JUAN CARLOS I REY OF SPAIN

To all who present it and understand it. Sabed: That the General Cortes have approved and I come to sanction the following law.

Reason exposure

I

The action of the European Union, in the field of intellectual property, has mainly focused on harmonising national substantive law or on creating directly applicable unitary rights in the European Community, by consider this area of priority intervention for the success of the internal market. In order to complete this action, it is necessary to make progress in the effective respect of intellectual property rights which have been harmonised or created.

Directive 2004 /48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights is intended to approximate legislation on the means of protection of intellectual property rights. intellectual property rights, in order to ensure a high, equivalent and homogeneous level of protection in the internal market. Under the name of intellectual property they are also included in Community law and, in particular, in this directive the rights which in the Spanish legal system are grouped under the name of industrial property. The effectiveness of the judicial protection of these rights has to be both in the promotion of innovation and the competitiveness of companies and in European cultural development. Their impact on such diverse areas as employment, market stability or consumer protection should also be taken into account. The directive also values such judicial protection as a means of preventing tax losses or of ensuring, ultimately, public order. Thus, in the Directive, the measures, procedures and resources necessary to ensure, in the face of any infringements, the effective protection of intellectual property rights, as provided for in Community law or in the national law of the Member State concerned.

II

In Spain, the regulation of measures, procedures and resources that guarantee respect for intellectual property and industrial property, understood in the broadest possible sense, in addition to actions of a criminal nature provided for in Articles 270 and following of the Penal Code that are applicable, is contained in Law 1/2000 of 7 January of Civil Procedure; in the recast text of the Law on Intellectual Property, approved by the Royal Legislative Decree 1/1996, of 12 April; in Law 11/1986, of 20 March, of Patents; in Law 17/2001, of 7 December, of Trademarks, and in Law 20/2003, of July 7, of legal protection of industrial design.

The aforementioned procedural and sectoral laws must be amended in order to complete the transposition of that Community law into our internal legal order, so that they can be offered, in the field of intellectual and industrial property, adequate and adequate means of judicial protection.

III

Under the name of the right of information, the directive considers it necessary to be able, in the field of civil proceedings, to obtain information on the origin and distribution networks of goods or services. in which the infringement of the intellectual or industrial property rights is specified. The Law provides for the possibility of requesting a civil court to request this information through a new preliminary diligence within the article 256 of Law 1/2000 of 7 January of Civil Procedure, although it limits its the possibility of the preparation of a trial for an infringement of a right of intellectual property or industrial property committed by acts carried out on a commercial scale, that is, those carried out for economic gain or direct or indirect trade.

Access to banking, financial or commercial documents that are under the control of the alleged infringer is regulated as the content of another preliminary new diligence, also in this case in relation to infringements of intellectual and industrial property rights committed by means of acts carried out for commercial purposes. The content of this preliminary diligence is also configured as trial diligence to facilitate obtaining evidence in the course of a court proceeding. The regulation of the practice of these new measures is presided over by the double caution to ensure the confidentiality of the information required and to prevent the data obtained from being used for purposes other than the preparation of the judgment. At the same time, the regulation of the judicial decision which agrees to the measures in the face of the refusal of the person required to carry out the preliminary proceedings is modified to require its adoption by means of a reasoned order and to introduce the of proportionality. The directive has required an express admission of the possibility of agreeing measures of assurance of the test before the initiation of the process and without the need to listen previously to the one who was to be sued. To this requirement, the procedure for the adoption of these measures has been followed up in detail. The general rule is the hearing to which the measure is to be supported; the exception, delaying the contradictory contrast on its origin to a subsequent incident, which guarantees the defence of the legitimate interests of those who must bear it. The provisions of Law 1/2000 of 7 January of Civil Procedure, relating to the assurance of proof, are extended in respect of cases of infringement of intellectual property rights and industrial property rights, to the enumeration, Indicative title, some of the measures which the court may adopt.

IV

It has also become necessary to make changes to the special laws that regulate this matter.

