- 1Spain: An attractive country for investment
- 2Setting up a business in Spain
- 3 Tax System
- 4 Investment aid and incentives in Spain
- 5 Labor and social security regulations
- 6 Intellectual property law
- 7Legal framework and tax implications of e-commerce in Spain
- AI Annex I Company and Commercial Law
- AIIAnnex II The Spanish financial system
- AIIIAnnex IIIAccounting and audit issues
- What is a trademark?
- What factors need to be borne in mind to register a trademark in Spain?
- What are the ways of registering a mark in Spain?
- How do you obtain a Spanish trademark?
- What checks does the SPTO conduct when it receives the application?
- How long does Spanish trademark registration last?
- What is an international Trademark?
- How to obtain an international trademark?
- Who can file an international trademark?
- What is an EU trademark?
- Who can file an EU trademark?
- How to obtain an EU trademark?
- What checks does the EUIPO conduct when it receives the application?
- EU… and international trademark?
- How long does an EU trademark last?
- Protection of inventions in Spain
- Plant varieties
- Industrial designs
- What are industrial designs?
- What is novelty and individual character?
- How can you obtain protection in a design?
- How do you obtain a Spanish design?
- How long does a Spanish design last?
- How do you obtain a Community design?
- How long does a Community design last?
- What does an unregistered Community design consist of?
- How do you obtain an international design?
- Topographies of semiconductor products
- Unfair competition
- Trade secrets
- Action against infringement of intellectual property rights
- Appendix I – Reference to official fees for 2021
- Appendix II – Intellectual property conventions
1.1 What is intellectual property?
Intellectual property (IP) guarantees businesses protection of their intangible assets through the legal recognition of exclusive rights in such assets (copyrights in creative works and industrial property rights in industrial assets, such as trademarks, patents, designs etc.). Before launching in a new market, the company must take the necessary steps to ensure that its intangible assets are correctly managed and protected.
|Trade secrets||Trademarks ®||Copyright ©||Patents- Utility models||Spanish designs||Community designs|
|What is protected||Information||Identifiers||Creations||Inventions||Designs||Designs|
|Duration||It is a de facto right which lasts indefinitely, as long as the information remains secret.||10 years, renewable indefinitely.||70 years from the death of the author.||Patents: 20 years maximum, renewable annually.|
Utility models: 10 years maximum, renewable annually.
|5 years extendible up to 25 years.||Unregistered: 3 years.
5 years, renewable for up to 25 years.
|Protection requirements||(i) Secrecy and confidentiality (ii) it has commercial value because it is secret and (iii) reasonable steps must be adopted by its holder to keep it secret.||Distinctiveness and use.||Originality.||Novelty, useful and non-obvious subject matter.||Novelty and individual character.||Novelty and individual character.|
1.2 What is the registration principle?
In Spain, registration at the relevant industrial property office is a prerequisite to obtain protection of intellectual property (as we will see, this principle does not govern copyright or trade secrets).
Spain, unlike the United States for example, follows the “first-to-file” system, which means that the first person to apply for registration will obtain the relevant rights. Use does not afford any rights against third parties except in the case of well-known marks.
Registration entails payment of the official fees, whose amount will depend on circumstances such as the specific type of right applied for, the number of classes, territory, etc.1
1.3 What is the territoriality principle?
The principle of territoriality entails that the protection conferred by intellectual property rights is only available, in principle, in the country or countries in which registration has been obtained (or in the case of copyright, in the country where protection is sought).
Thus, the registration of a trademark or a patent in the country of origin by the owner does not confer automatic protection in other countries. Consequently protection must be sought through additional registrations in each relevant country.
1.4 How to overcome the limits of territoriality?
In order to make it easier to protect intellectual property rights in different territories, Spain has ratified the main international conventions in this area.
With rare exceptions, international intellectual property treaties allow non-Spanish nationals to protect their rights in Spain, and Spanish nationals to enjoy protection in most other countries. Spain’s membership of the European Union has also favored Spanish legislation to be in line with that of the rest of EU Member States.
1.5 What are the most important conventions signed by Spain?
|INTERNATIONAL CONVENTION||INTELLECTUAL PROPERTY RIGHTS REGULATED||ORGANIZATION|
|Agreement on Trade-related aspects of intellectual property rights (TRIPS)||Intellectual Property||World Trade Organization|
|Paris Convention||Industrial Property||World Intellectual Property Organization (WIPO)|
|Patent Cooperation Treaty (PCT)||Patents||World Intellectual Property Organization|
|European Patent Convention||Patents||European Patent Organization|
|Madrid Agreement||Trademarks||World Intellectual Property Organization|
|Madrid Protocol||Trademarks||World Intellectual Property Organization|
|Berne Convention for the Protection of Literary and Artistic Works||Copyright||World Intellectual Property Organization|
1.6 Can intellectual property rights be marketed?
Intellectual property rights are assets, and may therefore be assigned, encumbered or transferred by any means provided by Law.
Licenses are the contracts most frequently used in this area, through which a third party is authorized to use the rights granted in exchange for payment.
1.7 What changes are expected in the Spanish intellectual property legislation?
A preliminary draft law amending the three main industrial property laws (Law 17/2001, of 7 December, on Trademarks, Law 20/2003, of 7 July, on the Legal Protection of Industrial Design and Law 24/2015, of 24 July, on Patents) was announced last October.
The objective of amending these laws by means of a single legal text is threefold: adapting these laws to the current market reality, making them more coherent and precise, and providing greater legal certainty for the users of the industrial property system.
These amendments are also aimed at adapting the content of the aforementioned laws to the regulatory and interpretative changes that have taken place at international level and, in particular, in neighboring countries.
If the preliminary draft goes ahead, it should be approved by the Council of Ministers by means of a final draft in the upcoming months.
In addition, as a result of the entry into force in toto of the First Additional Provision of the Trade Mark Law, the Spanish Patent and Trademark Office (SPTO) will be competent to declare the invalidity or revocation of a trademark as of 14 January 2023.
1 Annex I to this chapter includes a list with links to the official fees corresponding to the different types of rights.