Patents, trade marks, copyright and designs in Spain: overview

A guide to intellectual property law in Spain. The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.

To compare answers across multiple jurisdictions, visit the Patents, trade marks, copyright and designs: Country Q&A tool.

This Q&A is part of the global guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com.ip-guide.

Sönke Lund and Consuelo Álvarez Pastor, Monereo Meyer Marinel-lo Abogados
Contents

Patents

1. What are the legal requirements to obtain a patent?

A patentable invention is:

  • New.

  • Involves an inventive activity.

  • Capable of industrial application.

 
2. What categories are excluded from patent protection?

The following categories are excluded from patent protection:

  • Discoveries, scientific theories or mathematical methods.

  • Literary, dramatic, musical or artistic works or any other aesthetic creations whatsoever.

  • Scheme, rules or methods for performing a mental act, playing a game or doing business, or computer programs.

  • Presentations of information.

  • An invention where its publication or exploitation would be contrary to public order or morality.

  • Processes for cloning human beings.

  • Processes for modifying the germline genetic identity of human beings.

  • Uses of human embryos for industrial or commercial purposes.

  • Processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes.

  • Any variety of animal or plant or any essentially biological process for the production of animals or plants, not being a micro-biological or other technical process or the product of such a process.

  • Plant or animal varieties or essentially biological processes for the production of plants or animals other than micro-biological processes or the products of those processes.

  • The human body, at the various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene.

 
3. Which authority registers patents? Does its website provide guidance on the application procedure?

The Spanish Patents and Trademark Office (STPO) (Oficina Española de Patentes y Marcas) is the authority that registers patents. Its website provides guidance on the application procedure (http://www.oepm.es/en/invenciones/index.html).

 
4. On what grounds and when can third parties oppose a patent application or challenge an issued patent?

Third parties can oppose a patent application, or challenge an issued patent, on the following grounds:

  • When the proprietor is not entitled to the patent or the patent application.

  • On the grounds of non-fulfilment of any of the requirements of patentability under the Patent Act.

  • On the grounds that due procedure was not followed in the process of granting the patent.

 
5. When does patent protection start and how long does it last?

Protection lasts for a period of 20 years (which cannot be extended), to be counted from the moment the patent application is filed.

 
6. On what grounds can a patent infringement action be brought?

The proprietor of a patent can bring a patent infringement action on the grounds of patent right infringement.

A third party commits direct infringement of a patent when it:

  • Manufactures, offers for sale, puts on the market or uses a product that is the subject matter of the patent, or imports or possesses the product for one of the above mentioned purposes.

  • Makes use of a process that is the subject matter of a patent, or offers its use while the third party is aware that the use of the process without the patent owner's consent is prohibited.

  • Offers for sale, puts on the market or uses the product directly obtained by the process which is the subject matter of the patent, or imports or possesses such a product for one of the above mentioned purposes.

A third party commits indirect infringement of a patent when a third party hands over, or offers to hand over, to an unauthorised person, without the patent owner's consent, the means to an essential part of the patented invention to be used to carry out the purpose of the patent, when the third party is aware that the means to the invention will be used in this way.

 
7. Which courts deal with patent infringement actions?

Patent infringement actions must be brought before the Court of First Instance of the city where the Superior Court of Justice of the defendant's residence is located.

 
8. What are the defences to patent infringement actions?

The main defences to patent infringement actions are:

  • Non-infringement.

  • Invalidity of patent.

  • Private non-commercial or experimental use.

  • Exhaustion of owner's rights.

  • Right of prior use.

 
9. What are the remedies in patent infringement actions?

The remedies in patent infringement actions are as follows:

  • Injunction or interdict.

  • Compensation for damages.

  • Seizure of goods produced through patent infringement, together with the means of production primarily used to produce such goods or for use in a patented process.

  • Assignment of property of those seized goods and means of production.

  • Adoption of any measures necessary in order to put an end to the patent infringement.

  • Publication of the judgment of patent infringement.

 
10. Is there a fast-track and/or a small-claims procedure for patent infringement actions?

There is no fast-track or small claims procedure for patent infringement actions.

 

Trade marks

11. What are the legal requirements to obtain a trade mark?

The legal requirements to obtain a trade mark are that the mark is:

  • Capable of graphical representation.

  • Distinctive in character.

 
12. Is it necessary or advisable to register trade marks?

Registration is not necessary, but it is recommended.

 
13. Which authority registers trade marks? Does its website provide guidance on the application procedure?

The STPO is responsible for the registration of trade marks. Its website provides guidance on the application procedure (http://www.oepm.es/comun/documentos_relacionados/PDF/2015/manualDelSolicitante.pdf).

 
14. On what grounds can the regulatory authority refuse to register a trade mark?

The SPTO can refuse to register a trade mark if the trade mark falls into one of the categories that are prohibited from being registered, as follows:

  • The trade mark is contrary to the law, public policy or the accepted principles of morality.

  • It is lacking distinctive character.

  • It is a mark that is specifically excluded from being registered as a trade mark (for example, emblems).

