1 . Trademark
1.1. Sources of law
The primary sources are national and European Union law, as well as international treaties ratified by Spain. Specifically, the national statues are the Spanish Trademark Act 17/2001, of December 2001 and the Royal Decree No. 687/2002, of 12 July 2002, approving the regulation for implementing the Spanish Trademark Act.
The European Regulations applicable to Spain as a Member State of the European Union are the European Union Trademark Regulation 2017/1001, the European Union Trademark Delegated Regulation 2018/625 and the European Union Trademark Implementing Regulation 2018/626. In addition, the European Union law includes the relevant prior Directive approximating the laws of the Member States relating to trademarks 2015/2436.
The main international treaties applicable in Spain are:
- The Madrid Agreement Concerning the International Registration of Marks of 14 April 1891 as amended on 28 September 1979.
- The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks of 27 June 1989, as amended on 12 November 2007.
- The Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating Thereto, as in force on 1 February 2019).
- The Trademark Law Treaty (TLT), of 27 October 1994.
- The Singapore Treaty on the Law of Trademarks, of 27 March 2006.
- The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, of 15 June 1957, as amended by the Stockholm (1677) and Geneve (1977) Acts and as amended on 28 September 1979.
- The Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, of 14 April 1891.
Last but not least, case law and doctrine are clarifying sources. Indeed, the case law of the Spanish Supreme Court, the Spanish Constitutional Court and the Court of Justice of the European Union complement the foregoing sources when interpreting the applicable law provisions and regulations, and the doctrine of law experts can also be used for such interpretation purposes by the Spanish Courts.
The Trademark Act provides the owner of an unregistered mark with the same rights granted to the owner or a registration only in the event that the unregistered mark is well-known in Spain within the meaning of Article 6bis of the Paris Convention. On the other hand, the level of protection of a well-known unregistered mark is lower than, and should not be confused with, the one regarding a (registered) trademark enjoying reputation.
An unregistered well-known trademark within the meaning of Article 6bis of the Paris Convention can be the basis of an opposition against the registration of a later trademark application, while an unregistered trademark having only a standard or low degree of distinctiveness cannot. However, in the case of a well-known unregistered trademark, the protection is limited to goods / services identical or similar to those for which the well-known character is acknowledged, as opposed to a reputed (registered) trademark which is also protected against goods or services different from those covered by the registration. Furthermore, proving that the unregistered mark was well known in Spain by the filing or priority date of the later application is a crucial condition to prevail in the opposition.
Therefore, an unregistered mark which is merely used but does not enjoy a well-known character in Spain is not considered an enforceable right, nor it is protected by the Spanish law. Any possible defence of such a mark would need to be sought in the Spanish Unfair Competition Act 3/1991 of 10 January 1991.
1.2. Substantive law
Until the reform entered into force in 2019, Spanish law distinguished between three kinds of registered trademarks:
- trademarks not enjoying any notoriety;
- well-known trademarks; and
- trademarks with a reputation.
The difference between the two latter categories was that well-known trademarks were those considered well-known by the relevant sector of the goods and services covered by the registration, while trademarks with a reputation were those which the public in general is considered acquainted with (irrespective of the market sector involved).
Starting from the reform, the Spanish Trademark Act was adjusted to be in line with the European Union law and now distinguishes only between two kinds of trademarks regarding their distinctiveness: trademark not enjoying a reputation and reputed trademarks.
Registered trademarks not enjoying reputation do not benefit from the special protection acknowledged to reputed trademarks, namely, they are protected only against later marks for goods or services identical or similar to those for which they are registered.
Registered trademarks which enjoy reputation do have an enhanced protection in Spain. They enjoy a broader scope of protection and can successfully be enforced against later third party marks, which cover or are used in connection with goods and/or services similar or different from those covered by the earlier registration, provided that the use of the later mark, without due cause, may take an unfair advantage from the reputation of the earlier trademark (free-riding) or cause a detriment to it (dilution, blurring or tarnishment). Likelihood of confusion is not a requirement to apply the enhanced protection attributed to reputed/famous registered trademarks.
