handling of proceedings must take the form
of rulings and may be briefly justified without being subject to the strict formal requirements which apply
to orders and judgements.  The three types of decision, i.e. rulings, orders and judgements, must be signed
by the judge or court which grants them, as well as by the Clerk of the Court, who acts as public notary.
These decisions must be notified to the parties in order to make an appeal possible.  To this end it
is particularly necessary to state the grounds since these enable the party (and the court hearing the
appeal) to understand the reasons which led the judge or court to adopt the decision.  Knowing these is
regarded as essential in order to prevent the parties from being left without a defence.
In addition to the written records forming part of the physical basis of the proceeding, Article 265
of the LOPJ requires every court to maintain a sentence register which is kept in the custody of the
appropriate Clerk of the Court.  The register contains signed copies of all final judgements and orders of a
similar nature and may be consulted by any interested party.
6. Article 41.4 obligates WTO Members to provide for judicial review of certain judicial
decisions in intellectual property enforcement proceedings.  Please describe what legal limitations,
if any, are placed upon the ability of a party to  an intellectual property enforcement proceeding to
have both procedural rulings and final decisions reviewed by a separate judicial authority,  and cite
the legal authorities providing for such reviews.
As regards final decisions of the Spanish Patent and Trademark Office, it should be indicated that
all these are appealable under the administrative challenge procedure.  Decisions can also be challenged
indirectly in the civil courts by bringing a counter-claim for nullity of an industrial property title by means
of an infringement suit.
As regards the judicial authorities, there are no specific limitations on the ability of litigants to
appeal against their procedural or final decisions in respect of intellectual property enforcement
proceedings of a civil nature.  The provisions on remedies under the general system of the LEC, as set out
in Articles 376 to 406 of the latter law, are applicable generally.
In the case of the general system of appeals, which distinguishes according to the judicial
authority issuing the decision and the type of decision appealed against, specific limitations are set on
challenges to decisions, with the basic aim of preventing time-wasting tactics.  No appeal is possible, for
example, against an order which declares the admissibility of a test case (Article 551 of the LEC) or
against rulings admitting a piece of evidence (Article 567 of the LEC).  This principle is applied in civil
enforcement procedures by utilizing the general system in all matters which are not indicated as beingspecifically different.  For example, regarding acceptance of the trial period for the adoption of
precautionary measures under the procedure set out in the Patent Law, it is even clearly stated that
according to Article 135.2 of that Law, no appeal is possible against the decision on that point.
The general appeals regime is fully applicable in criminal proceedings in the same way as in civil
proceedings.  Without going into unnecessary detail, it can be said that this regime is the one set out in
general terms in Articles 216 to 238 of the Law on Criminal Procedure (LECR) and, in connection with
the so-called "accelerated" procedure (which will normally be used for intellectual-property offences), in
Articles 787 and 795.IP/Q4/ESP/1
Page 14
The limitations on appeals within this framework are very few in number, although it must be
stressed that it is impossible to appeal, except in regard to the personal situation  of the accused, against
an order for an oral trial as provided for in Article 790.7 of the LECR, although the party concerned may
resubmit applications which were not dealt with by the trial body.
Civil and administrative procedures and remedies
7. Article 42 requires that defendants be notified of judicial and administrative intellectual
property enforcement proceedings brought against them.  Please describe the procedures followed
for notifying defending parties regarding proceedings that have been initiated against them,
indicate the information provided regarding the proceeding and cite the legal authorities
establishing these procedures.
In general, Article 270 of the LOPJ stipulates that all parties involved, including any of them
that could suffer injury as a result of the act notified, will be notified of all procedures, decisions,
orders and judgements.  This produces a system whereby the parties will always be able to find out,
through notification, about the various legal steps being taken by the opposing party, third parties or
the judicial body.
The rules governing each of the above-mentioned proceedings stipulate that the judicial body
must, as a first step, notify the defendant that the application has been submitted.  He is given a copy of
the application and of the accompanying documents so that he may defend himself properly, and is
summoned to appear and answer the application or to make an appearance in court in order to defend hisposition (Articles 525 et seq., 680 et seq., 715 et seq. of the LEC and 26 et seq. of the Decree of
21 November 1952 on judicial hearings).  Similar provisions are also laid down in the specific laws,
which contain procedural rules to be observed in cases of enforcement of intellectual property rights (see
Article 127.5 of the LP which states that the application must be notified to all patent right holders who
are properly entered in the register so that they can appear in court and take part in the proceedings).
