Extension of enforcement measures against piracy in the Trademark Law

Tuesday, 23 of April of 2019

Among the legislative developments of the Spanish Trademark Law which came into force on January 14, 2019 we want to highlight an important measure that increases the protection of the owners against acts of piracy.

We refer to the amendments implemented in Article 34 of the Law, that increase measures to fight against counterfeiting, by enabling holders of registered trademarks to prevent third parties from introducing products from third countries into Spain, without being released for free circulation.

In order to exercise this right, such products (or their packaging) must have, without authorization, a trademark incompatible with a registered trademark in Spain, either because they incorporate an identical or virtually identical sign in its essential aspects of the registered trademark.

These measures are aimed at those products coming from third countries, even when said products are not going to be placed on the Spanish market (goods in transit).

It should be noted that an exception to the exercise of this right is established: it cannot be exercised if the declarant or owner of the goods in question is able to prove, during the procedure to determine whether the registered trademark is infringed, that the owner of the Trademark has no right to prohibit the marketing of the goods in the destination country of the merchandise.

The amendments to the Law reinforce the protection of the trademarks within the framework of the obligations assumed by the member states of the World Trade Organization, by extending the measures of defense of trademark owners against counterfeiting in customs transit, allowing stopping products in transit, even if they will not be marketed in Spain.

These measures are very well received, as they strengthen the protection of the trademark rights, and represent going one step further in the fight against piracy.