Jun 2024

Spain

Law Over Borders Comparative Guide:

Luxury Law

Sections

Scroll down to read the full chapter or click on the headings below to jump to the relevant section.

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1 . Trademark

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1.1. Sources of law

  • Spanish Trademark Act 17/2001.
  • Royal Decree No. 687/2002.
  • Madrid Agreement Concerning the International Registration of Marks.
  • Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.
  • Trademark Law Treaty.
  • Singapore Treaty on the Law of Trademarks.
  • Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

The case law complements the foregoing when interpreting the applicable law and the doctrine of law experts can also be used for such interpretation.

The Trademark Act provides the owner of an unregistered mark with the same rights granted to the owner or a registration only if the unregistered mark is well known in Spain within the meaning of Article 6bis Paris Convention (CUP). The level of protection of a well-known unregistered mark is lower than and should not be confused with the one regarding a trademark (registered) enjoying reputation.

An unregistered well-known trademark can be the basis of an opposition against the registration of a later 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 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.

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1.2. Substantive law

In line with EU law, the Spanish Trademark Act currently distinguishes between two kinds of trademarks: reputed and non-reputed trademarks.

Registered non-reputed trademarks do not benefit from the special protection acknowledged to reputed trademarks, as they are protected only against later marks covering identical or similar goods/services. Registered reputed trademarks enjoy a broader protection and can be also enforced against marks covering different goods and/or services, 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.

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.

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1.3. Enforcement

The evidence that must be produced to establish that a trademark is reputed should reflect that the trademark is well known by the relevant public.

Evidence may include oral testimony, affidavits, expert reports, surveys amongst consumers, advertisement, sales data, information on the market share, geographical scope and duration of use, investments data, promotional material, references on search engines and social media, certificates from associations acknowledging the reputation of the trademark, rankings of trademarks and case law decisions.

A trademark can be enforced against a domain name, a trade name and other distinctive signs such as company names (which might even lead to the company’s winding up). 

A trademark may be also enforced against its use as a metatag and/or keyword in some circumstances, to be analysed on a case-by-case basis, considering that internet users are not so easily misled. 

A trademark can be enforced against its unauthorised use in social media where such use is for commercial purposes, according to the general standards of trademark infringement rules. 

Trademark enforcement against a trademark’s unauthorised use in comparative advertising is possible under some conditions, particularly if it infringes the applicable law provisions. According to the Unfair Competition Act, Law 3/1991, of 10 January, and the General Publicity Act, Law 34/1988, of 11 November, comparative advertising is permitted in Spain provided that the trademark is used in the market for the goods or services commercialised/provided by the competitor which are subject to the comparative advertising. Furthermore, the comparison must be objective and involve one or several essential and verifiable characteristics of the compared goods or services. 

A trademark can be enforced against its unauthorised use in parody, if the parody creates a likelihood or risk of confusion and/or association, or if it is detrimental or denigratory and may affect the distinctive character or reputation of the trademark and/or its owner. 

A trademark owner can claim both trademark infringement and unfair competition for the same set of facts in one single legal action and court proceedings. It is possible but not necessary to bring parallel and/or separate unfair competition proceedings.

The metaverse, which allows users to experience online reality spaces in which they can connect and socialise with other users and share information or even carry out business transactions, is a relatively new concern for trademark owners. The fact that both virtual and real-world products and services can be commercialised in this virtual world puts trademark owners in a position where they necessarily must face new legal challenges. The unauthorised use of a trademark owner’s trademarks by third parties in a virtual world can lead to a confusion or association risk among consumers and to brand dilution, infringing real-world regulations that prohibit both trademark infringement and dilution. The metaverse creates a challenging new scenario for trademark owners who must find a way to apply trademark laws which typically address real-world issues to a virtual world enforcing trademark rights to the metaverse.

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2 . Copyright

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2.1. Sources of law

  • Spanish Intellectual Property Act, Royal Legislative Decree 1/1996.
  • Berne Convention for the Protection of Literary and Artistic Works.
  • Geneva Universal Copyright Convention of 6 September 1952.
  • Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations 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.

Case law complements the above.