Under the applicable legislation and the relevant doctrine of the Constitutional Court (TC),
notification must be effected in such a way as to comply fully with its objective, namely to enable the
addressee to be aware of the decision affecting him so that he may make the appropriate arrangements for
the best possible defence of the disputed rights and interests.  Special stress is placed on observance of all
the legally established requirements so as to ensure, as far as possible, that the acts in question have been
brought to the knowledge of the party concerned.
Regarding the carrying out of notifications, a distinction must be drawn between those carried
out on the premises of the judicial body and those that have to take place elsewhere.
As a rule, notifications on the premises of the judicial body will take place when they are made to
the lawyer of one of the parties (Articles 6 and 271 LEC).  However, the lawyer may not be served with
summonses which the law expressly requires to be served on the parties concerned in person or with
those whose purpose is to ensure the compulsory appearance of these parties in court (Article 182 of the
LECR).
(a) Those that take place on the premises of the court or in the joint notification service
coming under the senior members and presidents of the provincial courts will be effected
through a reading of the decision by the clerk of the court or authorized official to the
person concerned.  At the same time he is given an exact copy of the decision even if he
has not requested it, the main points being set out in the ruling to be issued (Articles 262and 263 LEC, 166 LECR).IP/Q4/ESP/1
Page 15
If the party does not duly appear at the premises of the court in order to receive the
notification, a distinction must be drawn between cases in which the person to be
notified has a known address, and those in which he does not.
(b) When the person to be notified has a known address, notification will take place there,
for which purpose he must state it in the first document which he submits (Article 264
LEC).
According to the LEC, home notification can be effected in two ways:  by post or by
serving a summons.
The usual method of effecting notification away from the court's premises is registered
post with acknowledgement of receipt;  the clerk of the court vouches for the content of
the envelope in the court orders, to which he subsequently attaches the receipt
(Article 261 of the LEC - however, in criminal proceedings the rule is for notification to
be carried out by a court official).  In the case of a non-personal notification, the
summons must be contained in the envelope.
Postal notifications will be understood as having taken place on the date when the
addressee, or whoever accepts it in the latter's absence, states on the acknowledgement
of receipt that he has accepted it (Article 273 of the LEC).
Not all decisions can be notified in this way;  in civil proceedings, exceptions are made
for those decisions whose addressee is or is due to be a party to the action and whose
appearance in court depends on the notification in the case of a summons and in other
cases stipulated by law or agreed to by the judge after weighing the circumstances
(Article 261.IV of the LEC).  In criminal proceedings, postal notification is not allowedfor judgements and orders which increase penalties from detention to imprisonment and
for those releasing prisoners (Article 166 of the LECR).
Where there are special circumstances or a need for greater speed, it may be decided that
notification will take place by telegraph or some other suitable form of communication,
with the proviso that suitable steps must be taken to ensure reception of the notified act,
which will be noted in the court records (Article 261.III of the LEC).
- Where notification cannot be effected by any of the foregoing methods, it will be
necessary to serve a summons on the addressee.
If the latter is not at home, regardless of the cause and period of absence the summons
will be served on the nearest relative, family member or employee over 16 years of age
present at the address and, failing this, on the nearest neighbour or on the caretaker.
Serving of the summons will be certified in the court records, which will note the name,
status and occupation of the recipient, his relationship to the person to be notified and his
duty, of which he will be aware, to deliver the summons as soon as the person concernedreturns home or to inform him of it if he knows his whereabouts, with both the notifying
party and the recipient of the notification signing the acknowledgement (Articles 268 of
the LEC, 170 to 174 of the LECR; see in this connection judgements TC 39/1996,
275/1993, 195/1990, 72/1988, 22/1987).
- When notification has to be effected outside the district covered by the judicial body, use
will be made of letters rogatory, which will be accompanied by the corresponding
summons (Articles 277 of the LEC and 177 of the LECR concerning the need to effect
notification of foreigners with a known address by rogatory commission;  judgement
TC 16/1989 was delivered owing to the ineffectiveness of summons by public notice).IP/Q4/ESP/1
Page 16
(c) When there is no record of the address of the person to be notified or his whereabouts is
unknown, this fact is formally recorded and notification carried out by public notice.
