Someone has copied the registered design of your product

The case, in five lines

What is brought

Civil action for infringement of a registered design under articles 52 to 55 of Law 20/2003 (or article 19 of Regulation (EC) 6/2002 if it is a European Union design), combining the injunction, withdrawal of the goods from the market, their destruction, publication of the judgment and damages, with fact-finding measures and interim measures under the Patents Act, to which the design statute refers.

Before which court

National design: the Commercial Section of the Tribunal de Instancia (the first-instance court) in the city that is seat of the Tribunal Superior de Justicia (the regional high court), in the post the CGPJ (the General Council of the Judiciary) has specialised in industrial property, the one for the defendant's domicile or, at the claimant's option, for the place where the infringement was committed or took effect. European Union design, or both rights combined: the Commercial Section of the Tribunal de Instancia of Alicante, acting as the Tribunal de Marca de la Unión Europea (the EU trade mark and design court) with jurisdiction over the whole of Spain.

Deadline

Prescription of five years from the day the action could have been brought (art. 57.1 Law 20/2003); in a continuing infringement, each act of sale opens its own period. Damages reach only the acts of the five years preceding the claim (art. 57.2). The request to negotiate beforehand interrupts prescription (art. 7.1 LO 1/2025). After fact-finding measures there are thirty working days to file the claim.

Who can bring it

Claimant: the owner of the registered design; each co-owner may sue alone, notifying the others (art. 58.2.d). A licensee, only with the owner's express authorisation unless otherwise agreed; an exclusive licensee may call on the owner and sue itself if the owner does not act within three months (art. 61). Defendant: whoever manufactures, imports, offers, markets, stocks or uses the product; for money, the manufacturer, importer and first seller always, and the rest after a formal warning or where they acted with fault (art. 54).

Financial risk

The losing party usually bears the costs. Interim measures require security and, if they are lifted or the case is lost, you answer for the harm they caused the defendant. And the risk specific to this case: the defendant almost always seeks nullity of your registration for lack of novelty or individual character, and if it succeeds, the design is cancelled with effect against everyone.

What is compared is what you registered, not what you sell

Article 47 of Law 20/2003 sets the reach of your right: protection extends to any design that does not produce a different overall impression on the informed user. The copy need not be identical. Changing the colour of the base, printing another logo or altering a dimension by a few millimetres does not save the imitator if, viewed as a whole, both products leave the same impression. Article 10 of Regulation (EC) 6/2002 says the same for the European Union design.

The point of comparison, and many cases are lost here, is the representation you filed in the register, not the product you have in the shop today. If you registered line views without colour, colour is not part of your right; if your current product includes later improvements, those improvements are not protected. The informed user, under the case law of the Court of Justice of the European Union, is neither the average consumer nor the expert designer: it is a particularly observant user who knows the existing designs in the sector and compares directly when able to.

Paragraph 2 of the same article introduces the variable that decides most cases: the designer's degree of freedom. In a crowded sector, where almost everything has been done, small differences are enough to create another impression and your protection is narrow; where the designer had plenty of choice, protection is broad. Nor is there any right over features dictated solely by technical function (article 11). And the fact that the imitator has registered its own version does not protect it: the Court of Justice has held that the earlier owner may sue it without first having that later registration annulled.

The type of right decides the court and what you can ask for

If your design is registered with the Oficina Española de Patentes y Marcas, the first additional provision of Law 20/2003 refers to Title XII of Law 24/2015, the Patents Act. Through that referral the case does not go to just any commercial section: it goes to the one in the Tribunal de Instancia of the city that is seat of the Tribunal Superior de Justicia to which the CGPJ has given exclusive industrial property jurisdiction, the one for the defendant's domicile or, at your choice, for the place where the infringement was committed or took effect. Choosing the wrong court costs months.

If it is a European Union design, article 87.10 of the Organic Law of the Judiciary gives the case exclusively to the Commercial Section of the Tribunal de Instancia of Alicante, acting as the Tribunal de Marca de la Unión Europea with jurisdiction over the whole of Spain, and the appeal goes to the specialised section of the Audiencia Provincial (the provincial appeal court) of Alicante. Where a national right and an EU right over the same design are combined, paragraph 2 of that additional provision concentrates everything in Alicante. Suing in the defendant's domicile also allows, under the Regulation, its acts in other Member States to be pursued.

The unregistered European Union design also exists, but it is a different thing: it lasts three years from its first disclosure in the Union and, under article 19.4 of the Regulation, only allows use resulting from copying to be stopped, not independent creation. The 2024 reform, applicable since May 2025, calls these rights EU designs and adds two new weapons to article 19: prohibiting the creation, downloading or sharing of files that enable the product to be made, such as 3D printing files, and preventing copies that are identical or indistinguishable in their essential aspects from entering in transit from third countries.

