In brief
- Intellectual and industrial property offences protect creative works and content, software, designs, trade marks, patents, utility models, plant varieties and designations of origin.
- The basic intellectual property (copyright) offence is punishable by six months to four years’ imprisonment and a fine of twelve to twenty-four months, and may be committed through traditional channels or online.
- Manufacturing, importing or wholesale marketing of products bearing a registered trade mark without authorisation is punishable by imprisonment of one to four years and a fine of twelve to twenty-four months; infringement of patents, utility models, designs and topographies, by six months to two years’ imprisonment and a fine of twelve to twenty-four months.
- In aggravated cases the penalty is two to six years’ imprisonment, a fine of eighteen to thirty-six months and a ban on practising the profession related to the offence for two to five years.
- The company may be criminally liable, with a fine calculated on the profit obtained or that could have been obtained.
Intellectual and industrial property offences (delitos relativos a la propiedad intelectual e industrial) protect assets that are essential to many businesses: creative works and content, software, designs, trade marks, patents, utility models, plant varieties and designations of origin. Criminal protection does not replace protection through registration or contract, but it may apply where unauthorised exploitation reaches the level of seriousness laid down in the Spanish Criminal Code.
Intellectual property (copyright) offences
This offence is committed by anyone who, with the intention of obtaining a direct or indirect financial benefit and to the detriment of another person, reproduces, plagiarises, distributes, communicates to the public or commercially exploits, in whole or in part, a literary, artistic or scientific work without the authorisation of the rights holders or their assignees.
Protection also extends to transformations of the work and to artistic performances fixed in any medium or disseminated by any means. It may affect, for example, books, photographs, videos, music, courses, graphic designs, digital content and computer programs. Works of visual art applied to commercial products may also be protected where they have the necessary originality.
Online infringement and related conduct
The conduct may be committed through traditional channels or online. It is also an offence for anyone who, through an information society service, actively and non-neutrally facilitates access to or the location of unauthorised protected content, for example by means of organised lists of links, where that activity goes beyond merely technical processing.
Certain conduct related to the main infringement is also punishable:
- exporting or storing copies intended for reproduction, distribution or communication to the public;
- importing products intended for those purposes;
- removing or altering technological protection measures;
- facilitating the circumvention of those measures;
- manufacturing, importing, putting into circulation or possessing for commercial purposes means primarily designed to neutralise the protection of computer programs or other works.
What is the penalty for an intellectual property offence?
The basic offence carries six months to four years’ imprisonment and a fine of twelve to twenty-four months (day-fine system).
Street or merely occasional distribution or marketing is punishable by six months to two years’ imprisonment. Taking into account the characteristics of the offender and the small amount of the profit obtained or obtainable, and provided there is no aggravating circumstance, the judge may replace that penalty with a fine of one to six months or community service of thirty-one to sixty days.
The offence is aggravated where:
- the financial benefit is of particular significance;
- the facts are particularly serious owing to the value or number of copies or the extent of the harm;
- the offender belongs to an organisation engaged in such infringements;
- minors are used.
In these cases, the penalty is two to six years’ imprisonment, a fine of eighteen to thirty-six months and a ban on practising the profession related to the offence for a period of two to five years.
Business example: a company markets its own courses using, without authorisation, the slides, videos and teaching materials produced by another company, or distributes digital copies of that content to its customers. If there is a financial purpose and harm to the rights holder, the conduct may be criminally as well as civilly relevant.
Industrial property offences
Industrial property protects, among other assets, trade marks and other distinctive signs, patents, utility models, industrial designs, topographies of semiconductor products, plant varieties and protected designations of origin or geographical indications.
Trade marks and distinctive signs
It is an offence to manufacture, produce or import products bearing a sign identical to or confusingly similar with a registered trade mark, where this is done for industrial or commercial purposes, without the owner’s authorisation and with knowledge of the registration. It is also an offence to offer, distribute or market such products wholesale, or to store them for that purpose.
This conduct carries imprisonment of one to four years and a fine of twelve to twenty-four months.
Retail marketing, the provision of services or the carrying on of activities using identical or confusingly similar signs for identical or similar goods or services is punishable by six months to three years’ imprisonment. Reproducing or imitating the sign for use in that conduct carries the same penalty.
Street or occasional selling is punishable by six months to two years’ imprisonment. Under the conditions laid down by law, the judge may instead impose a fine of one to six months or community service of thirty-one to sixty days.
It is not necessary for a consumer to have actually been deceived for there to be a criminal trade mark infringement. What matters is the unauthorised use of an identical or confusingly similar sign in the course of trade and the infringement of the owner’s exclusive right.
Patents, utility models, designs and topographies
It is an offence to manufacture, import, possess, use, offer or place on the market, for industrial or commercial purposes and without the owner’s consent, objects protected by a registered patent or utility model, with knowledge of that registration. It is also an offence to use or offer a patented process, or to market or use the product obtained directly by means of that process.
