I.    SPANISH COURT CLAIMS

1.-First level of protection: registered rights

Spanish Law establishes a first level of protection: with respect to imitations of property registered intangible assets: or trademarks, patents or copy rights of registered software. This system is very similar in the different laws which we have been citing.

2.- Second level of protection: unregistered rights. Unfair imitation

Art. 11 of the Spanish Unfair Competition Law sets limits. Imitation is unfair if: (a) it can create association on behalf of the consumer or (b) it takes advantage of someone else’s reputation or effort. On the other hand, inevitable imitation is not unfair, for example, in the form of a product.

Imitation is also unfair in Spain if: it is systematic or it tries to impede / makes acceptance difficult in the competitor market; or it takes advantage of someone else´s reputation or effort in the market, according to Art. 12 of the Unfair Competition Law.

3.- Third level of protection: violation of secrets

A company’s intangible assets can also disappear, through removal of ‘know-how’ and Commercial or industrial secrets. Once again, all our legislation is organized to protect the accumulation of knowledge in several ways.

3.1.- The company, holder of inventions and creations

It is guaranteed that inventions, developed within the company, remain in possession of the latter.

3.2.- Unfair use of secrets

Art. 13 of the Unfair Competition Law prohibits disclosure or exploitation of industrial or business secrets, as much those known legitimately (with a duty of confidentiality) as illegitimately.

  • Not all disclosure is unfair.  It needs to have been done to obtain benefit, for the person concerned or someone else, or to be detrimental to the holder of the secret.
  • A business secret is information: secret information (not generally known nor accessible to the general public) with commercial value, protected by the company to keep it secret.
  • Not all knowledge acquired during employment is the ‘monopoly’ of the company

4.-Fourth level of protection: employees leaving

Another frequent way of losing ‘know-how’ is when qualified employees leave and go to work for a competitor.

II.- BRINGING LEGAL ACTION

1.- With respect to infringements of protected rights

The most frequent conflicts were traditionally cases of imitation. With respect to these cases, current legislation gave certain rights of action to injured parties. Art. 63 of the Spanish Patent Law, Art. 139 of the Spanish Intellectual Property Law, Art. 53 of the Spanish Design Law or Art. 41 of the Spanish Trademark Law.

The Spanish Unfair Competition Law also prohibits unfair imitations. But it goes further than that. It has other actions to defend the offended company, which are currently playing a bigger part: they forbid the violation of secrets and inducement of contractual infringement.

3.-Compensation

3.1. – Damages

Spanish laws allow the injured party to be awarded compensation for damages that the unlawful acts have caused. Damages include investments made.  Damages consist of profit loss, or loss of income, and is usually much more important (and more difficult to value.)

3.2.- Other compensations

Apart from general concepts, each law establishes specific compensation, for concrete cases. Therefore, the Intellectual Property Law talks about indemnity for moral damage, the Patent Law about loss of reputation, the Trademark Law says that compensation should be, at least, 1% of the offender’s total revenue.

III.- ASSURANCE OF A RESULT

The Spanish civil judicial proceedings to protect of intangible goods are usually slow. This delay can make a conviction useless. To avoid this, Spanish laws have created mechanisms to assure a result.

1.- Preliminary/ Evidence

The measures of assurance should be: possible, pertinent (that means, necessary) and useful (that means, aimed at the evidence), impossible to practice in the future and not cause serious damage.

2.- Precautionary Measures

These can be requested before the lawsuit or at the same time or at the start of the process. They are all aimed at avoiding that the slowness of the process makes the conviction void.

Santiago Nadal