To repair the damage suffered by an infringement of the intellectual property right or industrial property right, the directive sets out two modules for the calculation of damages. The first of these modules includes, cumulatively, the negative economic consequences suffered by the injured party and also the moral damage. Alternatively, this allowance may consist of a lump sum, based on the remuneration which the injured party would have received if the infringer had asked for authorisation to use the intellectual or industrial property right. in question. Furthermore, in the determination of the amount of compensation, the costs incurred by the owner of the injured right in the investigation to obtain reasonable evidence from the commission of the infringement must be considered. The introduction of these criteria and elements implies modifying Article 140 of the recast text of the Law on Intellectual Property, approved by the Royal Legislative Decree 1/1996, of 12 April; Article 66 of Law 11/1986, of March 20, Patents; article 43 of Law 17/2001, of 7 December, of Trademarks, and Article 55 of Law 20/2003, of July 7, of legal protection of industrial design. Another amendment, common to these sectoral laws, is intended to extend the list of actions to be brought before the courts by the holder of the right of intellectual or industrial property infringed for the adoption of measures, the offender's expense where appropriate, which are aimed at preventing further infringements. It is also necessary to recognize the owner of the right of intellectual property or industrial property infringed upon the possibility of urging actions for the cessation of the illicit activity and the precautionary measures against the intermediaries. whose services are used by third parties to materialize the infringement. The full adequacy of these provisions requires the modification of Articles 138 and 139 of the recast of the Law on Intellectual Property, 63 and 135 of the Law of Patents, 41 of the Law on Marks and 53 of the Law on the Legal Protection of Industrial Design. The new wording of Article 132 of the recast text of the Law on Intellectual Property, approved by the Royal Legislative Decree 1/1996 of 12 April, responds to the requirement of the directive to establish in favour of the holders of other rights a presumption similar to that provided for in favour of copyright holders in the Berne Convention and in Article 6 (1) of the recast text of the Law on Intellectual Property. In order to establish new deterrent measures with regard to the commission of infringements against intellectual property, the catalogue of actions and urgent precautionary measures which the complainant can exercise and apply is extended. Article 138 is reformed to incorporate the possibility of calling for the full or partial publication of the judicial or arbitration resolution at the expense of the infringer. Also, in order to prevent an imminent infringement, the precautionary measure contained in Article 141.2, consisting of suspending any activity that damages an intellectual property right, is supplemented by the possibility of prohibiting this activity if has not yet been started. Certain precepts of Title XIII of Law 11/1986, of 20 March, of Patents, which also govern the judgments on trade marks and industrial design, are amended in accordance with Law 17/2001 of 7 December, of Marks, and with the Law 7/2003 of 7 July 2003 on the legal protection of industrial design. In the interests of greater clarity of the applicable rules, it is appropriate to specify in Article 129 of Law 11/1986 of 20 March of 20 March that the measures of verification of the facts provided for in this Law are without prejudice to the Preliminary proceedings under Law 1/2000 of 7 January of Civil Procedure. In addition, the catalogue of precautionary measures contained in Article 134 is extended by incorporating the one aimed at prohibiting acts that violate the right of the petitioner, in the face of the imminence of an infringement. The amendment to Article 139 (1) is in line with the need to establish proper compliance with the provisions of Law No 1/2000 of 7 January 2000, in respect of the determination of the time limit for the submission of the main application, the precautionary measures taken are requested prior to the filing of the claim. The same purpose of adaptation to civil procedural regulation after the reform introduced by Law 1/2000, of January 7, and the changes in the patent law since the Law 11/1986, of March 20, of Patents was promulgated, answers the the repeal of the article 128 of the latter, which has now lost its raison d' être and constitutes an exception within the principles that inspire the evidentiary activity and the procedural aid of the judge in the civil proceedings. Finally, the amendment of article 54 of Law 7/2003, of July 7, of legal protection of industrial design, is determined by the requirement to update the references to the articles of Law 1/2000, of January 7, of Impeachment Civil.

V

By means of the fourth final provision, two new final provisions are incorporated into Law 1/2000 of 7 January of Civil Procedure, which respond to the need to establish measures to facilitate the application in Spain of the Regulation (EC) No 805/2004 of the European Parliament and of the Council of 21 April 2004 establishing a European Enforcement Order for uncontested claims and Council Regulation (EC) No 2201/2003 of 27 November 2003 on jurisdiction and the recognition and enforcement of judgments in the field marriage and parental responsibility, for which Regulation (EC) No 1347/2000 is repealed.

VI

This law is dictated by the powers that the Spanish Constitution attributes to the State in Article 149.1.6. and 9. the Law is related to procedural law and intellectual and industrial property legislation.

Article first. Amendment of Law 1/2000 of 7 January of Civil Procedure.