This is done by inserting a suitable extract from the summons in the Official Gazette for
the province concerned and, if considered necessary by the judge, in the OfficialGovernment Gazette, possibly also in the Official Journal for the Autonomous
Community concerned (Articles 269 of the LEC, 178 and 784.3 of the LECR, and
Article 236 of the LOPJ).
(d) Finally, the LEC provides for another way of effecting notification when a litigant is
declared to be in default or has failed to appear:  notifications in the law courts.
Notifications in the law courts are obviously fictitious and are issued simply in order tocomply formally with the need to make the decisions issued during the proceedings
known to the parties, however long the latter may remain absent.  Once a litigant is in
default, no further steps will be taken to find him;  all rulings issued from then on and all
summonses and subpoenas that must be served will be notified and executed in the law
courts, except when otherwise provided (Article 281 of the LEC).
During criminal proceedings, if the accused fails to appear, an order to appear is issued with a
view to finding him and ensuring his appearance before the court or judge.
These notifications and summonses will be effected by reading out the decisions which must be
notified or in which a summons has been issued, in open court (Articles of the LEC in conjunction with
Article 281.2 of the LOPJ).
In accordance with the LOPJ, the following categories of notification may be distinguished:
(A) Notifications proper
Notifications proper are simply the communication of a judicial decision which does not
lead directly or immediately to any action by litigants or third parties.  By means of these
notifications the legislator regulates the whole gamut of acts of communication (the
various types of summonses).
The writ of notification, which is delivered or served when it has to be effected away
from the court's premises, must contain:  (1) a statement of the nature and purpose of the
proceeding and the full names of the litigants;  (2) an exact copy of the decision to be
notified;  (3) the full name of the person who must be notified;  (4) the date of despatch
and signature of the notifying party (Articles 167 of the LECR and 267 of the LEC,which require the inclusion of certain further details).
In addition, the notification of decisions must indicate whether such notification is
enforceable or not and, where applicable, the appropriate remedies, the body before
which any appeal must be brought and the time-frame allowed (Article 248.4 of theLOPJ).
(B) "Citación" (summons)
A "citación" is a communication whereby the litigants or third parties are notified of a
judicial decision fixing a day and a time for the performance of a personal act by the
party summonsed (e.g. trial act, taking of evidence).
Summonses ("citaciones") of those who are or should be parties in the trial will be
effected by writ, which is delivered to the person summonsed in place of the copy of theIP/Q4/ESP/1
Page 17
court order, this fact being noted in the record.  Nevertheless, the 1992 reform laid down
that summonses ("citaciones" and "emplazamientos") of parties in a trial who were
represented by a lawyer or, in cases authorized by the law, by a barrister, should be
effected through the representative (Article 271 of the LEC).
This writ may be delivered by a court official at the address of the person summonsed or
at the premises of the judicial body if he goes there to receive it.  This can also be done
by post, except when his appearance in court is dependent on the summons
(Article 261.IV LEC).
The writ of summons ("citación") must contain:  (1) the name of the judge or court
issuing the order, the date of the order and the matter concerned;  (2) the full name of theperson summonsed;  (3) the purpose of the summons and the party who has requested it;
(4) the place, day and time at which the person summonsed must appear;  (5) a warning
that failure to appear will make him liable for such damages as he might have incurred
under the law, followed by the date and the signature of the clerk of the court
(Articles 272 of the LEC, 175 of the LECR).
(C) "Emplazamiento" (summons)
An "emplazamiento" is a procedural act whereby the parties are notified of a decision
setting a time-limit for carrying out a specified activity.
An "emplazamiento" is effected in the same way as for a "citación", namely at the
premises of the judicial body or by writ served at the address of the person summonsed.
The problem arises when the address of the person concerned is unknown, in which case
the summons must be effected by public notice.
Unlike notifications, the writ of "emplazamiento" must, as is to be expected, instead of
stating the day, time and place for appearance, specify the time-limit within which the
summonsed person must appear or act, and the court before which he must appear or on
whose orders he must act (Articles 274 of the LEC and 175.III of the LECR).
(D) "Requerimiento" (summons)
A "requerimiento" is a communication containing a special court order requiring one or
other of the parties or a party concerned in the proceeding to perform a compulsory
action.
In a "requerimiento", the relevant court order is mentioned and the clerk of the court
states that the summons has been issued;  any reply made by the summonsed party must
be admitted by entry in the acknowledgement (Articles 275 and 276 LEC).
