They are selling under your mark: injunction and damages
Last updated 2026-09-01 · Reviewed by Jaime Piñeira Pardo, registered with the ICAM bar, no. 138826
The short answer
You can sue for trade mark infringement seeking an injunction, withdrawal of the goods from the market, their destruction, publication of the judgment and damages. Interim measures allow the sales to be stopped from the outset. The action prescribes after five years, and only the five years preceding the claim are compensated.
A competitor has launched a line under a name almost identical to yours, in the same channel and for the same public. Your customers write asking whether that shop is yours, and a supplier has called to check whether you have opened a second brand. On the marketplace where you sell, the other party's product ranks above yours when someone searches your name. You have held the registered mark for seven years and use it daily, and every week that passes takes away turnover that does not come back.
The case, in five lines
- What is brought
- A claim for trade mark infringement bringing the civil actions of article 41 of the Trade Mark Act: injunction, damages, withdrawal from trade, destruction and publication of the judgment, together with interim measures under article 727 of the Civil Procedure Act.
- Before which court
- The Commercial Section of the Tribunal de Instancia (the first-instance court). If the right infringed is an EU trade mark, the case goes to the EU trade mark courts, seated in Alicante.
- Deadline
- Article 45.1 sets prescription of the civil actions at five years from the day they could have been brought. Paragraph 2 adds a separate limit for money: only infringing acts carried out during the five years preceding the date the action is brought are compensated.
- Who can bring it
- The owner of the registered mark, to whom article 40 grants the civil or criminal actions against those who harm its right. Article 34.7 extends the protection to an unregistered mark that is well known in Spain.
- Financial risk
- The losing party usually bears the other side's costs, and the case calls for funds on account and expert reports to quantify the harm. The defendant may also require proof of use of your own mark and counterclaim seeking its nullity or revocation.
Article 34 lists what you can prohibit, and it is more than it looks
Article 34.2 entitles you to prohibit any third party from using in the course of trade a sign identical to your mark for identical goods, a sign identical or similar for identical or similar goods where there is a likelihood of confusion, including the likelihood of association, and, if your mark has a reputation in Spain, the sign even for different goods where an unfair advantage is taken or its distinctive character is harmed.
Paragraph 3 breaks down the specific conduct: affixing the sign to the goods or their packaging, offering or stocking them for those purposes, importing or exporting them, using it as a trade name or company name, using it on business papers and in advertising, using it in telematic communication networks and as a domain name, and using it in comparative advertising in breach of Directive 2006/114/EC.
Two reaches are commonly overlooked. Paragraph 5 lets you stop third parties bringing into Spain goods from third countries bearing an identical mark without releasing them for free circulation, and paragraph 6 prevents traders and distributors from removing the mark without the owner's consent, although they may separately add their own signs provided the distinctiveness of the main mark is not impaired.
The claim asks for far more than a stop, and it also reaches intermediaries
Article 41.1 lists what is claimed in civil proceedings: cessation of the acts infringing your right, damages, and measures to prevent the infringement continuing, in particular withdrawal from trade of goods, packaging, wrappings, advertising material, labels and other documents, together with seizure or destruction of the means principally used to commit the infringement, all at the infringer's cost.
That same paragraph adds destruction of the unlawfully marked goods, or their transfer for humanitarian purposes at the claimant's choice and always at the condemned party's cost, unless the sign can be removed without affecting the product or destruction would be disproportionate; the award in ownership of what was seized, setting its value against the damages; and publication of the judgment at the condemned party's cost through announcements and notices to interested parties.
Paragraph 3 opens a decisive front where the selling happens on platforms: the injunction and the measures to prevent the infringement continuing may also be sought, where appropriate, against intermediaries whose services are used by a third party to infringe, even if their own acts are not themselves an infringement, without prejudice to Law 34/2002 and provided the measures are objective, proportionate and non discriminatory.
Interim measures decide the case long before the judgment
Article 727 of the Civil Procedure Act contains the tools that really change the situation within weeks. Its seventh measure allows an order to cease an activity provisionally, or to refrain temporarily from certain conduct, which is exactly what is needed when the competitor is selling under your sign today and every day of sales entrenches its position in the market.
The ninth measure provides for temporary deposit of copies of the works or objects deemed produced in breach of intellectual and industrial property rules, and of the material used to produce them. The eighth allows the intervention and deposit of the income obtained through the activity considered unlawful, and the first a preventive attachment to secure the future money judgment.
That is why the first decision in the case is not what to write, but in what order to act. A prior warning letter may resolve the matter without litigation, but it also alerts the infringer, who empties the warehouse, closes the company or changes the listing before the court arrives. Where sales volumes are high, the evidence is secured first, the interim application is prepared, and only then does anyone talk.
