All of us who work in this area of Law feel a sort of “disturbance in the force” (as Yoda would say in Star Wars) in light of the interpretation some Courts have made of Judgments No. 504/2019 in the Pasapalabra case and 516/2019 in the NUBA cases issued by the Supreme Court. Based in those Judgements, some Courts stopped considering the existence of ex re ipsa damages in IP actions, even though infringement was found. This was certainly a severe blow to the holders of an eminently economic right.
Well, now the First Chamber of the Supreme Court has finally shed light on this disturbing interpretation that some courts have been making, and it does so in Judgment No. 700/2025 of May 7.
Some courts, such as the Spanish EU Trademark Court (in Alicante), had the courage to clarify that this doctrine applied in very specific cases and could not be interpreted to mean that damages were not awarded to the owner of the exclusive right when infringement was found. This post is for them!
Well, now, the Civil Chamber of the Supreme Court, in Judgment No. 700/2025, openly acknowledges that the use of an exclusive right without the owner’s authorization entails, at the very least, economic exploitation by the infringer, and that the doctrine condensed in Supreme Court Judgment No. 516/2019 is very exceptional. All of this enabled the Court to upheld the appeal filed by the plaintiff against the judgment in which while recognizing the existence of infringement, dismissed the claim for compensation for lost profits suffered by the right holder precisely based on Supreme Court Judgment No. 516/2019 (it granted only compensation for infringement’s investigation costs).
It is true that in Supreme Court Judgment 144/2024 of February 6 already anticipated something about the extraordinary nature of Supreme Court Judgment No. 516/2019, but this was the “nuance” (this adjective seems too short to me) that was necessary.
Long live IP rights in Spain!
Fernando Ortega
Lawyer