8. Article 42 requires, with one narrow exception, that there be a means to identify and
protect confidential information during judicial and administrative intellectual property
enforcement proceedings.  Please describe the means by which judges ensure the protection of
confidential information, oral or written, in relation to each authority referenced in IP/N/6/ESP/1.
The judge's duty to protect confidential information (oral and written) is implicit in his function
and if he were to break it he would be committing an offence.
As a general rule, Article 232.1 of the LOPJ stipulates that court proceedings shall be public,
subject to the exceptions allowed by the procedural laws, but the second paragraph of this article provides
that exceptionally, on grounds of public policy and the protection of rights and freedoms, judges andIP/Q4/ESP/1
Page 18
courts may limit the degree of openness and allow all or part of the proceedings to be conducted in secret,
provided they give reasons for their decision.
Article 130 of the LP on the prior collection of evidence states in paragraph 4 that the judge shall
ensure that industrial secrecy is protected during proceedings.
During this collection of evidence and with reference to Article 130.2 of the LP, if the judge
considers that it is improbable that the material inspected is contributing to infringement of the patent, he
will terminate this stage of the enquiry, will order the evidence (including the proceedings) to be treated
separately and kept confidential and will inform the petitioner that it is inexpedient to acquaint him with
the result of the enquiries.
In addition to the foregoing, Article 131.1 of the LP states that no certificate or copies of the
evidence may be issued other than those intended for the affected party.  The purpose of this clause is to
enable the applicant for such certificates and copies to start legal action.  The applicant may use this
documentation only for initiating such action and is prohibited from disclosing it or communicating it to
third parties.
9. Article 43.2 provides that, in the event a party refuses to provide information as ordered by
judicial officials, those officials may be authorized to make preliminary and final determinations
adverse to that party. Please describe what sanctions may be imposed on a party that refused to
provide ordered information and under what circumstances those sanctions are imposed, citing thelegal authority for those sanctions.
If a party refuses to provide information he may be accused of obstructing justice.  If it is a civil
case, the burden of proof will normally shift towards the party that cooperates with the law.  Moreover,
since the different infringers of an intellectual property right bear joint and several responsibility, it isunwise not to cooperate and it is therefore advisable to provide information about suppliers etc.
In civil proceedings, the judge must admit or reject the evidence put forward by the parties.
Once it is admitted, he possesses powers to order and require the use for judicial purposes of the
documents in litigants' possession.  Summonses ("requerimientos") issued by the judge may, in the event
of repeated refusal and open resistance to obeying the court's order, contain a warning that the
summonsed party may be charged with serious defiance of authority (Article 556 of the Criminal Code).A measurable possibility therefore exists that anyone refusing to supply documents, reports or material in
his possession will be convicted for doing so if the legal and jurisprudential requirements are present.
However, a different situation arises where the information is sought by questioning the
supposed infringer under the evidential method known as "deposition".
Article 597 of the LEC stipulates that every litigant must give evidence on oath when required by
the opposing party.  This is done in the deposition provided for in Article 578 of the LEC as a means of
taking evidence.  Deposition can also take place either as evidence put forward by the party or as a ruling
postponing final judgment pending the production of more particular evidence, decided on ex officio bythe judge.  Nevertheless, if the party concerned persistently refuses to testify, fails to attend without just
cause or testifies in an evasive or confused way, the only possibility allowed by the law is to regard him
as self-confessed, which is equivalent to allowing it to be concluded that he recognises the facts alleged
by the other party or admits his guilt.
10. Article 44.2 provides an exception to the requirement in paragraph 1 for government use
or use by third parties authorized by the government, limiting the remedy for infringement to
payment of adequate remuneration as provided in Article 31(h).  Please describe any such
limitations on remedies in the laws of Spain and cite the legal authorities providing for those
limitations.IP/Q4/ESP/1
Page 19
The powers of the judicial authorities mentioned in the question may be exercised either during
adoption of the measures for the securing of disputed goods provided for in the LEC, including
unspecified measures (Article 1428 of the LEC), or in connection with the precautionary measures of a
similar nature specifically laid down in the LPI, LP, LM and Unfair Competition Law.
In accordance with the TRIPS Agreement, Member States may, if they wish, impose the
limitations referred to in the question, but there is no provision on this point in the Spanish regulations on
specific civil procedures for protecting intellectual property rights.