Damages are calculated in three ways, and one of them needs no proof
Article 43.1 sets the content: not only the losses suffered, but also the profits not obtained, plus the harm caused to the mark's prestige, particularly through defective manufacture of the unlawfully marked goods or their inadequate presentation on the market, and the investigation costs incurred to obtain reasonable evidence of the infringement.
Paragraph 2 gives you the choice between two criteria: the negative economic consequences, among them the profits you would have obtained from using your mark or, alternatively, those the infringer obtained from the infringement; or a lump sum at least covering what the infringer would have had to pay for a licence. Moral harm is compensated even without proof of economic loss.
Paragraph 5 is the safety net: once the infringement is judicially declared, the owner is entitled, in every case and without any proof, to one per cent of the turnover achieved by the infringer with the unlawfully marked goods, and may claim more by showing greater harm. To reach that figure, paragraph 4 allows the production of the liable party's documents to be required.
Five years to sue and five years of recoverable damage
Article 45.1 provides that the civil actions arising from infringement of a trade mark prescribe after five years counted from the day they could have been brought. In an infringement repeated day after day, that date is not a single one, and much of the argument lies there: each act of sale opens its own period, which is why continuing infringement is seldom wholly time barred.
Paragraph 2 imposes a different and far less arguable limit: damages may be claimed only in relation to infringing acts carried out during the five years preceding the date the action is brought. Someone who tolerates for eight years and then sues keeps the injunction claim, but definitively loses three years of damage that no longer enter the calculation.
The defendant counterattacks against your own mark, and sometimes wins there
Article 41.2 is the first question to answer before suing. Use of a sign may be prohibited only to the extent that the owner's rights could not be declared revoked for non use when the action is brought, and if the defendant so requests, the owner will have to establish genuine use over the preceding five years, provided final registration was at least five years old.
The second front is the counterclaims. Article 51.1 allows absolute nullity of the registration to be sought by counterclaim, and article 54.1 its revocation, within the same infringement action. In other words, whoever sues puts its own right on the table, and a neglected registration, unused or applied for in questionable circumstances, may leave the case in worse shape than it entered.
Article 61 completes the map. The courts dismiss the counterclaim if the OEPM has already ruled finally on the same subject matter and ground between the same parties, and the Office will not admit an application where a final judgment already exists. Knowing which files are open or decided between the parties is part of preparing the claim, not a later surprise.
How we run the case, step by step
- 1
Auditing your own right before making a move
We check the state of the registration, its renewals and, above all, the evidence of genuine use over the last five years, because the defendant may demand it and because the infringement action stands or falls on it.
- 2
Securing the evidence of infringement before it vanishes
We document the sales with invoiced test purchases, notarial records of the listing, the website and the marketplace storefront, and by preserving the posts and their amounts, so the material does not depend on the infringer keeping anything online.
- 3
Deciding the order: warning letter or surprise
We weigh whether a cease and desist letter resolves the matter without litigation or merely alerts the infringer and lets it empty the warehouse. Where volumes are significant and evidence may disappear, we go straight to the claim with interim measures.
- 4
Applying for the interim measures
We seek the provisional cessation of the activity, the deposit of the items and of the production material and, where appropriate, preventive attachment and intervention of the income, so that the selling stops without waiting for the judgment.
- 5
Filing the claim and quantifying the harm
We file the claim with the actions of article 41 and choose the calculation criterion of article 43, supported by production of the infringer's documents and, where evidence is lacking, by one per cent of its turnover.
- 6
Enforcing the judgment to the end
We carry through the market withdrawal, the destruction or transfer of the goods, the publication of the judgment at the condemned party's cost and the collection of the damages, including taking ownership of what was seized where that pays.
The evidence that decides the case
- The test purchase of the infringing product, with invoice, packaging and label preserved, which proves the goods were put on the market and not merely advertised.
- The dated notarial record of the website, the marketplace listing and the advertising, because such content is edited or taken down within hours.
- The certificate of your mark and the evidence of its genuine use over the preceding five years, which is the first thing the defendant will demand of you.
- Messages from customers and suppliers asking whether the other shop is yours, documenting the likelihood of confusion and of association.
- The infringer's accounts and invoices obtained through document production, which fix the turnover on which the damages are calculated.
- Your own sales figures before and after the other sign appeared, together with the history of rankings and selling conditions in the affected channel.
What closes the door
- Suing without having checked the use of your own mark. Article 41.2 lets the defendant demand that evidence, and the action collapses if the registration is over five years old and dormant.