Five years to sue is not five years to react

Article 57.1 of Law 20/2003 provides that the civil actions arising from infringement of a registered design prescribe five years from the day they could have been brought. It is a prescription period, which can be interrupted, and with a copy sold day after day each act opens its own period. Paragraph 2 sets another limit on money: damages reach only acts carried out in the five years before the claim. The Regulation does not regulate prescription for the EU design and refers to national law.

The deadline that really bites is a different one. The Civil Procedure Act does not grant interim measures to alter situations the applicant has tolerated for a long time, unless it justifies why it did not seek them earlier. An owner who sees the copy in the Christmas catalogue and waits until January keeps the action but loses the interim relief, which is what takes the product off the market in weeks rather than years. Urgency is proved with dates, and you set those dates from the day you discover the copy.

There are three further periods worth keeping in view. The request to negotiate beforehand interrupts prescription from when the attempt to deliver it is recorded (article 7.1 of LO 1/2025), but the claim must be filed within the following year for the requirement to count as met. Your own registration lasts five years from the application and is renewed in five-year periods up to twenty-five (article 43 of Law 20/2003): if you missed a renewal, the registration has lapsed. And the unregistered EU design expires three years after its disclosure.

The order of the first moves wins or loses the case

The infringement claim follows the ordinary procedure, and article 5 of LO 1/2025 requires, for it to be admitted, prior recourse to an appropriate dispute resolution mechanism. Direct negotiation between lawyers counts, provided its subject matches that of the case and there is a record that the other side received the invitation. Paragraph 3 exempts from that attempt the application for interim measures before the claim and the application for preliminary measures, but not the claim that follows. If interim measures were granted before negotiating, the twenty day period to file the claim is suspended while the negotiation lasts (article 7.3).

Where the copy is not in plain sight, because it is made in a factory or sold only to trade buyers, the first additional provision opens up the fact-finding measures of the Patents Act: the judge, with an expert, attends without prior notice and describes the products and the means of manufacture. They are granted if infringement is presumable and there is no other way to verify it, subject to security. It is the most compelling evidence there is, but it has a trap: if the claim is not filed within thirty working days from delivery of the certificate, the measures lose all effect. That is why the invitation to negotiate goes out on the same day as the inspection.

The interim measures of the Patents Act, applicable to designs through the same referral, allow an immediate stop to be ordered, the retention and deposit of the goods and of the means intended to produce them, security for the future damages and measures against intermediaries such as the marketplace. The judge sets security that you must provide, and may let the defendant keep selling if it in turn provides substitute security. If the imitator suspects something, it will have filed a protective letter so as to be heard first; that is why the first move is not the warning letter but securing the evidence.

Who can be made to pay, and how much

Article 54 of Law 20/2003 distinguishes two groups. Whoever manufactures or imports the product, and whoever first puts it on the market, are liable for damages in every case. The rest, such as the shop chain or the reseller, pay damages only if they were formally warned of the existence of the design, properly identified, and of its infringement, with a demand that they stop, or if they acted with fault or negligence. The injunction can always be sought against them, but the money claim against the retailer starts counting from the registered letter identifying your registration.

Article 55 lets you choose the criterion: the negative economic consequences, among them the profits you would have made and those the infringer made, or the price of the licence the infringer would have had to pay. It includes harm to the design's prestige from a poor quality copy, investigation costs, and moral harm even without proof of economic loss. Paragraph 3 gives the key to cases of this kind: account is taken of the economic importance of the design and its impact on demand for the product. If you show that people buy your lamp for the way it looks, the imitator's profit becomes the measure of your loss.

Once infringement is declared, paragraph 5 grants you, without further proof, one per cent of the infringer's turnover with the copied products, which is a floor and not a target; to go beyond it, paragraph 4 allows production of its documents to be required. Paragraph 6 obliges the court to set a coercive penalty of at least 600 euros per day until the infringement actually stops. And take care when settling: article 56 bars action against those using products put on the market by someone who has already compensated you, so an agreement with the manufacturer closes the route against its distribution chain for those units.

The predictable counterattack: nullity of your own registration

The Oficina Española de Patentes y Marcas does not check novelty or individual character before registering: the ex officio examination under article 29 is limited to whether what is filed is a design, whether it breaches public policy or morality, and little else. Your certificate therefore does not guarantee that the registration will hold. The defendant will search catalogues, trade fairs and online shops for an earlier identical design (lack of novelty, article 6) or one producing the same overall impression (lack of individual character, article 7), and will ask for yours to be annulled.

The most dangerous prior art is usually the owner's own. Article 10 only excuses disclosures made by the designer in the twelve months before the application: the trade fair, catalogue or social media post from fourteen months earlier destroys the novelty of your own registration. That is why the first thing we do in a design case is audit your right: filing dates, earlier disclosures and the views filed. The defendant may also plead prior good faith use in Spain, which article 50 allows it to continue if it is not a copy.

The way nullity is raised is not the same for every right. Against a national design, the referral to the Patents Act lets the defendant plead it by counterclaim or by simple defence, and you have eight days from the defence to ask that the plea be treated as a counterclaim and, if the court agrees, two months to answer it in writing. Against a registered EU design only a counterclaim is possible, unless an earlier national right is relied on. The defendant has two months to file its defence and must provide its expert reports with it, and if nullity succeeds, the final judgment cancels the registration with effect against everyone (article 68).