 
15. On what grounds and when can third parties oppose a trade mark application or cancel a registration?

Third parties can oppose a trade mark application when the trade mark falls into one of the absolute or relative grounds for refusing registration (see Question 14).

When a trade mark application is published, any party who considers that they are prejudiced by the trade mark can oppose the registration.

 
16. When does trade mark protection start and how long does it last?

Protection starts on the date of the publication of the grant and is set for ten years, although the trade mark can then be registered in perpetuity for further successive ten-year periods.

 
17. On what grounds can a trade mark infringement action be brought?

Registration provides an exclusive right over the trade mark which enables the registered owner to exercise rights in the trade mark exclusively. The following acts are prohibited without the express consent of the trade mark owner:

  • Use of an identical trade mark with regard to the goods or services for which the trade mark is registered.

  • Use of an identical or similar trade mark capable of generating confusion among customers (including creating the assumption of an association between the trade marks).

  • Use of an identical or similar trade mark regarding different goods or services of those included in the application (when the trade mark is a well-known or reputed trade mark).

 
18. Which courts deal with trade mark infringement actions?

The court dealing with trade mark infringement actions can be the Mercantile Court regarding civil actions, or the Criminal Court regarding criminal actions.

 
19. What are the defences to trade mark infringement actions?

The following are defences to a trade mark infringement action:

  • Non-use of the trade mark for a five-year period by the trade mark owner.

  • Lack of confusion.

  • Fair use.

  • Lack of use regarding course of trade.

  • A counterclaim that the trade mark registration was invalid.

 
20. What are the remedies in trade mark infringement actions?

The remedies in a trade mark infringement action are as follows:

  • Cessation of the infringing acts.

  • Compensation for damages.

  • Taking the necessary measures to prevent the infringement from taking place or continuing.

  • Destruction of the infringing objects.

  • Publication of the court decision at the infringer's expense.

 
21. Is there a fast-track and/or a small-claims procedure for trade mark infringement actions?

There is no fast-track or small claims procedure for trade mark infringement actions.

 

Copyright

22. What are the legal requirements to obtain copyright protection?

Copyright protection exists over a literary, artistic or scientific work. This work must be an original creation and expressed in a form, regardless of its tangibility.

 
23. Can copyright be registered? If so, is registration required?

The General Registry of Intellectual Property is the public body responsible for registration of copyright. However, registration is not required as the work is automatically protected from the moment of its creation.

 
24. When does copyright protection start and how long does it last?

Protection arises automatically on the moment the work is created and, generally, the exploitation rights last for the author's entire life and for 70 years after his death.

 
25. On what grounds can a copyright infringement action be brought?

The owner of the copyright can bring a copyright infringement action on the grounds of infringement of their moral rights. The owner of the exploitation rights can bring an action on the following grounds:

  • Unauthorised exploitation of the copyright, including:

    • fixation;

    • reproduction;

    • communication;

    • making it available to the public.

  • Sale, exportation and importation of the infringing works.

  • Failure to pay the remuneration due to the author.

 
26. Which courts deal with copyright infringement actions?

The Mercantile Courts deal with copyright infringement actions.

 
27. What are the defences to copyright infringement actions?

The defences to a copyright infringement action are as follows:

  • Lack of originality of the work.

  • Lack of infringement.

  • The work falls under the public domain.

  • Application of a copyright exception (for example, having personal copies for private use).

 
28. What are the remedies in copyright infringement actions?

The remedies in a copyright infringement action are as follows:

  • An injunction restraining the unlawful activity of an infringer.

  • Compensation for damages.

  • Publication of the copyright infringement judgment.

  • Precautionary measures.

  • Specific cessation activities.

  • Precautionary measures against intermediaries whose services are used by a third party to infringe copyright.

 
29. Is there a fast-track and/or a small-claims procedure for copyright infringement actions?

There is no fast-track or small claims procedure for copyright infringement actions.

 

Registered designs

30. What are the legal conditions to obtain a registered design right?

The legal conditions to obtain a registered design right are that the design has:

  • Novelty.

  • Individual character.

 
31. Which authority registers designs?

The STPO is the authority that registers designs.

 
32. On what grounds and when can third parties oppose a registered design application?

Third parties can oppose a registered design right application on the grounds that:

  • It is not a design.

  • It is not new.

  • It does not have individual character.

In addition, holders of prior design rights can oppose a registered design application when, among other things:

  • The applicant is not the designer or the designer's successor.

  • The applicant has created the design in the course of his employment.

  • The design is incompatible with a prior design protected in Spain or any other intellectual property right.

 
33. When does registered design protection start and how long does it last?

Protection lasts for five years from the moment the application to register is filed, and can be renewed for successive five-year periods for up to a maximum of 25 years.

 
34. On what grounds can a registered design infringement action be brought?

The registration of the design provides the holder with the exclusive right to use that design, and to prohibit third parties from using the design without authorisation. Infringement actions can be brought on the grounds of registered design infringement.