Law 1/2000, of January 7, of Civil Procedure, is amended in the following terms: One. In Article 256 (1), the current number 7. º becomes 9. º and two new numbers are introduced, 7. º and 8. º, with the following wording:

"7." 7. By means of the application, formulated by the person seeking to exercise an action for infringement of an industrial property right or of an intellectual property right committed by means of acts developed at commercial level, measures to obtain data on the origin and distribution networks of goods or services which infringe an intellectual property right or industrial property right, and in particular the following: (a) the names and addresses of the producers, manufacturers, distributors, suppliers and suppliers of the goods and services, as well as those who, for commercial purposes, would have been in possession of the goods. (b) the names and addresses of wholesalers and retailers to whom the goods or services have been distributed. (c) the quantities produced, manufactured, delivered, received or commissioned, and the quantities satisfied as a price for the goods or services concerned and the models and technical characteristics of the goods. The proceedings shall consist of the questioning of: (a) Who the applicant considers to be the author of the violation. (b) who, on a commercial scale, has provided or used services or has been in possession of goods which may have injured industrial or intellectual property rights. (c) who, on a commercial scale, has used services or has been in possession of goods which may have injured industrial or intellectual property rights. (d) the person to whom the former has attributed intervention in the processes of production, manufacture, distribution or delivery of those goods and services. The application of these measures may be extended to the order of display of all documents certifying the data on which the interrogation is to be seen. 8. On request of the person seeking to exercise an action for infringement of an industrial property right or intellectual property right committed by means of acts developed on a commercial scale, of the display of bank documents, financial, commercial or customs, produced in a certain time and that they are presumed in power of who would be demanded as responsible. The application shall be accompanied by a principle of proof of the reality of the infringement which may consist in the presentation of a sample of the specimens, goods or products in which the infringement materializes. The applicant may request that the Registrar make a statement of the documents displayed if the requested person is not willing to release the document for incorporation into the due diligence. The same application may be made in relation to the last paragraph of the preceding number. For the purposes of numbers 7. and 8. of this paragraph, it is understood by acts developed on a commercial scale those that are carried out to obtain direct or indirect economic or commercial benefits. "

Two. Article 257 (1) is worded as follows:

" 1. It shall be competent to decide on the requests and requests referred to in the preceding article-the judge of first instance or of the commercial, where appropriate, of the address of the person who, where appropriate, must declare, display or intervene otherwise in the actions that will be agreed to prepare the trial. In the case of numbers 6, 7, 7, 8 and 9. of paragraph 1 of the previous Article, the court shall have jurisdiction in respect of the application for a given application. If, in such cases, new proceedings are sought, following the result of the hitherto practised proceedings, they may be called upon either by the same court or by the fact that, as a result of the facts found in the previous investigation, it would be competent to know of the same claim or new claims that may eventually accumulate. "

Three. Two new paragraphs, 3 and 4, are added to Article 259, with the following wording:

" 3. In the case of the proceedings of article 256.1.7., in order to ensure the confidentiality of the information required, the court may order the practice of the interrogation to be held behind closed doors. This decision shall be taken in the form set out in Article 138.3 and at the request of any person who has legitimate interest. 4. The information obtained by means of the proceedings of Article 256 (1) and Article 256 (1) shall be used exclusively for the protection of the rights of industrial property or intellectual property of the applicant for the measures, with a prohibition to disclose it or to communicate it to third parties. At the request of any interested party, the court may assign a reserved character to the proceedings, in order to ensure the protection of data and information which are confidential. '

Four. Article 261 is worded as follows:

" Article 261. Refusal to carry out the proceedings.

If the person cited and required does not comply with the requirement or object, the court shall, where proportionate, agree on the following measures, by means of a car, in which he shall express the reasons which require them: 1. If a statement has been made on facts relating to the capacity, representation or legitimation of the above, the questions which the applicant intends to ask and the relevant facts may be answered in the affirmative. considered eligible for the purposes of the subsequent judgment. 2. If the exhibition of titles and documents has been requested and the court will appreciate that there are sufficient indications that they can be found at a given place, they shall order the entry and registration of that place, if they are to be found, to occupy the documents and to make them available to the applicant, at the seat of the court. 3. If the display of a thing is treated and the place in which it is located is known or presumed, it shall be carried out in a manner similar to the one laid down in the preceding number and the matter shall be presented to the applicant, who may request the deposit or a guarantee measure that is more appropriate to the conservation of that. 4. If the display of accounting documents has been requested, the accounts and data presented by the applicant may be taken for certain purposes. 5. In the case of the proceedings provided for in Article 256.1.6., in the light of the refusal of the required person or of any other person who could assist in the determination of the members of the group, the court shall order that the measures of necessary intervention, including entry and registration, in order to find the necessary documents or data, without prejudice to the criminal liability in which the judicial authority may be liable for disobedience. Equal measures shall be ordered by the court in the cases of the numbers 5 bis, 7. and 8. of Article 256 (1), in the light of the refusal of the required document display. "

Five. Article 263 is worded as follows:

" Article 263. Preliminary proceedings provided for in special laws.