- Sending a cease and desist letter without first securing the evidence. The listing is edited, the warehouse emptied and the company closed before the claim arrives.
- Tolerating the sales for years hoping they stop on their own. Article 45.2 compensates only the five years preceding the claim, and anything earlier is lost beyond argument.
- Seeking only the injunction and giving up on damages in the belief they cannot be proved. Article 43.5 grants one per cent of the infringer's turnover with no proof required.
- Ignoring the intermediary and pursuing only the seller. Article 41.3 allows the injunction and the measures to be directed against the intermediaries whose services the infringer uses.
The law that applies
- Art. 34 Ley 17/2001 de Marcas. Defines the content of the exclusive right and what the owner may prohibit in the course of trade: an identical sign for identical goods, an identical or similar sign creating a likelihood of confusion or association, and one taking advantage of or harming the mark's reputation in Spain. It details the prohibited conduct, including use as a company name, in advertising, in telematic networks and as a domain name, extends protection to goods in transit and to unregistered well known marks, and stops distributors removing the mark. BOE-A-2001-23093
- Art. 41 Ley 17/2001 de Marcas. Lists the civil actions of an owner whose mark is harmed: injunction, damages, withdrawal from trade of goods and materials, seizure or destruction of the means of infringement, destruction or humanitarian transfer of the unlawfully marked goods, award in ownership of what was seized set against the damages, and publication of the judgment at the condemned party's cost. It conditions the prohibition on the mark not being revocable for non use, and allows the injunction to be directed at intermediaries. BOE-A-2001-23093
- Art. 43 Ley 17/2001 de Marcas. Sets the calculation of damages: losses suffered, profits not obtained, harm to the mark's prestige and investigation costs. At the injured party's choice, either the negative economic consequences, including the infringer's profits, or a lump sum at least equal to what the infringer would have had to pay for a licence, with compensation for moral harm even without proof of economic loss. It allows the liable party's documents to be produced and recognises in every case, without proof, one per cent of the infringer's turnover. BOE-A-2001-23093
- Art. 45 Ley 17/2001 de Marcas. Provides that the civil actions arising from trade mark infringement prescribe after five years counted from the day they could have been brought, and that damages may be claimed only for infringing acts carried out during the five years preceding the date the action is brought. These are two distinct limits: one governs the survival of the action, the other the temporal reach of the money claimable. BOE-A-2001-23093
- Art. 727 Ley de Enjuiciamiento Civil. Lists the specific interim measures that may be granted, among them preventive attachment, the preventive noting of the claim in public registers, a court order to cease an activity provisionally or refrain temporarily from certain conduct, the intervention and deposit of income obtained through an activity deemed unlawful, and the temporary deposit of copies of works or objects deemed produced in breach of intellectual and industrial property rules, and of the material used to produce them. BOE-A-2000-323
Each article checked against the consolidated text published in the BOE (the Spanish official gazette).
Frequently asked questions
How long do I have to bring a claim?
Article 45.1 sets five years from the day the action could have been brought. Where the infringement repeats day after day, each act opens its own period, so continuing sales are seldom wholly time barred. Money is different: paragraph 2 only allows claiming acts from the five years preceding the claim, so waiting does not close the door but it does shrink the damages.
What if I cannot prove how much I have lost?
Article 43.5 solves that problem: once the infringement is judicially declared, the owner is entitled in every case and without any proof to one per cent of the turnover achieved by the infringer with the unlawfully marked goods, and may seek more by showing greater harm. To establish that figure, paragraph 4 allows the liable party's documents to be produced.
Can I act against the marketplace and not just the seller?
Yes, within limits. Article 41.3 allows the injunction and the measures to prevent the infringement continuing to be sought also against intermediaries whose services are used by a third party to infringe, even if their own acts are not themselves an infringement. The provision itself refers to Law 34/2002 and requires the measures to be objective, proportionate and non discriminatory.
The infringer demands I prove I use my mark, can it?
It can, and it usually does. Article 41.2 only lets you prohibit use of a sign to the extent your right could not be declared revoked for non use when the action is brought, and requires you, if the defendant so requests, to establish genuine use over the preceding five years, provided your final registration was already five years old. That is why the case starts by reviewing your own file.
Can the selling be stopped before there is a judgment?
That is what the interim measures of article 727 of the Civil Procedure Act are for. Its seventh measure contemplates a court order to cease an activity provisionally or refrain temporarily from certain conduct, and the ninth the temporary deposit of items produced in breach of industrial property rules and of the material used to produce them. They are sought with the claim or before it.
This guide explains how the action works in general. It does not replace the study of your own case: deadlines depend on when things happened and on what you have done since.