Patent 

On 1 June 2023, the Unified Patent Court (UPC) came into operation, and EU Regulations 1257/2012 and 1260/2012, which establish the Unitary European patent and its linguistic regime, started to be applied. However, Spain decided not to join the Unitary Patent. As a consequence of this, the right holders of European patents (not Unitary patents), as well as of a supplementary protection certificate (SPC) issued for a product protected by a European patent that filed an opt-out of its rights from the exclusive competence of such court (the UPC), would be excluded from the UPC’s jurisdiction concerning any litigation related to such mentioned rights, the applicable and relevant jurisdiction being national courts (in this case Spanish courts).

The main legal framework and the sources of law to be considered in Spain are:

• Spanish Patent Law 24/2015, of 4 July 2015, which has been in force since 1 April 2017.
• Royal Decree 316/2017 of 31 March 2017, approving the Regulation on the implementation of Patent Law 24/2015 of 24 July 2015.
• The European Patent Convention (EPC) of 5 October 1973, as revised by the Act revising Article 63 EPC of 17 December 1991 and the Act revising the EPC of 29 November 2000.
• Protocol on the Interpretation of Article 69 EPC.
• Patent Cooperation Treaty (PCT), done at Washington on 19 June 1970, amended on 28 September 1979, modified on 3 February 1984, and on 3 October 2001.

The case law developed by the Spanish courts complement the above regulations when interpreting and applying them. These courts follow the doctrine of the Boards of Appeal of the European Patent Office (EPO).

A Spanish patent can last to a maximum of 20 years from the application date, and it takes effect from the day on which the grant notice is published (annuity payments are compulsory). 

Utility models, which are minor inventions, can last to a maximum of 10 years from the application date and they take effect from the day on which the grant notice is published. A utility model grants its owner the same rights as a patent.

The right to the patent/utility model belongs to the inventor or their successors in title.

It is possible to file an opposition to a patent application within six months of the publication of the grant notice. Opposition proceedings against a utility model may also be filed within two months of the publication of the application.

Both the patent/utility model application and the patent/utility are transferable and may be given as warranty or be the subject of licences.

Compulsory dealing with patent validity actions is dealt with by the civil courts, while infringement cases can be dealt with by both civil or criminal courts.

Designs 

The main sources of regulation relating to designs in Spain are:

• Spanish Act 20/2003 on Legal Protection of Industrial Designs (implemented in Spanish Regulation 1937/2004).
• Regulation (EU) 6/2002 on Community designs, implemented by Regulation (EU) 2245/2002 and Regulation (EU) 2246/2002 on the fees payable to the Office for Harmonization in the Internal Market (Trademarks and Designs) in respect of the registration of Community designs.
• The Hague Agreement (1925), the Geneva Act (1999) and the Locarno Agreement Establishing an International Classification for Industrial Designs (1968).

The case law of the Spanish courts and the European Union Court of Justice complement the above regulations when interpreting and applying them.

The Spanish Act does not include protection for unregistered designs, which are only protected under the European Union Regulation.

Protection of registered designs can last a maximum of 25 years from the application date (with five-year renewals). Unregistered designs protection lasts three years from the date on which the design was first made available to the public within the European Union.

Even though a moral right does not exist as such, Spanish design law provides for the author of the design to have their name included in the application.

A request for a 30-month deferment of the publication of the design application is possible.

It is not possible to file an opposition to a design application. Opposition proceedings may be initiated once the grant of the registered design has been published in the Official Bulletin of Industrial Property.

Under the Spanish Designs Act, in the event of infringement, the design’s owner may pursue civil or criminal actions before the courts.

The legal framework of trademark regulation in Spain is mainly based on:

• The national law, the Spanish Trademark Act 17/2001, which is complemented by the Implementing Regulation 687/2002.
• Since Spain is an EU Member State, it is also under Regulation (EU) 2017/1001 on the European Union trademark, the Commission Implementing Regulation (EU) 2018/626 and the Commission Delegated Regulation (EU) 2018/625.
• At the international level, the Spanish state is part of the Madrid System for the International Registration of Marks and signatory to the Madrid Agreement (1891) and the Madrid Protocol relating to that Agreement (1989); it is also a contracting party of the Trademark Law Treaty (1994) and the Singapore Treaty on the Law of Trademarks (2006).

For the interpretation and application of these regulations, the case law of the Spanish Superior Courts and the European Union Court of Justice is considered.

As a rule, the trademark right of ownership is acquired by valid registration (notwithstanding the provisions of Article 6 bis of the Paris Convention).

The term of protection conferred by trademarks is 10 years from the date of the application and may be renewed indefinitely.

Trademarks and their applications may be transmitted, licensed, seized or mortgaged. However, such acts are only enforceable against bona fide third parties once they have been entered in the Register of Trademarks.

Matters relating to the compatibility of trademarks in the Registers, revocation or declaration of invalidity, are dealt with in the Contentious-Administrative procedure.

In the event of a trademark infringement, Spanish law provides for the right to prosecute it in both civil and criminal courts.