In the case of the proceedings referred to in Article 256.1.9., the provisions of this Chapter shall apply in so far as they do not object to the provisions of the special legislation on the matter in question. "

Six. Article 297 (2) is amended and a paragraph 4 is added with the following wording:

" 2. The measures shall consist of the provisions which, in the court's judgment, permit the preservation of things or situations or to make their reality and characteristics clearly recorded. For the purposes of securing the test, they may also be directed to do or not to do, under the warning of proceeding, if they violate them, for disobedience to the authority. In cases of infringement of industrial property rights and intellectual property rights, once the applicant of the measures has presented those evidence of the reasonably available infringement, such measures may in particular consist of: in the detailed description, with or without taking of samples, or the actual seizure of the goods and the litigious objects, as well as of the materials and instruments used in the production or distribution of these goods and of the documents related to them. " " 4. Where the measures for securing the test have been agreed before the start of the process, they shall be without effect if the applicant does not submit his application within 20 days of the date of the effective adoption of the measures of Agreed insurance. The court, of its own motion, shall agree by order that the acts of compliance which have been carried out shall be lifted or revoked, shall condemn the applicant on the coasts and declare that he is responsible for the damages which he has caused to the subject of which the measures were taken. "

Seven. The heading of Article 298 is amended and paragraphs 4, 5, 6, 7 and 8 are added to this Article with the following wording:

" Article 298. Requirements. Procedure for the adoption of test assurance measures. Plywood. "

" 4. The measures for securing the test shall be taken after hearing the person who has to bear it. If they are requested after the proceedings have been initiated, the defendant shall also be heard. Only those who were to be sued or who would have been sued may have argued, in opposing their adoption, the impossibility, impertinence or futility of the test. 5. Notwithstanding the foregoing paragraph, where the delay arising from the hearing is likely to cause irreparable damage to the right of the applicant of the measure or where there is a demonstrable risk of the destruction of evidence Or otherwise their practice will be made impossible if requested, the court will be able to agree the measure without further formalities, by means of providence. The providence shall specify, separately, the requirements which have been required by it and the reasons which have led to it being agreed without the defendant's hearing or who is to be sued. This providence is unfeasible and shall be notified to the parties and to whom it must be supported without delay and, if not possible before, immediately after the measures have been implemented. 6. If the insurance measure has been adopted without prior hearing, the person who is to be sued or who has already been or who has to bear it may, within the period of 20 days, express opposition from the notification of the providence that the agreed. 7. The opposition to the measure may be based on the absence of risks of irreparable damage in the right for the future practice of the test, as well as on the possibility of agreeing on other equally conducive measures that are less burdensome. It may also be replaced by the security provided for in paragraph 3. Only those who are to be sued or have already been sued will be able to claim the impossibility, impertinence or futility of the test. 8. The notice of opposition shall be given to the applicant and, where appropriate, to the defendant or to whom the measure is to be supported. All of them shall be summoned to a hearing within five days of the conclusion of which shall be decided on the opposition within three days by means of a car which is not subject to appeal. '

Eight. A new paragraph, 3, is incorporated into the article-328 with the following wording:

" 3. In the case of proceedings for infringement of an industrial property right or intellectual property right committed on a commercial scale, the application for an exhibition may be extended, in particular, to bank, financial, trade or customs produced in a certain period of time and which are presumed to be held by the defendant. The application shall be accompanied by a principle of proof which may consist in the presentation of a sample of the specimens, goods or products in which the infringement has materialised. At the request of any interested party, the court may assign a reserved character to the proceedings, in order to ensure the protection of data and information which are confidential. '

Nine. Article 733 (2) is hereby worded as

:

" 2. By way of derogation from the above paragraph, where the applicant so requests and accredits urgent reasons or that the prior hearing may compromise the good purpose of the precautionary measure, the court may agree to it without further formalities. by order, within a period of five days, in which he shall reason separately on the concurrence of the requirements of the precautionary measure and the reasons which have advised him to agree without hearing the defendant. Against the order of the defendant, without prior hearing of the defendant, no recourse shall be made and shall be within the meaning of Chapter III of this Title. The order shall be notified to the parties without delay and, if not possible before, immediately after the measures have been implemented. '

Article 2. Amendment of the recast text of the Law on Intellectual Property, approved by the Royal Legislative Decree 1/1996 of 12 April.

The recast text of the Law on Intellectual Property, approved by the Royal Legislative Decree 1/1996 of 12 April, is amended in the following terms: One. Article 132 is worded as follows:

" Article 132. Subsidiary application of provisions in book I.

The provisions of Article 6.1, Section 2, Chapter III of Title II and Chapter II of Title III, both in book I, shall apply, in the alternative and in the appropriate manner, to the other rights of intellectual property regulated in this book. "

Two. Article 138 is worded as follows:

" Article 138. Urgent precautionary measures and actions.