Prior to the reform, the Trademark Act expressly provided that the more reputed a trademark is, the more different the products and services of a trademark application can be and yet allow the owner to successfully oppose the application. Despite this having been removed from the current provision, it will certainly keep being applied as a logic rule in the assessment of oppositions based on reputed trademarks.
Trademarks belonging to the "luxury industry" do not enjoy per se a broader range of protection, apart from that provided by law for standard trademarks, whether well-known or reputed. However, very often the "aura of luxury" surrounding these trademarks plays a positive role when it comes to successfully enforcing them, actually granting them a de facto broader and stronger protection.
The positive and persuasive effect of this almost psychological effect is often seen both among trademark examiners and Judges' decisions leading to a successful outcome for the luxury industry trademark owner.
In order to achieve an enhanced broader protection for reputed or famous trademarks, it must be proved that they are generally known by the relevant sector of consumers to which those products or services are destined, or that they are familiar to all the public in general (of any market sector), respectively. Sufficient proof of either of these two categories may include many kinds of evidence: oral testimony, affidavits, expert evidence, surveys amongst consumers, documentary evidence such as advertisements, sales data and market share, geographical scope and duration of use, marketing activities, advertising data investments, promotional material, advertising of any kind, references on Google or other search engines and in social media, certificates issued by chambers of commerce or well-known, famous and/or reputed trademarks associations, as well as independent published rankings of trademarks, among others. Case law precedents are also useful but not binding (neither for the SPTO or the Courts).
There is not a specific test or threshold that must be reached to establish that a trademark is entitled to broader protection because it is reputed or famous. In Spain, a trademark can be enforced against a domain name, a trade name and any other distinctive sign, as well as against company names. Enforcing a trademark against its use as a metatag and/or keyword is possible too but the use should be analyzed on a case by case basis, considering that Internet users are not so easily misled. A trademark can be enforced against its unauthorized use in social media where such use is for commercial purposes, according to the general standards of trademark infringement rules; when the use is for non-commercial purposes the enforcement might succeed only if it is denigrating or detrimental to the trademark or its owner. Comparative advertising is permitted in Spain (Unfair Competition Act, Law 3/1991, of 10 January, and the General Publicity Act, Law 34/1988, of 11 November) provided that the trademark is used in the market for the products or services of the competitor which are compared with the advertiser. The comparison must be made in an objective manner between one or several essential characteristics of the products or services, which are relevant, verifiable, and representative, including price.
It must be stressed that Spanish courts do not accept the simultaneous enforcement of the same facts under the Trademark Law and the Unfair Competition Law - the latter is usually restricted to unregistered trademarks and/or very specific acts outside the scope of the trademark protection.
2 . Copyright
2.1. Sources of law
The principal sources of law and regulation relating to copyright are national and European Union law, and international treaties ratified by Spain. The relevant national statutes is the Spanish Intellectual Property Act, Royal Legislative Decree 1/1996, of 12 April 1996, currently in force after several amendments.
The main international treaties applicable in Spain are:
- Berne Convention for the Protection of Literary and Artistic Works of 9 September 1886.
- Geneva Universal Copyright Convention of 6 September 1952.
- Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations of 26 October 1961.
- Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) of 15 April 1994.
- WIPO Copyright Treaty (WCT) and WIPO Performances and Phonograms Treaty (WPPT) of 20 December 1996.
- Beijing Treaty on Audiovisual Performances of 24 June 2012.
The case law of the Spanish Supreme Court and the Court of Justice of the European Union complement the above when interpreting the applicable laws and regulations.