The same protection extends to objects protected by an industrial or artistic model or design and by a topography of a semiconductor product. The penalty is six months to two years’ imprisonment and a fine of twelve to twenty-four months.
Criminal protection requires the right relied on to be valid and in force. For this reason, the registration status of the title and its scope are relevant factors in assessing criminal risk.
Mere commercial similarity is not sufficient in itself: it must be examined whether the product or process falls within the registered right and whether the knowledge and purpose required by the offence are present.
Plant varieties and protected designations
It is an offence to produce, reproduce, condition, offer, sell, market, export, import or possess, for agricultural or commercial purposes and without authorisation, plant reproductive or propagating material of a protected variety. The same penalty applies where material is presented as belonging to a protected variety when it does not in fact belong to it. The penalty is one to three years’ imprisonment.
It is also an offence to use intentionally and without authorisation, in the course of trade, a designation of origin or protected geographical indication to distinguish products covered by it, with knowledge of that protection. The penalties laid down for infringements of distinctive signs apply: one to four years’ imprisonment and a fine of twelve to twenty-four months.
There is also a specific offence for anyone who intentionally discloses, in breach of patent legislation and to the detriment of national defence, an invention that is the subject of a secret patent application. The penalty is six months to two years’ imprisonment and a fine of six to twenty-four months.
Aggravation
Industrial property offences are aggravated where:
- the profit obtained or obtainable is of particular economic significance;
- the facts are particularly serious owing to the value of the products or the extent of the harm;
- the offender belongs to an organisation engaged in such infringements;
- minors are used.
The penalty then becomes two to six years’ imprisonment, a fine of eighteen to thirty-six months and a ban on practising the profession related to the offence for two to five years.
Business example: a distributor acquires and stores for wholesale products bearing a registered trade mark without authorisation, even though the products are offered at a price that would lead the buyer to suspect that they are not genuine. Manufacturing, storing and marketing may give rise to criminal and civil liability.
Can the company be criminally liable for these offences?
A legal person (company) may be criminally liable for intellectual property offences and for the main industrial property offences where the act is committed in its name or on its behalf, for its direct or indirect benefit, by its directors or representatives, or by employees subject to their authority where there has been a serious failure to fulfil the duties of supervision, monitoring and control.
For intellectual property offences and for offences relating to trade marks, patents, utility models, designs, plant varieties and protected designations, the company’s main penalty is a fine calculated on the profit obtained or that could have been obtained. Depending on the penalty applicable to the natural person, it may range from two to four times or from two to three times that profit.
Other penalties may also be imposed on the legal person, such as dissolution, suspension of activities, closure of premises, prohibition from carrying out certain activities, judicial administration or a ban on contracting with the public sector, in accordance with the applicable general rules.
Having compliance protocols does not automatically exclude liability, but a compliance programme (organisation and management model) that has been effectively implemented and enforced may be relevant in assessing whether the required supervisory duties were fulfilled.
Civil liability and other consequences
A conviction may give rise to compensation for the loss and damage caused.
In intellectual property, compensation may include the loss suffered, the profit forgone, the profits obtained by the infringer, reasonable investigation costs and, where appropriate, non-pecuniary (moral) damage. The rights holder may also seek cessation of the unlawful activity, withdrawal and destruction of copies, materials and equipment used for the infringement, and other measures to prevent further exploitation.
In industrial property, compensation may include loss of profits, the profits obtained by the infringer, the amount that would have been paid for a legitimate licence and, where applicable, non-pecuniary or reputational damage. The amount may be set in the judgment or determined subsequently on the basis established by the court.
Confiscation and destruction of unlawful products, instruments and materials, withdrawal of the products from the market and publication of the judgment at the convicted person’s expense may also be ordered. These consequences may directly affect the continuity of a business line, commercial reputation and relationships with distributors and customers.
Frequently asked questions
What is the penalty for street or occasional sale of products infringing copyright or trade marks?
It is punishable by six months to two years’ imprisonment. Under the conditions laid down by law, the judge may instead impose a fine of one to six months or community service of thirty-one to sixty days.
Does a consumer have to be deceived for there to be a trade mark offence?
No. It is not necessary for a consumer to have actually been deceived. What matters is the unauthorised use of an identical or confusingly similar sign in the course of trade and the infringement of the owner’s exclusive right.
Is it enough for a product to resemble a patented one for there to be an offence?
No. Mere commercial similarity is not sufficient in itself: it must be examined whether the product or process falls within the registered right and whether the knowledge and purpose required by the offence are present. Criminal protection also requires the right relied on to be valid and in force.
What penalty is imposed on a company for an intellectual or industrial property offence?
The main penalty is a fine calculated on the profit obtained or that could have been obtained which, depending on the penalty applicable to the natural person, may range from two to four times or from two to three times that profit. Other penalties, such as dissolution, suspension of activities or closure of premises, may also be imposed.