The holder of the rights recognized in this law, without prejudice to other actions that correspond to him, may urge the cessation of the illicit activity of the offender and demand compensation for the material and moral damages caused, in the terms laid down in Articles 139 and 140. It may also call for the publication or dissemination, in whole or in part, of the judicial or arbitration resolution in the media at the expense of the infringer.

You may also request the adoption of the emergency protective protective measures as referred to in Article 141. Both the specific cessation measures referred to in Article 139.1 (g) and the precautionary measures provided for in Article 141.6 may also be requested, where appropriate, against intermediaries whose services a third party uses. to infringe on intellectual property rights recognised in this law, even if the acts of such intermediaries do not themselves constitute an infringement, without prejudice to the provisions of Law 34/2002 of 11 July on the services of the company the information and the electronic commerce. Such measures shall be objective, proportionate and non-discriminatory. "

Three. The wording of paragraphs (c) and (d) is amended and a new subparagraph (g) is added to Article 139 (1):

" (c) The withdrawal of trade in illicit specimens and their destruction, including those in which electronic information for the management of rights has been deleted or altered without authorization or whose protection technology has been eluded. This measure shall be implemented at the expense of the infringer, unless justified reasons are provided for.

(d) The removal of the commercial circuits, inuse, and, where necessary, the destruction of the moulds, plates, matrices, negatives and other material elements, equipment or instruments intended primarily for the reproduction, creation or manufacture of illicit specimens. This measure shall be implemented at the expense of the infringer, unless justified reasons are alleged to have not been so. '

" (g) The suspension of services provided by intermediaries to third parties which are valid for them to infringe intellectual property rights, without prejudice to the provisions of Law 34/2002 of 11 July, of services of the the information society and electronic commerce. "

Four. Article 140 is worded as follows:

" Article 140. Compensation.

1. The compensation for damages due to the owner of the infringement shall not only include the value of the loss suffered, but also the value of the profit which he has ceased to obtain because of the violation of his right. The amount of compensation may include, where appropriate, the research expenditure incurred in order to obtain reasonable evidence from the commission of the infringement which has been the subject of the judicial procedure.

2. Compensation for damages shall be fixed, at the discretion of the injured party, in accordance with any of the following criteria:

(a) The negative economic consequences, including the loss of profits suffered by the injured party and the profits that the infringer has obtained from the illicit use.

In the case of moral damage, there will be compensation, not yet proven the existence of economic damage. For their assessment, the circumstances of the offence, the seriousness of the injury and the degree of illicit dissemination of the work will be considered. (b) the amount which the injured party would have received if the infringer had asked for authorisation to use the intellectual property right in question.

3. The action to claim the damages referred to in this article will be prescribed at the age of five years since the legitimized was able to exercise it. "

Five. Article 141 (2) is amended as follows:

" 2. The suspension of the activity of reproduction, distribution and public communication, as appropriate, or of any other activity constituting an infringement for the purposes of this law, as well as the prohibition of such activities if they have not yet been put into practice. "

Article 3. Amendment of Law 11/1986 of 20 March of Patents.

One. Article 63 is amended as follows:

" Article 63.

1. The holder whose right of patent is injured may, in particular, request: (a) the cessation of acts which violate his or her right.

b) Compensation for damages suffered. (c) the seizure of the objects produced or imported in violation of their rights and of the means principally intended for such production or the conduct of the patented procedure. (d) the attribution of the objects or means taken on board under the provisions of the preceding paragraph where possible, in which case the value of the goods concerned shall be imputed to the amount of the compensation for damages. If the value mentioned exceeds the amount of the allowance granted, the owner of the patent shall compensate the other party for the excess. (e) the adoption of the measures necessary to prevent the infringement of the patent and, in particular, the processing of the objects or means taken on board under the provisions of paragraph c), or their destruction, where such essential to prevent infringement of the patent. (f) the publication of the judgment of the offender of the patent, at the expense of the sentenced person, by means of notices and notices to the persons concerned. Such a measure shall apply only where the judgment expressly so appreciates.

2. The measures referred to in paragraphs (c) and (e) shall be carried out by the infringer, unless justified reasons are provided for.

3. The measures referred to in paragraphs (a) and (e) of this Article may also be requested, where appropriate, against intermediaries whose services a third party uses to infringe patent rights, even if the acts of such intermediaries do not themselves constitute an infringement, without prejudice to the provisions of Law 34/2002 of 11 July on the services of the information society and electronic commerce. Such measures shall be objective, proportionate and non-discriminatory. "

Two. Article 66 (1) and (2) are hereby worded as

:

" 1. The compensation for damages due to the owner of the patent shall include not only the value of the loss he has suffered, but also the value of the gain that the holder has ceased to obtain because of the violation of his right. The amount of compensation may include, where appropriate, the research expenditure incurred in order to obtain reasonable evidence from the commission of the infringement which has been the subject of the judicial procedure.

