Modifications introduced into new Spanish Law on Patents regarding the compensation for damages. Special reference to punitive damages.
The new Spanish Law No. 24/2015 of July 24, 2015, on Patents, which will enter into force the next April 1, regulates in its article 74 how the compensation for damages should be quantified for patent infringements and introduces three modifications with respect to the former Spanish Patent Law of 1986.
Firstly, the new regulation clarifies that the two possibilities set forth by the former law used to calculate the holder’s loss of profit are not cumulative. Indeed, with the former drafting of article 66.2 a) doubts were cast on the possibility of requesting cummulatively the profits not obtained by the owner of the patent and the profits obtained by the infringer. The incorporation of the term “alternatively” in the new drafting clarifies the issue.
Secondly, the new law as well declares that the determination and liquidation of the damages will take place on the enforcement phase of the proceedings, once a judgement declaring the infringement is rendered. According to the Statement of Purpose of the new law, this modification is due to “the considerable probatory and allegatory effort that the quantification of the compensation for damages requires both from the plaintiff and the defendant, which suposes a great complexity and an added cost overrun for the proceedings that is not justified, specially if in the end the judgement happens to be acquittal”. As to how the enforcement wil be carried out, articles 712 and subsequent articles of the Spanish Civil Procedural Law will be of application.
Last but not least, the new act seems to consider the possibility of condemning to the payment of punitive damages, since its article 74, second paragraph, letter b) establishes that “a flat rate amount which at least includes the amount that the infringer would have had to pay to the owner of the patent for the granting of a license which would have allowed him to exploit the patent in accordance with law […]”.
This interpretation, which a few months ago would have been deemed against to European law and, in particular, to Directive 2004/48/CE of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, is no longer so, given that the ECJ has recently decided in its Judgement of January 25, 2017, in the matter Stowarzyszenie Oławska Telewizja Kablowa c. Stowarzyszenie Filmowców Polskich, C-367/15, in response to a request for a preliminary ruling made by the Polish Supreme Court, that the mentioned Directive is compatible with the imposition by the Member States of punitive compensations regarding infringements of intelectual property rights.
In this sense, the ECJ considers that the mentioned Directive lays down a minimum standard concerning the enforcement of intellectual property rights and, therefore, the member states may establish different compensation criteria withought that meaning the violation of the said regulation.
Related Posts:
- CJEU Judgment on the moment of invoking the right of information regarding the origin of infringing products
- What is the Scope of the “Reasonable Compensation” for a Trademark Infringement Established in Art. 9.3 EUTMR? – CJUE Judgment of 22 June 2016, C-280/15, “Nikolajeva”
- The CJEU Rules on Legal Costs with Regard to IP Proceedings: Judgment of July 28th 2016, C-57/15, “United Video Properties Inc.”
- International Jurisdiction in IPR Infringements Committed on the Internet – Revisiting CJUE decisions in “Pinckney” and “Hejduk”