11. Article 47 provides that WTO Members may authorize judges and administrative officials
to order infringers to identify for right holders third parties involved in the production and
distribution of infringing goods or services and their channels of distribution.  IP/N/6/ESP/1indicates that Spanish judges have such authority.  Please describe the circumstances in which this
authority would be exercised.
Prior to the trial, a possible way to provide the identification referred to in the question could be
through Article 497.1 of the LEC.  This enables the trial to be prepared through a request by the intendingplaintiff for a sworn statement by the intended defendant (the presumed infringer) concerning a fact or
facts relating to the status of other parties involved against whom action should be taken, although
whether facts falling outside that status should also be covered would be debatable.
Generally speaking, the correct evidential method for obtaining the information referred to in the
question is deposition (already mentioned in the reply to question 9).  As already said, such deposition
takes place on proposal by a party if permitted by the judge or by an ex officio decision of the latter in the
case of a ruling postponing final judgement during a limited judicial investigation activity not initiated by
any of the litigants.
The existence in Spanish civil proceedings of the "contribution from one party" principle means
that taking evidence in this way is normally done on proposal by one of the parties.  The ruling
postponing final judgment pending the production of more particular evidence is a judicial power which
should be used in moderation and restricted to cases where it is necessary because the data needed for
assessment of the facts was not adequately proved by deposition on the initiative of a party.
As already stated, moreover, Article 129 et seq. of the LP permits the judge, on the request of the
person with standing to bring patent actions, to allow on an urgent basis the taking of evidence which
may infringe the exclusive right granted by the patent.  During the taking of evidence the judge may
allow enquiries which will elicit information useful for this purpose to be carried out.
12. Article 48.2 permits WTO Members to exempt public authorities and officials from
liability from remedies only where their actions were taken or intended in good faith in carrying
out their responsibilities under the law.  Please explain any exemption provided public authorities
and officials from liability for abuse of enforcement procedures, describe the circumstances in
which such limitations would not apply, and cite the legal authorities granting such exemptions.
In Spain there exists the liability of public officials, as well as the patrimonial liability of the
public authorities.  The only exception to this principle concerns cases of force majeure .
The Law on the Juridical Regime of Public Authorities and the Common Administrative
Procedure deals in Section X with the liability of public authorities and of their personnel.  In practice it isinvoked extremely rarely and recourse is had to the subsidiary liability of the State in cases where the
public services work badly.  Article 41 concerns the liability of heads of administrative units with regard
to the handling of proceedings.  Disciplinary liability also exists in this connection, as laid down in
Article 74.IP/Q4/ESP/1
Page 20
As provided in Article 139.1, only in cases of  force majeure  will private individuals whose goods
or rights are damaged have no right to compensation.
With regard to judges and magistrates, Article 411 of the LOPJ lays down as a general principle
that they will be liable in the civil courts for damage caused by them when they are guilty of wrongdoingor negligence in the exercise of their functions.  Their criminal responsibility is governed by Articles 405
to 410 of the same law.  Under the general principles of criminal law, the deed has to be ascribable to
them on the grounds of wrongdoing or negligence.
Wrongdoing implies intent.  Negligence implies the presence of inexcusable imprudence or
ignorance.  Good faith will normally rule out liability, except where the negligence or ignorance is so
substantial as to be inexcusable, as is clear from Article 903 of the LEC.
In any case, damage to any goods and rights as a result of judicial error, as well as damage
resulting from an abnormal functioning of the administration of justice, will entitle all persons who have
been harmed to compensation by the State on the conditions laid down in Section V - Articles 292 to
297 - of the LOPJ, provided that the damage is real, economically assessable and can be identified asaffecting a person or group of persons.
Provisional measures
13. Article 50.3 requires that judicial and administrative authorities be authorized to require
an applicant to provide evidence to establish with a sufficient degree of certainty that the applicantis the right holder and that infringement has occurred or is imminent.  With respect to each
intellectual property right defined in Article 1.2 of the TRIPS Agreement, please describe the
evidence required by right holders to establish ownership.
In general, the adoption of provisional measures requires the existence of " fumus boni iuris ", i.e.
the appearance of good law, and of " periculum in mora ", that is, the risk of damage to the applicant if the
measure is not granted immediately.