2. In order to fix the compensation for damages, account shall be taken of the injured party:

(a) The negative economic consequences, including the benefits that the operator would have been expected to derive from the exploitation of the patented invention if there had not been competition from the infringer and the profits that the latter has obtained from the exploitation of the patented invention.

In the case of moral damage, there will be compensation, not yet proven the existence of economic damage. (b) the amount that the infringer would have had to pay to the owner of the patent for the grant of a licence which would have allowed him to carry out his exploitation in accordance with the law. For their fixing, account shall be taken, inter alia, of the economic importance of the patented invention, the duration of the patent at the time the infringement began and the number and class of licences granted at that time. '

Three. Article 129 (1) is worded as follows:

" 1. The person entitled to exercise the actions arising from the patent may ask the judge to act as a matter of urgency in order to ascertain the facts which may constitute a violation of the exclusive right granted by the patent, without prejudice to those which may be requested pursuant to Article 256.1 of Law 1/2000 of 7 January of Civil Procedure. "

Four. The first precautionary measure in Article 134 is read as follows:

"1.) The cessation of acts that violate the right of the petitioner or his prohibition, where there are rational indications to assume the imminence of such acts."

Five. Article 135 is worded as follows:

" Article 135.

The precautionary measures referred to in Article 1 (1) may also be requested, where appropriate, against intermediaries whose services are used by a third party to infringe patent rights, although the acts of such intermediaries do not themselves constitute an infringement, without prejudice to the provisions of Law 34/2002 of 11 July of the services of the information society and electronic commerce. Such measures shall be objective, proportionate and non-discriminatory. "

Six. Article 139 (1) is hereby worded as

:

" 1. In the case of a request for precautionary measures before the main action is exercised, they shall be without effect in their entirety if the application is not filed within the time limit laid down in Article 730.2 of Law No 1/2000 of 7 January 2000. Civil Prosecution. "

Article 4. Amendment of Law 17/2001 of 7 December of Marks.

Law 17/2001 of 7 December of Marks is amended as follows: One. Article 41 (1) is amended and paragraph 3 is added with the following wording:

" Article 41. Civil actions that can be exercised by the owner of the trademark.

1. In particular, the holder whose trademark is injured may claim on the civil road: (a) the cessation of acts which violate his or her right.

b) Compensation for damages suffered. (c) the adoption of the measures necessary to prevent the continuation of the violation, and in particular the removal of the products, packaging, packaging, advertising material, labels or other documents in which the product is being processed from the economic traffic; (a) the infringement of the trade mark law and the embargo or the destruction of the media primarily intended to commit the infringement. These measures will be implemented at the expense of the infringer, unless justified reasons are alleged for this to be the case. (d) destruction or disposal for humanitarian purposes, if possible, at the choice of the actor, and at the expense of the offender, of the products unlawfully identified with the mark in possession of the offender, unless the nature of the product the removal of the distinguishing sign without affecting the product or the destruction of the product would cause a disproportionate damage to the infringer or the owner, depending on the specific circumstances of each case assessed by the Court. (e) the attribution of the goods, materials and means taken on board pursuant to paragraph c) where possible, in which case the value of the goods concerned shall be charged to the amount of the compensation for damages. If the value referred to above exceeds the amount of the allowance granted, the proprietor of the right of trade must compensate the other party for the excess. (f) The publication of the judgment at the expense of the sentenced person by means of notices and notices to the persons concerned. "

" 3. The measures referred to in paragraphs (a) and (c) of this Article may also be requested, where appropriate, against intermediaries whose services a third party uses to infringe trade mark rights, even if the acts of such intermediaries do not themselves constitute an infringement, without prejudice to the provisions of Law 34/2002 of 11 July on the services of the information society and electronic commerce. Such measures shall be objective, proportionate and non-discriminatory. "

Two. Article 43 (1) and (2) shall be worded as

:

" 1. The compensation for damages shall include not only the losses incurred, but also the profits left from obtaining by the proprietor of the trade mark cause of the violation of his right. The proprietor of the trade mark may also require compensation for the damage caused to the prestige of the mark by the infringer, in particular by a defective performance of the products unlawfully marked or an inadequate presentation of that on the market. In addition, the amount of compensation may include, where appropriate, the research costs incurred in obtaining reasonable evidence from the commission of the infringement which is the subject of the judicial procedure.