In civil proceedings, during the last few years courts and high courts that deal with trademark disputes have become specialised in this area. This means that their decisions are of a higher technical quality and the proceedings can be completed in a reduced amount of time.

The Unfair Competition Act is usually restricted to unregistered trademarks and very specific acts outside the scope of the trademark protection.

It is worth noted that in Spain offences against IP rights are also recognised as criminal offences, so they may be prosecuted ex officio and judged in criminal courts.

Well-known trademarks have a special status: the wider the scope, the higher the protection.

In Spain, copyright protects original works which may be of a diverse nature, such as literary, artistic or scientific, which shall be expressed through any medium or material support, whether tangible or intangible, without establishing a numerus clausus on this regard. The relevant legal framework and the sources of law to be considered are:

• The Spanish Intellectual Property Act, Royal Legislative Decree 1/1996, of 12 April 1996 (LPI).
• European Union law and international treaties ratified by Spain.
• The case law arising from the Spanish Supreme Court and the European Court of Justice shall complement the above when interpreting the law. 

Copyright belongs to the author by virtue of the mere creation of the work. Copyright consists of moral and economic rights to which the author has an exclusive right with no limits other than those established by the law. Thus, only the author or an authorised right holder can exploit the work. Copyright is independent, compatible and cumulative with: 

• the ownership of the material support in which the work is incorporated; and
• any industrial property rights that may exist over the work.

Copyrights last for the author’s life plus 70 years after their death. For authors who died before 7 December 1987, copyright extends for 80 years after death instead.

Economic rights can be licensed through written copyright licensing agreements. The licence will only cover the economic rights expressly indicated, and for the duration and territory agreed; and shall the licence not mention those terms, it will be presumed that:

• if the economic rights are not mentioned: the agreement shall be limited to the indispensable economic rights to fulfil its purpose;
• if the duration is not mentioned: the agreement shall be limited to five years; and
• if the relevant territory is not mentioned: the agreement shall be limited to the country where it was made.

Exclusivity must be expressly agreed, which would include the faculty to sub-license, unless agreed otherwise.

The licence agreement cannot cover non-existent nor undiscovered methods for divulgation of the work at the time of the licence agreement. Any agreement to license copyright over all of the works that the author may create in the future as well as the agreement by which the author compromises not to create a work in the future shall be null and void.

Registration of the works is not necessary in order for copyright to arise, nor to enforce it. However, registration provides for the presumption that, in the absence of proof to the contrary, copyright over the work belongs to the holder established in the respective entry. 

Any use of copyrighted works requires authorisation from the author or the rights holder, with the sole exception of the limits which are legally established, since no fair use nor similar doctrine exists in Spain. The author or the authorised rights holder may request the cessation of the activity and claim compensation for material and non-material damages for any copyright infringement.

For trade dress, when considering this to be the overall image of a product or service, there are no national regulations.

Sometimes Spanish courts grant protection to trade dress by virtue of Law 3/1991 of Unfair Competition, of 10 January 1991, amended on 20 February 2019, considering that an infringement of trade dress may constitute an act of taking advantage of a competitor’s reputation as well as an act of confusion.

Seeking protection for trade dress only can be requested before civil courts.

Right of publicity in Spain has the status of a fundamental right and is regulated by the Organic Law 1/1982 of 5 May, for the civil protection of the right to honour, personal and family privacy and self-image. It is guaranteed by the Spanish Constitution. 

Respect for the right of publicity constitutes a limit to the exercise of freedom of expression. Right of publicity is inalienable and imprescriptible and, therefore, inherent to the individual. The waiver of the protection provided by law is considered null and void.

However, this regulation recognises the right of an individual to control the commercial use of their name, likeness or other indicia of personal identity (i.e. voice, signature, likeness, photograph, pseudonym, etc.). An individual can license his or her right of publicity, either on an exclusive or non-exclusive basis, but express consent is required. Consent may be withdrawn at any time, but if there is no justified cause, damages, including justified expectations, shall be compensated where appropriate.

The right of publicity survives the death of the person. Although the object of protection after death is limited to the ‘memory of the deceased’, it has sometimes been accepted by the Spanish courts to prosecute the use of the name and image of a deceased person for advertising and commercial purposes.

The use of an individual’s name, voice or image for advertising, commercial or similar purposes without prior authorisation is unlawful and may be prosecuted in court by the right holder. Pursuing unauthorised uses of other aspects of their personality is more difficult, but the chances of successful enforcement will depend on the particular case and whether or not the public recognises the individual’s identity.

The existence of damage shall be presumed provided that the unlawful interference is proven. Compensation shall extend to non-material damage, which shall be assessed in accordance with the circumstances of the case and the seriousness of the injury actually caused, taking into consideration, where appropriate, the dissemination or audience of the medium through which it occurred.

The right to take legal action for infringement of the right of publicity lies with the individual or their successors and, in certain cases, with the Public Prosecutor’s Office.