The appearance of good law must be assessed by the judge according to the merits of the
application, which themselves depend on how much justice appears to i.e. with the applicant for the
measure and on the simultaneous unlawfulness of the conduct of the person against whom the
measure is requested.
The danger to the applicant's interests of delaying agreement to the measure must not be
based on the possibility of such delay jeopardizing the outcome of the final judgement in the principal
case.  The only consideration must be whether a continuation of the infringement might harm the
applicant's interests  given the difficulty of making good the pain and suffering and patrimonialdamage being caused.
In general, Spanish civil procedure is governed by the principle of weighing the evidence in
conjunction with the residual evidence already a ssessed.  In proceedings to enforce intellectual
property rights the judge can estimate in each case according to that principle whether ownership ofthe right has been proved, but the factors which in each case caused that requirement to be regarded as
proved can be determined only by examining sp ecific cases and analysing the relevant judicial
rulings.
Although unable to reach full conclusions, judges can normally assess the initial credibility of
the right with the use of a wide range of means, but the decisive evidence will preferably be in
documentary form, for example:IP/Q4/ESP/1
Page 21
- In the case of copyright, submission of a certificate from the Intellectual Property
Register in which such rights or documentary attestations by the World International
Property Organization or other international organizations are entered in a declaratory
(non-constitutive) form.  Regarding the Spanish Intellectual Property Register, Article
140.3 of the LPI establishes a presumption " iuris tantum " - which admits counter-
evidence - that the rights entered therein exist and belong to their holder in the form
specified in the corresponding register entry.  For example, in a case where public
notification activities are suspended, such a presumption will exist when the applicant is
presumed to be the holder of the right and the party carrying out such acts lacks
authorization;
- certificates of origin from the appropriate national and international bodies in the case of
geographical indications;
- no legal precedents exist with regard to industrial property; legal proceedings in
connection with the infringement of industrial-property rights can be brought only by
registered right holders.  Proof of ownership can easily be provided by producing thetitle deed.
Evidence of an infringement or imminent infringement depends on the circumstances of the
case.  It will normally be possible to collect evidence in advance.
Special requirements related to border measures
14. Please explain whether procedures, permissible under Article 51 of the TRIPS Agreement,
are available to stop the export of goods suspected of infringing copyrights and/or trademarks.
A right holder or his legal representative may apply to the customs authorities (Customs and
Excise Department) for an action agreement when he has reason to suspect that preparations are being
made to import or export
 goods bearing counterfeit manufacturing or trademarks, or pirated goods.
These action agreements are granted for a period of one year, which may be extended on request
by the right holder.  During the agreement's period of validity, notification is given to the right holder or
his legal representative of all suspensions of release relating to the trademark concerning which action has
been requested in order that the relevant checks may be made and the appropriate action taken within tenworking days.
15. Article 56 requires that the authorities be able to require the applicant to compensate the
defending party for any injury caused if the detention of goods was unfounded.  Please identify the
authorities that can order the applicant to pay the importer, consignee or owner compensation forinjury caused by wrongful detention and cite the applicable law or regulations.
Prior to the action agreement the submission is required of a written liability undertaking
whereby the right holder promises to meet his liability to the importer or exporter resulting from an act or
omission on the part of the right holder or where it is subsequently found that the goods concerned are notcounterfeit or pirated.  He must likewise undertake to guarantee payment of the expenses that may result
from keeping the goods under customs control.  These requirements are laid down in Article 3(6) of
Council Regulation (EC) No 3295/94 of 22 December 1994.
16. Article 57 requires that the competent authorities be able to authorise the right holder to
inspect the detained goods in order to substantiate the claims.  Please explain how right holders are
provided an opportunity to inspect suspect goods that have been detained by customs authorities.IP/Q4/ESP/1
Page 22
The right holder or his legal representative is informed by fax of the detention of the goods and
of the customs office concerned.
The customs will require the person inspecting the goods to produce a document proving that he
is the right holder or his legal representative.
17. Article 57 also requires that, where the decision on the merits favours the right holder,  the
competent authorities also may be given authority to give the right holder information regarding
the importer, consignee or consignor.  If competent authorities in Spain can provide information
regarding the importer, consignee or consignor to the right holder, please explain how information
regarding names and addresses of consignors, importers and consignees and quantities of goods
are provided to the applicant after a positive decision of infringement is made,  e.g. authoritiesautomatically providing information or by submission of a written request from the right holder
etc.