2. In order to fix the compensation for damages, account shall be taken of the injured party:

(a) The negative economic consequences, including the benefits that the holder would have obtained by using the mark if the breach and the profits that the offender has obtained would not have taken place as a result of the violation.

In the case of moral damage, there will be compensation, not yet proven the existence of economic damage. (b) the amount which the infringer would have had to pay for the grant of a licence which would have allowed it to be used in accordance with the law. "

Article 5. Amendment of Law 20/2003, of July 7, of legal protection of industrial design.

Law 20/2003, of July 7, of legal protection of industrial design, is amended in the following terms: One. Paragraphs (c) and (e) of Article 53 (1) are amended and paragraph 3 is added with the following wording:

" (c) The adoption of the measures necessary to prevent the continuation of the infringing activity and, in particular, the removal of the products in which the violation of their right has materialised and the embargo or the destruction of the media primarily intended to commit the offence. Such measures shall be carried out at the expense of the infringer, unless justified reasons are provided for such action. " " (e) Alternatively, the delivery of the means or objects referred to in paragraphs (c) and (d) of paragraph 1, at the cost price and for their corresponding compensation for damages, where possible and this measure shall be provided in the light of the circumstances of the infringement assessed by the court. If its value exceeds the amount of the allowance granted, the design holder shall compensate the other party for the excess. ' " 3. The measures referred to in paragraphs (a) and (c) of paragraph 1 of this Article may also be requested, where appropriate, against intermediaries whose services a third party uses to infringe rights recognised in this law, although the acts of such intermediaries do not themselves constitute an infringement, without prejudice to the provisions of Law 34/2002 of 11 July of the services of the information society and electronic commerce. Such measures shall be objective, proportionate and non-discriminatory. "

Two. Article 55 (1), (2) and (4) shall be worded as

:

" 1. Compensation for damages shall include not only the losses incurred, but also the profits left from obtaining by the owner of the design because of the violation of his right. The owner of the registered design may also require compensation for the damage caused to the prestige of the design by the infringer, in particular by defective performance of the products illegally marketed, the defective performance of the imitations or the conditions in which they were placed on the market. In addition, the amount of compensation may include, where appropriate, the research costs incurred in obtaining reasonable evidence from the commission of the infringement which is the subject of the judicial procedure.

2. In order to fix the compensation for damages, account shall be taken of the injured party:

(a) The negative economic consequences, including the benefits that the operator would have obtained from the design exploitation if the violation of his right and the profits made by the infringer had not taken place consequence of the infringement of the right of the registered design holder.

In the case of moral damage, there will be compensation, not yet proven the existence of economic damage. (b) the amount that the infringer would have had to pay due to the owner of the design for the grant of a licence which would have allowed him to carry out the operation of the design in accordance with the law. "

" 4. In order to fix the amount of damages suffered, the owner of the design may require, in accordance with the provisions of Article 256.1.9. and Article 328 of Law 1/2000, of January 7, of Civil Procedure, the exhibition of the documents of the alleged person responsible for the violation of the right, which may serve that purpose. "

Single transient arrangement. Jurisdictional processes.

The jurisdictional proceedings initiated before the entry into force of this Law will be dealt with in accordance with the procedural rules in force before it.

Single repeal provision. Regulatory repeal.

All provisions of equal or lower rank that are contrary to the provisions of this Law shall be repealed.

Article 128 of Law 11/1986, of March 20, of Patents is repealed.

Final disposition first. Constitutional foundation.

This Law is dictated by the provisions of Article 149.1.6. and 9. of the Constitution, relating to procedural law and intellectual and industrial property legislation, respectively.

Final disposition second. Incorporation of Community law.

This Law incorporates into Spanish law the provisions of Directive 2004 /48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights.

Final disposition third. Amendment of Law 1/2000 of 7 January of Civil Procedure.

A number 5. bis is introduced in Article 256 of the Civil Procedure Act with the following wording:

" 5. By the request of the medical history to the sanitary or professional center that the custodian, in the conditions and with the content that establishes the law. "

Final disposition fourth. Measures to facilitate the application in Spain of various Community regulations on civil judicial cooperation.

Law 1/2000, of January 7, of Civil Procedure, is amended in the following terms: One. The present final disposition twenty-first becomes the twentieth third and a new final disposition twenty-first is introduced with the following wording:

" Final Disposition Twenty-First. Measures to facilitate the application in Spain of Regulation (EC) No 805/2004 of the European Parliament and of the Council of 21 April 2004 establishing a European Enforcement Order for uncontested claims.