 
35. Which courts deal with registered design infringement actions?

The Mercantile Courts have exclusive competence to deal with registered design infringement actions.

 
36. What are the defences to registered design infringement actions?

The defences to a registered design infringement action are as follows:

  • Non-infringement.

  • Invalidity of design.

  • Private non-commercial or experimental use.

  • Use for illustrative or educational purposes.

  • Right of prior use.

  • Exhaustion of owner's rights.

 
37. What are the remedies in registered design infringement actions?

The remedies in private infringement actions include:

  • Injunction or interdict.

  • Compensation for damages.

  • Adoption of any measures necessary in order to put an end to the registered design right infringement, and in particular, recalling from the market any products that have materialised through infringement.

  • The destruction or, where possible, the transfer to the claimant of the infringing products.

  • The transfer of the infringing products, at cost price, as compensation for damages sustained (provided that this measure is possible and proportional).

  • Publication of the registered design right infringement judgment.

 
38. Is there a fast-track and/or a small-claims procedure for registered design infringement actions?

There is no fast-track or small claims procedure for registered design right infringement actions.

 

Unregistered designs

39. What are the legal conditions for unregistered design rights to arise?

The legal conditions for an unregistered design right to arise are that the design:

  • Has novelty.

  • Has an individual character.

  • Will be made available to the public within the EU.

 
40. When does unregistered design protection start and how long does it last?

The protection lasts for a period of three years from the date on which the unregistered design was first made available to the public within the EU.

 
41. On what grounds can an unregistered design infringement action be brought?

An infringement action can be brought when the contested use results from copying the protected design.

 
42. What are the defences to unregistered design infringement actions?

The defences are the same as for registered designs (see Question 36). Another possible defence is that the use of the contested design by a third party does not result from copying the registered design.

 
43. What are the remedies in unregistered design infringement actions?

The remedies are the same as for registered designs (see Question 37).

 

Trade secrets and confidential information

44. What are the legal conditions for rights in confidential information to arise?

The requirements for confidential information to be protected are that the information:

  • Is secret.

  • Has a commercial value or provides a competitive advantage.

  • Has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.

 
45. On what grounds can an action for unauthorised use of confidential information be brought?

An action can be brought for unauthorised use of confidential information on the following grounds:

  • Disclosure.

  • Exploitation.

  • Acquisition of secrets by means of espionage or an analogous procedure.

 
46. Which courts deal with actions for unauthorised use of confidential information?

The Mercantile Courts deal with actions for unauthorised use of confidential information.

 
47. What are the defences to actions for unauthorised use of confidential information?

The following are defences to an action for unauthorised use of confidential information:

  • The information was not secret.

  • The legal holder of the confidential information has not taken reasonable steps to keep the information secret.

 
48. What are the remedies in actions for unauthorised use of confidential information?

The following remedies are available in actions for unauthorised use of confidential information:

  • The publication of the judgment of unauthorised use of confidential information.

  • Cessation and prohibition orders of subsequent repetition of the unfair behaviour.

  • Removal of the effects produced by the unfair act. The exercise of this action is usually complicated, since the effects of such disclosure are often irreversible.

  • Compensation for the damages caused by the unfair behaviour.

  • Compensation on the enrichment obtained by the defendant.

 
49. Is there a fast-track and/or a small-claims procedure for actions for unauthorised use of confidential information?

There is no fast-track or small claims procedure for actions for unauthorised use of confidential information.

 

The regulatory authority

Spanish Trademark and Patent Office (STPO) (Oficina Española de Patentes y Marcas)

W http://www.oepm.es/en/index.html

Main areas of responsibility. Intellectual property.

Guidance on application procedure.

Applicant's handbook:



Contributor profiles

Sönke Lund, Partner

Monereo Meyer Marinel-lo Abogados

T + 34 934 875 894
F + 34 934 873 844
E slund@mmmm.es
W www.mmmm.es

Professional qualifications. Rechtsanwalt and Abogado.

Areas of practice. International commerce; intellectual property; competition; licences; litigation.

Languages. German, Spanish, English, Catalan

Professional associations/memberships

  • Barcelona Bar.

  • Hamburg Bar.

  • German Bar Association.

  • International Bar Association (IBA):

    • Co-Chair International Sales Committee.

    • International Intellectual Property Committee.

    • International Environmental Law Committee.

  • Association Littéraire et Artistique Internationale/ Asociación Literaria y Artística para la Defensa del Derecho de Autor (ALAI/ALADDA).

  • American Bar Association (ABA).

Consuelo Álvarez Pastor, Abogada

Monereo Meyer Marinel-lo Abogados

T + 34 934 875 894
F + 34 934 873 844
E calvarez@mmmm.es
W www.mmmm.es

Professional qualifications. Abogada; LLM; Gewerblicher Rechtsschutz, Heinrich Heine Universität Düsseldorf.

Areas of practice. Intellectual and industrial property; competition; unfair competition.

Languages. German, Spanish, English, Catalan

Professional associations/memberships. Barcelona Bar.


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