Law 1/2019 of 20 February 2019 grants protection to trade secrets. This law transposes the Directive (EU) 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure. Thus, the protection of these rights has been harmonised in the EU; however, there is no directly applicable EU regulation.

Law 3/1991 of Unfair Competition could complete the protection provided by Law 1/2019. At the international level, the TRIPS Agreement applies in Spain, as a WTO Member.

With this new regulation, trade secrets may be an alternative or complement to other IP rights. Furthermore, the status of trade secrets is brought closer to that of IP rights. The main differences are that trade secrets are protected without the need to be registered, and for an unlimited period.

According to the Act, a trade secret is any information or knowledge (including technological, scientific, industrial, commercial, organisational or financial), which is secret, has business value and has been kept confidential by reasonable measures by the holder.

As with other IP rights, trade secrets may be sold or licensed.

The following behaviours may be considered unlawful: obtaining a trade secret by accessing or obtaining unauthorised copies containing the secret, actions against fair commercial practices, or the disclosure of the trade secret where the person making the disclosure was under a duty of confidentiality.

Against such infringing acts of a trade secret, it is possible to exercise criminal and civil actions (including damages) and to demand the adoption of the necessary measures for the protection of the trade secret. However, these actions are barred by the statute of limitations three years after the time when the party entitled to bring the action became aware of the person who violated the trade secret.

Moral rights belong to the author of a copyrighted work and are unwaivable and inalienable. Therefore, despite the economic rights being licensed to third parties, even exclusively, the moral rights will still belong to the author. The following moral rights are recognised in Spain:

• To decide whether the work is to be disclosed and how.
• To determine whether the work will be disclosed under its name, pseudonym, sign, or anonymously. 
• To be recognised as the author of the work.
• To demand respect for the work’s integrity, as well as to prevent its deformation, modification, alteration or attack which may hinder its legitimate interests or damage its reputation.
• To modify the work respecting the rights acquired by third parties and the cultural heritage protection regulations.
• To withdraw the work from commerce due to a change in its intellectual or moral convictions, after compensation for damages to the economic rights holders. 
• To have access to the unique or rare copy of the work, should it be in someone else’s possession, in order to exercise its publication right or any other corresponding right.

The right of acknowledgement of their authorship and the respect to the integrity of the work are perpetual. Upon the author’s death, the exercise of the moral rights will belong to the author’s declared heirs, which may be a legal or natural person. If no specific person has been declared by the author to exercise those rights, and the author had no heirs, those moral rights may be exercised by public institutions. Also, during the 70 years after the author’s death, the abovementioned heirs are entitled to decide whether, how and when a non-published work of the author may be released.

The protection and defence of intellectual property rights in court is constantly evolving. This evolution has been maintained as a straight principle judicial specialisation, which means concentrating judicial competence for IP conflicts in as few courts as possible. The enforcement of European trademark and design infringements is subject to the exclusive competence of the Commercial Courts of Alicante and their Appeal Tribunal. The Courts of Alicante are celebrating their 20th anniversary in 2024 as a unique competent tribunal regarding the enforcement of EU Intellectual Property rights.

Regarding the enforcement of national/European patent and trademark rights, the jurisdiction is concentrated in the commercial courts of only seven regions in Spain, namely, Cataluña, Madrid, Community of Valencia, Andalucia, Galicia, Basque Country and the Canary Islands.

As part of this policy of concentration and specialisation, a novelty for 2023 was the change in the judicial competence for the review of decisions issued by the SPTO in any proceedings for the grant or refusal of rights, including new cases of nullity and revocation. Until now, the re-evaluation of these resolutions was made before the contentious-administrative jurisdiction; however, from 14 January 2023 these competences were transferred to the civil jurisdiction, specifically to the section specialising in IP within the Provincial Appeal Courts.

The Judges of the Commercial Courts of Barcelona and Alicante implemented some years ago a FAST ACTION PROTOCOL for the urgent processing of requests for preliminary proceedings, fact-checking proceedings, protective letters or precautionary measures applicable only during the Mobile World Congress, which takes place annually in Barcelona.

This Protocol allows processing in a preferential and priority manner any of these actions that may arise in the previous days and during the Congress whose subject may be the infringing acts (or not) of industrial property rights, such as patents, designs and trademarks, among others, or even copyrights or trade secrets.

For proceedings to verify facts, preliminary proceedings or precautionary measures, the judges undertake to issue their resolution within a period of 48 hours, while for the processing of protective letters the period is reduced to 24 hours. These record times can be achieved thanks to the efforts of the judges and the rest of the courts’ staff during these periods.

The Protocol covers the immediate execution of the decisions adopted, including in the metaverse or any other type of environment, virtual worlds or online platforms.

Intellectual property rights are a relevant area of interest for most market players in Spain and in all areas of economy and industry. Trademarks, designs and copyrights are valuable assets where many companies make investments and don’t hesitate to defend them vigorously when necessary. Though the Spanish legislation is very similar to that of other European countries, the interpretation, the practical application and the jurisprudence are particular in many aspects, and for this reason it is highly advisable to seek local advice from expert legal professionals who specialise in IP law.