1. The judicial certification of a European Enforcement Order shall be adopted separately and by means of providence in the form set out in Annex I to Regulation (EC) No 805/2004.

The competence to certify a European executive title corresponds to the same court that issued the resolution. The procedure for correcting errors in a European executive title provided for in Article 10 (1) (a) of Regulation (EC) No 805/2004 shall be settled in the manner provided for in the first three paragraphs of Article 267 of the Organic Law. 6/1985, of July 1, of the Judiciary. The procedure for the revocation of the issue of a certificate of a European executive title referred to in Article 10.1.b of Regulation (EC) No 805/2004 shall be processed and resolved in accordance with the provisions of the replenishment facility. The law of the Court of Justice of the Court of Justice of the European Court of Justice of the European Union The refusal to issue a European Enforcement Order certificate shall be adopted separately and by means of providence, and may be challenged by the proceedings of the replacement appeal. 2. For certification as a European executive title of judicial decisions approving or approving transactions, the preceding paragraph shall be applied and shall be carried out in the form set out in Annex II to Regulation (EC) No 805/2004. 3. The issuing of the certificate provided for in Article 25 (1) and Annex III to Regulation (EC) No 805/2004 shall be the responsibility of the authorising notary, or who is legally in the position of replacing or succeeding in his protocol. It shall be recorded on the basis of a note in the matrix or policy, and shall archive the original which shall be circulated by copy. It shall be for the notary under whose protocol the European Enforcement Certificate is to be found to issue the certificate relating to its material error and revocation as provided for in Article 10.1 of Regulation (EC) No 805/2004 and the as referred to in Article 6.2 and in Annex IV to the same Regulation, resulting from the lack or limitation of enforceability. The loss of enforceability arising from a judicial decision is excepted for the certification of which will be referred to in paragraph 1 of this additional provision. In any case, the correction, revocation, lack or limitation of enforceability must be recorded in the matrix or policy. The refusal of the notary to issue the required certificates may be challenged by the person concerned before the General Directorate of the Registers and the Notary for the proceedings of the complaint provided in the notarial legislation. Against the decision of this management body, recourse may be made, in a single instance, before the judge of first instance of the capital of the province where the notary has his domicile, which will be resolved by the proceedings of the verbal judgment. 4. The certification referred to in Annex V to Regulation (EC) No 805/2004 shall be issued by the administrative or judicial body which issued the decision. 5. Territorial jurisdiction for the enforcement of judgments, court transactions and public documents certified as a European Enforcement Order shall correspond to the court of first instance of the defendant's domicile or place of execution. 6. The Government shall adopt the detailed rules for the development of this additional provision. "

Two. A new twenty-second final provision is introduced with the following wording:

" Final Disposition twenty second. Measures to facilitate the application in Spain of Council Regulation (EC) No 2201/2003 of 27 November 2003 on jurisdiction and the recognition and enforcement of judgments in matrimonial matters and in matters of liability parental responsibility, for which Regulation (EC) No 1347/2000 is repealed.

1. The judicial certification relating to judgments in matrimonial matters and in matters of parental responsibility, as provided for in Article 39 of Regulation (EC) No 2201/2003, shall be issued separately and by means of providence, by completing the corresponding form set out in Annexes I and II to the said Regulation.

2. The judicial certification relating to judicial decisions on the right of access, as provided for in Article 41 (1) of Regulation (EC) No 2201/2003, shall be issued separately and by means of providence, completing the form in Annex III to that Regulation. 3. The judicial certification relating to judgments on the return of the child, as provided for in Article 42 (1) of Regulation (EC) No 2201/2003, shall be issued separately and by means of provision, the form set out in Annex IV to the said Regulation. 4. The procedure for the rectification of errors in judicial certification, provided for in Article 43.1 of Regulation (EC) No 2001/2003, shall be settled in the manner laid down in the first three paragraphs of Article 267 of the Organic Law. 6/1985, of July 1, of the Judiciary. The same procedure shall be observed for the rectification of the judicial certification referred to in paragraph 1 of this final provision. No recourse shall be made against the decision in respect of the clarification or rectification of the judicial certification referred to in the preceding three paragraphs. 5. Refusal of the issue of the judicial certification referred to in paragraphs 1, 2 and 3 of this final provision shall be adopted separately and by means of provision, and may be challenged by the proceedings of the replacement. "

Final disposition fifth. Entry into force.

This law shall enter into force on the day following that of its publication in the "Official Gazette of the State".

Therefore,

I command all Spaniards, individuals and authorities, to keep and keep this law.

Madrid, 5 June 2006.

JOHN CARLOS R.

The President of the Government, JOSÉ LUIS RODRÍGUEZ ZAPATERO