How we run the case, step by step

1. 1

   Auditing your registration before accusing anyone

   We review the views filed, the filing date, the renewals and everything you disclosed before registering. If one of your own disclosures predates the application by more than twelve months, the strategy changes before anything starts.

2. 2

   Securing the evidence without giving notice

   An invoiced test purchase, a notarial record of the website, the marketplace and the catalogue, and identification of the manufacturer or importer from the labelling. If the copy is not sold to the public, fact-finding measures are requested.

3. 3

   Seeking interim measures while there is urgency

   With the evidence secured, and without having tolerated the sales for months, we apply for a provisional stop, retention and deposit of the copies and, where appropriate, measures against the marketplace. You provide the security the judge sets.

4. 4

   Serving notice and opening negotiation on a provable date

   A registered letter to the manufacturer or importer defining the subject and inviting negotiation, which meets the LO 1/2025 requirement and interrupts prescription, and another to each retailer identifying the registration, which triggers its liability under article 54.2. With no reply within thirty calendar days, the court route is open.

5. 5

   Suing before the right court

   An infringement claim with the expert report on overall impression and degree of freedom, the request for production of the infringer's accounts and the choice of damages criterion under article 55, before the specialised section or before Alicante depending on the right.

6. 6

   Defending the registration and enforcing the judgment

   We answer the counterclaim or the nullity plea with the evidence of novelty and individual character and, once the judgment is won, enforce the withdrawal, the destruction, the publication and the daily coercive penalty until the infringement actually stops.

The law that applies

• Art. 47 Ley 20/2003. Extends the protection conferred by the registered design to any design that does not produce a different overall impression on the informed user, and requires the designer's degree of freedom in creating the design to be taken into account when determining that reach. It is the provision that decides whether there is infringement: it requires not identity but the same overall impression. BOE-A-2003-13615
• Art. 53 Ley 20/2003. Lists what the owner may claim in civil proceedings: injunction, damages, measures so that the infringement does not continue (withdrawal of the goods from trade and seizure or destruction of the means), destruction or humanitarian transfer of the goods, their delivery at cost on account of damages, and publication of the judgment. It does not apply to objects acquired in good faith for personal use, and allows the injunction and measures to be directed at intermediaries. BOE-A-2003-13615
• Art. 54 Ley 20/2003. Makes those who manufacture or import objects incorporating the design without consent, and those responsible for first putting them on the market, liable for damages in every case. Others exploiting the design without authorisation pay damages only if they were formally warned of the existence of the design, identified, and of its infringement, with a demand to stop, or if they acted with fault or negligence. BOE-A-2003-13615
• Art. 55 Ley 20/2003. Sets how the harm is calculated: losses, profits not obtained, harm to the design's prestige and investigation costs. At the injured party's choice, the negative economic consequences, including the infringer's profits, or the price of a hypothetical licence, with moral harm even without proven economic loss. It considers the design's impact on demand for the product, allows production of the infringer's documents to be required, grants without proof one per cent of its turnover, and a coercive penalty of at least 600 euros per day. BOE-A-2003-13615
• Art. 57 Ley 20/2003. Provides that the civil actions arising from infringement of a registered design prescribe five years from the day they could have been brought, and that damages may be claimed only for infringing acts carried out in the five years before the date the action is brought. BOE-A-2003-13615
• Disposición adicional primera Ley 20/2003. Makes the rules of Title XII of Law 24/2015, the Patents Act, applicable, insofar as not incompatible, to actions arising under the design statute and to interim measures, which brings to designs its fact-finding measures, its interim relief and its procedural rules. It gives the EU design courts exclusive jurisdiction over disputes combining national and EU rights over the same or a similar design, or connected with an EU right. BOE-A-2003-13615
• Art. 19 Reglamento (CE) 6/2002. Grants the owner of a registered EU design the exclusive right to use it and to prohibit third parties from making, offering, marketing, using, importing, exporting and stocking it, and from creating, downloading, copying and sharing media or software recording the design so as to make the product. It allows goods in transit from third countries bearing an identical design, or one indistinguishable in its essential aspects, to be stopped, and limits the unregistered design to acts resulting from copying, excluding independent creation. 02002R0006-20250501
• Arts. 5 y 7 LO 1/2025. Article 5 requires, for a declaratory civil claim to be admitted, prior recourse to an appropriate dispute resolution mechanism on the same subject matter, including negotiation between lawyers, and exempts interim measures before the claim and preliminary measures. Article 7 makes the request to negotiate interrupt prescription, sets thirty calendar days without reply for the period to resume, requires the claim to be filed within the following year, and governs the twenty day period for interim measures already granted. BOE-A-2025-76

Each article checked against the consolidated text published in the BOE (the Spanish official gazette).

Frequently asked questions