The order of priority when a conflict arises is as follows:
- European Union Law and international treaties ratified by Spain;
- Spanish Constitution;
- the Spanish law provisions and regulations;
- general principles of the law;
- case law; and
2.2. Substantive law
Original literary, artistic or scientific works, expressed by any means or on any medium, are subject to copyright protection under Spanish law. The Spanish law provides an open list of examples of copyrightable works that includes books, speeches, conferences, music (with or without lyrics), dramatic plays and musicals, choreographies, theatrical plays, motion pictures and any audio-visual works, sculptures and paintings, drawings, cartoons, comics, projects, plans, architectural and engineering designs, graphics, maps and designs in connection with topography, geography and, in general, science, photographs and software.
Copyright is independent, compatible and cumulative with the industrial property rights that may exist on a work. Therefore, it is possible that objects of industrial, fashion or accessory design are capable of being protected by copyright provided that they are original artistic creations expressed by any means or on any medium. This means that the same requirements as the listed works are required to be protected by Copyright.
The rights covered by copyright consist of both moral and economical rights, which jointly grant full disposition and exclusive right to the exploitation of the work to the author, with no limitations except those established by the Law.
The moral rights are unwaivable and inalienable, and grant the author the right to:
- decide whether their work is to be disclosed and in what way;
- determine whether such divulgation is to be made with their name, under a pseudonym or sign or anonymously;
- claim of their authorship of the work;
- demand respect to the integrity of the work and object to any distortion, modification, alteration or attack on it that might be prejudicial to their legitimate interests or detract from their reputation;
- modify the work respecting the rights acquired by third parties and the requirements of protection of goods of cultural interest;
- withdraw the work from commerce by changing their intellectual or moral convictions; and
- access the unique or rare copy of the work when it is under someone else's possession, in order to exercise the right of disclosure or any other right that corresponds to them.
A legal entity acquires the economic rights in the works created by its employees only if this is expressly agreed in writing.
The copyright assignment agreement must be freely expressed in writing with clear transfer of the rights. The transfer of exploitation rights will be limited to those expressly indicated in the agreement, as well as its duration and territory. The assignment of rights will be considered as non-exclusive unless the exclusivity is expressly agreed.
The main precautions to consider when drafting a license of copyright are that the global assignment of economic rights on future works is forbidden by law, commitments not to create any future work will be null and void and assignment of economic rights will not cover any divulgation methods inexistent or not yet discovered at the time of the assignment, even if this is expressly agreed. Lack of mention of the duration of the assignment will limit it to five years, and lack of mention of the geographical scope will limit the assignment to the country in which the assignment was made.
Copyright protection lasts during all the author's life plus seventy years after his death.
This seventy years period is calculated from the first day of the year after the year in which the author deceases. Copyright of authors who died before 7 December 1987 has a longer protection, namely eighty years from the death of the author. However, there are two moral or personal rights that are perpetual, namely, the right of acknowledgment of their authorship and the respect to the integrity of the work.
In Spain, it is possible to obtain a copyright registration. However, this copyright registration is not required to create or enforce copyright, obtain damages for its infringement or any other relief. A copyright deposit is not required either; nevertheless, both the registration or deposit and a copyright notice are highly advisable for enforcement purposes.
The consequences for failure to apply for and successfully complete a copyright deposit or registration are that the plaintiff will have to prove the copyright (namely its content, authorship and date of creation and/or divulgation) through other means of evidence different from the registration or deposit.
Objects of industrial designs are as capable of protection by copyright as any other work. In order to prove that an object of industrial design is capable of protection by copyright the most advisable evidence is an expert opinion, although any other kinds of evidence may complement it.
Copyright infringement is assessed when sufficient substantial similarity exists between the two works. No actual copying is necessary to establish infringement. Proof of copying can, however, increase the economic compensation the infringer is condemned to pay the copyright owner. Furthermore, copying may also amount to or involve criminal responsibility.
Copyright can be enforced against a trademark, a design, a patent, a domain name, a trade name, a pseudonym and any other intellectual property right.
Any use of a copyrighted work requires the authorization of the author or the copyright holder. Thus, copyright can be enforced against its unauthorized use in social media, according to the general standards of copyright infringement rules.
