Civil actions for registered trademarks
Civil actions for unregistered trademarks
Criminal actions for registered trademarks

Registered trademark rights may be enforced through the Commercial Courts of Barcelona, Madrid, Valencia, Granada, Las Palmas, A Coruña and Bilbao and through any criminal court. This article is part of a series on trademarks in Spain.(1)

Civil actions for registered trademarks

Among other things, the rights holder may seek the following remedies:

  • cessation of the infringing acts;
  • compensation for damages;
  • delivery or destruction of the infringing goods at the infringer's expense;
  • delivery or destruction of the means principally used to commit the infringement at the infringer's expense;
  • transfer of ownership of the infringing goods and the means intended to commit the infringement; and
  • publication of the judgment at the infringer's expense.

The compensation for damages is fixed, at the injured party's discretion, according to one of the following criteria:

  • the negative economic consequences suffered by the injured party, including the profits that the rights holder would have obtained if the infringement had not occurred or the profits obtained by the infringer as a consequence of the infringement; or
  • a lump sum amount that at least includes the amount that the infringer should have paid to the owner of the trademark for the granting of a licence.

Compensation for damages will also include moral damages and the expenses incurred by the rights holder during the investigations carried out to obtain reasonable evidence of the infringement.

In addition, the rights holder can request compensation for the damages caused to the prestige of the trademark – in particular, due to a faulty fabrication or inadequate presentation of the illicit goods.

The rights holder is also entitled to request interim measures to ensure the effectiveness of the judgment adopted in the main action.

Three criteria must be satisfied to obtain an interim injunction:

  • fumus boni iuris (ie, a prima facie case);
  • periculum in mora (ie, urgency); and
  • the provision of a bond to guarantee potential damages to the defendant.

An interim injunction may be issued either ex parte or following a contradictory hearing.

The Trademark Act sets no time limits for the pursuit of interim relief. However, as one of the criteria to be satisfied in order to obtain an interim injunction is urgency, the rights holder should file the corresponding request as soon as possible after becoming aware of the infringing acts.

Civil actions for unregistered trademarks

The Trademark Act grants protection to unregistered trademarks that are well known in Spain. Therefore, since an unregistered well-known trademark is considered almost equivalent to an unknown registered trademark, there are no difficulties in enforcing such rights.

Criminal actions for registered trademarks

Criminal proceedings can be commenced against those who intentionally manufacture, import, store or sell counterfeit goods. The legal penalties and remedies in criminal proceedings are:

  • imprisonment of between one and four years for manufacturing, importing, offering, distributing, commercialising or storing wholesale counterfeit goods;
  • imprisonment of between six months and three years for offering, distributing or commercialising retail sale counterfeit goods;
  • imprisonment of between six months and two years for street vending and occasional sale of counterfeit goods (if certain requirements are met, imprisonment can be substituted by a fine);
  • payment of damages (legal criteria established pursuant to article 43 of the Trademark Act); and
  • destruction of the infringing goods.

These penalties can be extended for up to six years if, among other reasons, the crime has a special economic significance or it has been committed by a criminal organisation or association.

Only the owners of registered trademarks can seek protection under criminal law.


The timeframe for civil actions for the protection of registered and unregistered trademarks is around one year at first instance and around two years for an appeal judgment.

For further information on this topic please contact Sonia Santos or Jesús Arribas at Grau & Angulo by telephone (+34 93 202 34 56) or email ([email protected] or [email protected]). The Grau & Angulo website can be accessed at


(1) For earlier articles in the series, please see:

This article first appeared in World Trademark Review Yearbook: A global guide for practitioners 2021/2022, a supplement to World Trademark Review, published by Law Business Research - IP Division. To view the guide in full, click here.