When a conflict arises the order of priority of the applicable sources are:

  • EU law and international treaties ratified by Spain;
  • the Spanish Constitution;
  • Spanish law;
  • custom;
  • law general principles;
  • case law; and
  • doctrine.
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2.2. Substantive law

Copyrightable types of work are original literary, artistic, or scientific works, expressed by any means or on any medium. Spanish law provides an open list of examples of copyrightable works.

Objects of industrial, fashion or accessory design are capable of being protected by copyright if they are original artistic creations expressed by any means or in any medium. Copyright is independent, compatible and cumulative with the industrial property rights (such as trademark or industrial designs) that may exist on the same creation. A certain degree of originality and creativity is required; therefore, not all industrial designs are copyrightable.

The rights covered by copyright consist of both moral and economical rights.

The author’s moral rights cannot be waived and are inalienable. They include the right of disclosure; determining if divulgation is to be made with their name, under a pseudonym or sign or anonymously; claim of authorship of the work; and the right of withdrawal. 

A legal entity acquires the economic rights in the works created by its employees only if this is expressly agreed in writing. In the absence of a written employment agreement, it shall be presumed that the exploitation rights have been assigned to the employee exclusively and to the extent that it is necessary for carrying out the usual employer’s activities at the time of delivery of the work created under the employment relationship. The acquisition of rights in the works created by its consultants, shareholders, directors or suppliers would require an assignment agreement.

The requirements of a valid copyright assignment agreement are those of any other type of agreement under national law: it 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. 

When drafting a licence of copyright, the main precautions to bear in mind 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, 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.

The author can never assign or waive their moral rights. 

Copyright protection lasts for the author’s lifetime plus 70 years after their death. 

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2.3. Enforcement

Registration is not required to create or enforce copyright, obtain damages for its infringement or any other relief. Nevertheless, the registration and a copyright notice are advisable for enforcement purposes. 

Failure to display a copyright notice is not crucial and, if it is absent, that does not have irreparable consequences in most cases.

Objects of industrial designs are capable of protection by copyright. To determine this capability, an expert opinion is recommended.

Copyright infringement is assessed when sufficient substantial similarity exists between the two works. No actual copying is necessary to establish infringement.

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.

Copyright can be enforced against a trademark’s unauthorised use in social media, according to the general standards of copyright infringement rules.

While use of a trademark in comparative advertising is, in general, permitted in Spain, use of copyright seems to be, in general, much easier to challenge when enforcing it, simply because its use does not seem to be necessary for the comparison of any goods or services. 

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 unauthorised use in parody because the Intellectual Property Act expressly admits such parody, provided it does not create a risk of confusion with the original work or damage the work or its author. 

The defences available to an alleged infringer, apart from challenging the validity and/or ownership of the copyright, are based on the rule that use of a work is covered by the limits applicable to copyright.

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 waiver of the exploitation rights by the author 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. 

Nowadays, the most relevant issues that luxury brands face in expanding and protecting their rights in copyright are associated with the unauthorised use of their works on the internet/on a website or, most recently, in the metaverse because, despite the progress that has been made for the protection of works online, there are still difficulties for their appropriate protection. Amendments or updates to regulations are required, particularly in relation to the use of works in the virtual world.

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3 . Design

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3.1. Sources of law

  • Spanish Act for the Legal Protection of Industrial Designs 20/2003.
  • The Hague Agreement of 6 November 1925, for international designs.

Case law complements the foregoing.

The order of priority when a conflict arises is: 

  • EU law and international treaties ratified by Spain;
  • the Spanish Constitution;
  • custom;
  • law general principles;
  • case law; and
  • doctrine.
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3.2. Substantive law

All types of products are protectable by way of registered or unregistered design. 

The conditions that the owner must satisfy to obtain a design right are novelty and individual character. 

The requirements for a valid design assignment agreement are those of any other agreement under Spanish law: free will expressed in writing with clear conveyance of the rights. 

In the designs created by employees or consultants, the entity must have indicated in the agreement who the owner of the designs will be. For designs created by employees where creation is the subject of their duties or ordered by the entity, or for designs of suppliers hired specifically to create the design, it will be presumed that the right belongs to the entity, unless otherwise agreed. The acquisition of the rights in the works created by its shareholders or directors would require an assignment agreement.