Furthermore, use of copyright in comparative advertising with other copyright, due to the nature of copyright, would be almost impossible when respecting the rules on comparative advertising, which must always focus on objective proven facts, not subjective opinions or impressions.
In general, copyright is difficult to enforce against its unauthorized use in parody because the Spanish Intellectual Property Act expressly admits such parody, provided it does not create a risk of confusion with the original work or damage to the work or its author. This is hardly ever a black or white case. On the contrary, there is a great deal of uncertainty about the enforceability, because of the subjective component of the analysis of the parody. Therefore, enforcement of copyright against parody is in general far more difficult than enforcement of a trademark against it.
Fair use, fair dealing or similar doctrines do not exist in Spain, and only the defences mentioned above can play a successful role in the defence of an alleged infringer and are usually interpreted within rather narrow limits by Spanish Courts, so all use made must be for those mentioned purposes and be reasonable, not abusive, proportional with the result sought and, obviously, indicating the source: both the work and its author.
There are no grounds on which valid copyright can be deemed unenforceable, owing to any misconduct of the copyright holder. Only an express waive by the author to the exploitation rights so that the work becomes of free use can cause a partial unenforceability.
The time limit for bringing an infringement action is five years from the moment in which it could be taken. Usually, the moment in which it could be taken is considered to be when the copyright owner learnt about the infringement. However, a later time may also be admitted provided that for serious reasons beyond the copyright owner's control, the action could not have been taken despite the knowledge of its existence. Furthermore, an economic compensation can only be sought for the period of five years before the filing of the infringement action.
The current problems faced by luxury brands to extend and protect their copyrights are mainly found in the unauthorized uses of their works through the Internet or digital media, because despite the progress made for the protection of works in these media, today there are still difficulties for their proper protection. Fortunately, the regulations are being modified to avoid these unauthorized uses (or at least make it more difficult).
3 . Design
3.1. Sources of law
In Spain the principal sources of law and regulation relating to design are Spanish Law 20/2003 on Legal protection of Industrial Designs, Spanish Regulation 1937/2004 and the Hague Agreement of November 6th 1925. International designs are constituted by two Acts currently in force: the Geneva Act of 2 July 1999, and the Hague Act of November 28 1960. The Spanish Supreme Court’s decisions and the ECJ develop the Spanish sources of law regarding designs.
The priority of the sources of law are as follows:
- Law (International treaties, EU provisions and Spanish laws);
- Custom; and lastly
- General principles of law.
3.2. Substantive law
A design can protect the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation (that is, pieces destined to be assembled into a complex product, packaging, get-up, graphic symbols, typographic typefaces).
Novelty and individual character, as far as it is defined in Spanish law (according to EU regulation), are necessary to enjoy the rights on both registered and unregistered designs.
The right to the Community design shall vest in the designer or his successor in title. Rights to designs developed by employees belong to the employer if it has been developed in the execution of employee’s duties or following the instructions given by his employer (unless otherwise agreed by the parties).
Although there is no moral right, Spanish design law establishes the right of the author of the design to have his/her name included in the application. Whether the designer can waive his/her this right is something not included in the law nor clarified by the Courts
Regarding the possibility of assigning the rights on the design to third parties, the Spanish law states that it must be in writing to be valid and may only be opposed against third parties once the assign has been registered before the Spanish Patent and Trademark Office.
Protection of a Spanish registered design can last up to a maximum of twenty-five years from the application date (by paying official fees). Unregistered design protection lasts three years from the date on which the design was first made available to the public within the Community.
The holder of the design can ask for prohibiting the making, offering, putting on the market, importing, exporting or using a product which incorporates the design. In case of registered designs, products whose characteristics differ only in irrelevant elements will be considered identical to the design. Unregistered designs provide the right to prevent the acts referred before only if the contested use results from copying the design.
A design can be enforced against a trademark, another registered or unregistered design, a patent, a trade name, and other IP rights. Commercial use of a design in social media can also be enforced against according to the general standards of design infringement rules.