The following data will be supplied:
- Value and quantity of goods;
- name and address of the importer or exporter;- name and address of the consignee.
18. Article 60 permits Members to exclude from the provisions for border enforcement small
quantities of goods of a non-commercial nature carried by passengers or sent in small
consignments.  Please describe what constitutes a  de minimis  import that is excluded from the
border measures under the law of Spain.
It has been agreed that the scope of these rules will exclude goods carried by passengers which
by reason of their small quantity and low price are not intended for trade.  The value of goods may in any
case not exceed 175 ECU.
Criminal procedures
19. Article 61 requires that criminal penalties be sufficient to provide a deterrent at least for
wilful trademark counterfeiting and copyright piracy.  Please explain how the penalties provided
under the laws of Spain comply with that obligation.
A glance at the penalties set out in the reply by Spain to question 24 on the Check-List of Issues
on Enforcement
10 provides confirmation of the deterrent nature of Spanish rules with respect to Article 61
of the TRIPS Agreement.
As mentioned in that reply, penalties may amount to four years imprisonment both for offences
regarding copyright and related rights and for industrial property offences.  Provision is also made for
other types of penalty, which may also be very severe.  For example, the temporary or permanent closureof the infringer's business may be ordered and the infringer disqualified from following his occupation in
connection with the offence for a period of up to five years.
                                                     
10 Document IP/N/6/ESP/1.IP/Q4/ESP/1
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[Follow-up questions from the United States]
1. Please provide statistical information related to civil copyright, trademark, geographical
indication, industrial design, patent, integrated circuit layout design and trade secret enforcement
for each of the years 1996 and 1997, including the number of cases filed;  injunctions issued;infringing products seized;  infringing equipment seized;  cases resolved (including settlement);
and the amount of damages awarded.
No official statistics concerning the above details have been collected.
2. Please provide statistical information related to criminal enforcement in the area of
copyright piracy and trademark infringement for each of the years 1996 and 1997, including thenumber of raids, prosecutions, convictions and the amount of fines and/or jail terms (including
whether the fines were paid and whether the jail term was actually served or was suspended) and
any other information establishing that your criminal system operates effectively to deter copyright
piracy and trademark counterfeiting.
No official statistics concerning the above details have been collected.  However, according to
statistics obtained by the Public Prosecutor's Office for 1996, criminal proceedings initiated for offences
against copyright and related rights totalled 322 and for industrial property offences 767.
3. Please describe whether and under what circumstances the provisional measures required
by Article 50 may be ordered without notice to the defendant.
The reply to the question whether provisional measures can be adopted  inaudita altera parte  is
yes, as explained in the reply by Spain to the Check-List of Issues on Enforcement.
In civil proceedings, Article 1428 of the Law on Civil Procedure regarding precautionary
measures allows this possibility in general, although the possible damage that may be caused to the
defendant because he has not been heard must be covered by a suitable security.  The circumstances in
which precautionary measures may be permitted without a previous hearing are not specified in the legal
texts but the principle followed is that they should be adopted in cases where such action seems fair and
when there is urgency or imminent danger of the purposes of Article 50 being frustrated if delay occurs as
a result of informing the defendant.  Prior notice is therefore laid down as a general rule and the adoptionof precautionary measures without giving notice should be regarded as exceptional and should be
reserved for situations of pressing need.
Specifically, in addition to precautionary measures  sensu stricto , Article 137 of the Intellectual
Property Law permits the judge,  inaudita altera parte , in the specific context of the protection of
computer programmes, to demand any reports and order any investigations he considers necessary.
Article 25, second paragraph, of the Unfair Competition Law likewise provides the possibility of
adopting precautionary measures  inaudita altera parte  "in cases of serious imminent danger", which must
be adopted "within 24 hours after submission of the application", with a secondary reference to the
general regime set out in Article 1428 of the Law on Civil Procedure.  Article 129 of the Law on Patentsand Utility Models also allows the judge to take this type of action during the collection of evidence, to
demand reports and to order any investigations he considers necessary.
The same measures can be adopted in criminal proceedings, and in addition it is possible to order
the preliminary investigation into the case to be kept confidential.
It only remains to point out that a preliminary draft of a new Law on Civil Procedure which will
regulate precautionary measures  inaudita altera parte  is currently under study.
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