Although it is very uncommon, comparative advertising of designs would be possible if it meets the requirements stated in the Unfair Competition Law 3/1991.
Use in parody is an unauthorized use of the design, but in general terms would be admitted since parody does not meet commercial purposes. However, if the holder can evidence damages to the reputation of the design derived from the parody, payment of damages could be requested.
The defence available to an alleged infringer is essentially lack of similarity, apart obviously, from challenging the validity or ownership of the design. No other grounds exist apart from limitations of rights.
According to the law, the time limit for bringing an infringement action is five years from the moment in which it could be taken. Nevertheless, the case law states that there is no statute of limitation in case of continues infringement.
In general terms, acting against the same set of facts on the basis of design law, copyright and/or unfair competition is rejected by the Spanish courts.
4 . Right of privacy, publicity and personal endorsement
4.1. Sources of law
Spanish law recognizes the right of an individual to control the commercial use of their name, image, likeness, or other unequivocal aspects of one’s identity.
The principal sources of law and regulation relating to the right of publicity are national and European Union law, and international treaties ratified by Spain, namely the Spanish Constitution, the Spanish Publicity Act, Law 34/1988, of 11 November, the Unfair Competition Act, Law 3/1991, of 10 January, and the Organic Law 1/1982 of 5 May, for the civil protection of the right to honor, personal and family privacy and self-image.
The case law of the Spanish Supreme Court and the Court of Justice of the European Union complement the above when interpreting the applicable laws and regulations if such interpretation is needed.
4.2. Substantive law
The right of publicity is inherent to any individual. An individual cannot pass their right of publicity in whole or in part. However, an individual can license their right of publicity, either on an exclusive or non-exclusive basis.
Although it survives the death of the individual, and is transmissible mortis causa, the heirs of the deceased individual own those rights in a limited manner, being entitled only to enforce them in specific situations (i.e. uses and actions damaging the reputation).
The requirements necessary for an agreement for the license of the right of publicity to be valid in Spain are those of any other agreement under Spanish law, namely, free will expressing clearly and unequivocally the licensed rights.
The main precautions to consider when drafting a license of the right of publicity are determining precisely the scope of the license (both geographically and the kind of use), duration and causes of termination, within which, importantly, setting up the exact terms in the event of any dishonorable conduct damaging the public image of the individual. Thus, at the very least, a termination right for this cause should be established, together with compensation for the damages the licensee may suffer as a consequence of that detriment to the licensor’s public image, if they affected the licensee.
The licensor can withdraw the consent to its use at any moment, but if the withdrawal is not grounded on any authorized situation ruled in the license agreement, the licensor may be forced to pay damages to the licensee if there is not justified reason. The withdrawal will not affect the past uses and actions as it has no retroactive effect.
Standing to sue for a violation of the right of publicity corresponds to the individual or their successors. If the damage to the image of a deceased individual is serious and there are no successors, the public prosecutor may do so as well. An exclusive or even a non-exclusive licensee may be entitled to sue depending on if the license agreement stated so and in what terms and conditions. However, this is a very personal right, so even if it was agreed between licensee and licensor, a Judge may require the individual to join the proceeding as co-plaintiff.
The right of publicity can be enforced against commercial use of the individuals name, image, likeness, or other unequivocal aspects of their identity, such as their voice. It would be more difficult to enforce it against any other aspects of their personality, but the actual chances of success of the enforcement would depend on such aspect/s being analyzed on a case-by-case basis, and whether or not the public recognizes the identity of the individual.
It is not necessary to prove that that individual’s name, image, likeness, or other unequivocal aspects of one’s identity have a commercial value to obtain an injunction or other remedies for the unauthorized use.
Even though it is true that a commercial value is not necessary to achieve those goals, when such value can be assessed and it is significant, this may allow the individual to obtain a higher economic compensation for losses and damages, besides increasing the chances of an injunction being granted. In order to prove such commercial value, all kind of evidence may be produced and should be admitted by Spanish Courts, including oral testimony, affidavits, expert reports, or documentary evidence, among others.
The defenses available to the alleged infringer are basically freedom of speech, freedom of information and expression, fair use, especially of a public figure image for informative purposes, and parody, with variable chances of success depending on the specific circumstances of the case and the kind of use made.
5 . Product placement
The Spanish regulation configures product placement as a "right" of the audiovisual communication service providers as a manifestation of the broader "right to make commercial communications".
Product placement is regulated in Spain by Law 7/2010 of 31 March, General Law on Audiovisual Communication and the Royal Decree 1624/2011 approving the Implementing regulation of the law.
Product placement is allowed in motion pictures, short films, documentaries, television series, sports programs and entertainment programs, in exchange of a payment. Where no payment is agreed, only the free supply of certain products or services, such as material help to the production or awards, the products or services must have a significant value. When the program is produced by the service supplier the public must be informed of the existence of the product placement at the beginning and at the end of the program, and after advertising breaks too.
In other types of programs, product placement is only permitted in exchange of free provision of the products or services, as well as economic help for the production or awards of the program.
A new Preliminary draft of the General Law on Audiovisual Communication is being discussed that in its current version would generally allow product placement in all programming except news and programs with current news content, consumer protection programs, religious programs and children's programs.
Product placement must meet the following requirements:
- Not to condition the responsibility or editorial independence of the medium.
- Not to directly incite the purchase or rental of the products, giving undue prominence to them in the program.
- To indicate the existence of product placement-at the beginning, end and after each advertising break- when the program is produced by the service supplier
When the appearance of a product in a program does not comply with these requirements, it will be considered as a covert advertising of the brand or product, which is forbidden by our legislation.
The brand owner can try to stop the communication by means of an injunction, but it would be very difficult to obtain it unless there are extraordinary circumstances and sufficient time for a Court to grant such injunction timely. In most cases, damages would be the only feasible remedy available.
6 . Protection of corporate image and reputation
The laws regarding right of publicity and privacy extend in general to legal entities and corporations (public ones excluded) which enjoy these rights of publicity and privacy with a similar scope and restrictions as individuals. However, it is important not to confuse corporate image, reputation and honor. Although these concepts are close, they are not similar. While corporate image and reputation of legal entities and corporations can only be protected via Intellectual Property and Unfair Competition Laws, honour is a “fundamental right” that also applies to them and as such is protected by our Constitution and especially by the Organic Law 1/1982 and Civil Code. However, cases involving the violation of a corporation’s honour are mostly residual in Spain and the plaintiffs tend to mix the concept of commercial tarnish (usual in Unfair Competition and Trademark Laws) with affection of honor (in this regard, we can mention Supreme Court case 7th November 2019 ECLI: ES:TS:2019:3529 where the defendant addressed a false domain name including the plaintiff’s trademark to a well-known porn site).
It is generally possible to include specific clauses in agreements aimed at protecting the corporate image / reputation of one of the parties, especially if it has an “aura of luxury” (being the last trend to exclude online marketplaces). The practice is frequent in selective distribution but must comply with ancillary European Regulations on competition (vertical agreements) since the protection of prestige is not always compatible with restrictions of sales and other limitations. In this regard, the resellers must be chosen on the basis of objective criteria of a qualitative nature that are laid down uniformly for all potential resellers and applied in a non-discriminatory fashion and that the criteria laid down do not go beyond what is necessary (C-230/16 Coty Germany Gmbh v Parfümerie Akzente GmbH).
It is possible in Spain to include fines clauses for breach by a party of provisions protecting the reputation or corporate image. Besides the already known competition restrictions, the clauses must not be abusive. Moreover, it must be clear in the agreement that the protection of the reputation is one of the main aspects of the negotiation and regarding damages, it is always advisable to exclude the fine from the final compensation. Finally, attention must always be put onto fair uses of the trademark, especially in repair shops, as the ECJ has confirmed in numerous times since C-63/97 Bmw vs Deenik.