There is no moral right in a design. However, Article 19 of the Spanish Design Act establishes the right of the author of the design to have their name included in the application for registration as such. 

Protection of a Spanish registered design can last up to a maximum of 25 years from the application date. 

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3.3. New technologies

Non-fungible tokens (NFTs) have not really had an impact on the protection of the rights of luxury brands and goods for the time being.

To date, the rise of sophisticated artificial intelligence (AI) has not had an impact on the luxury market and there have not been any amendments to the law.

Nor have there been developments in the law or practices by brands in the use of cryptocurrencies.

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3.4. Enforcement

Design infringement is assessed based on general overall impression produced by the design: if it is not different from the one produced by any other design which has been divulged before the filing or priority date of the design application.

No actual copying is necessary to establish infringement. Designs whose characteristics differ only in irrelevant elements will be considered identical. The main differences between registered and unregistered designs are the need to prove its authorship, date of creation and divulgation and a much shorter duration of the protection of the latter ones.

A design can be enforced against a trademark, another registered or unregistered design, a patent, a trade name, and other intellectual property rights. 

A design can also be enforced against its unauthorised use in social media, according to the general standards of design infringement rules, if it is for commercial purposes. In the event of an unauthorised non-commercial use of a design in social media, enforcement is also possible provided that the use is denigrating or abusive. 

While use of a trademark in comparative advertising is, in general, permitted in Spain, use of a design is easier to challenge when enforcing it, simply because its use does not seem to be strictly necessary. 

Use of design in comparative advertising together with other design, due to the nature of these rights, would be almost impossible according to the rules on comparative advertising, which must always focus on objective proven facts.

In general, design is difficult to enforce against its unauthorised use in parody if it does not cause risk of confusion with the original work or damage to the work or its author. 

Defences available to an alleged infringer are: (a) the challenged design produces a different overall impression on the informed user than the one produced by the design of which the rights are being enforced; (b) the design is null and void or can be cancelled; (c) the acts were performed in a private sphere and for non-commercial purposes; (d) the acts were done for experimental purposes; or (e) the acts of reproduction of the design were made for illustrative or educational purposes and not contrary to honest commercial practices. Our jurisdiction provides a “repair clause”.

No grounds exist under which a valid registered/unregistered design can be deemed unenforceable, and there is no misconduct of the design owner that can cause such unenforceability.

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 continued infringement. 

A design owner can claim both design infringement, copyright and unfair competition for the same set of facts in one single legal action and court proceedings.

The most relevant issues that luxury brands face in expanding and protecting their rights in designs are associated with the unauthorised use of their works on the internet/on a website or, most recently, in the metaverse because, despite the progress that has been made for the protection of designs online, there are still difficulties for their appropriate protection. Amendments or updates to regulations are required, particularly in relation to the use of designs in the virtual world.

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4 . Right of privacy, publicity and personal endorsement

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4.1. Sources of law

Spanish law recognises the right of an individual to control the commercial use of their name, image, likeness, or other unequivocal aspects of their identity. 

The principal sources of law on the right of publicity are national and EU law, and international treaties ratified by Spain:

  • The Spanish Constitution.
  • The Spanish Publicity Act, Law 34/1988, of 11 November.
  • The Unfair Competition Act, Law 3/1991, of 10 January.
  • The Organic Law 1/1982 of 5 May, for the civil protection of the right to honour, personal and family privacy and self-image. 

Spanish and EU case law complements the foregoing.

The privacy law of Spain has been strengthened. In particular, certain aspects of the Organic Law on Personal Data Protection and Warranty of Digital Rights (LO. 3/2018 of 5 December) have been amended by means of Law 11/2023, of 8 May, in accordance with the General Data Protection Regulation (GDPR). Thus, privacy law has indeed been strengthened and management costs and risks of sanctions have increased, placing greater compliance burdens and financial risks on luxury brands.

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4.2. Substantive law

The right of publicity is inherent to any individual, survives the death of the individual, and is transmissible mortis causa.

An individual cannot assign 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. 

The requirements necessary for a valid agreement for the licence of the right of publicity are those of any other agreement under Spanish law: free will expressing clearly and unequivocally the licensed rights. 

The main precautions to consider when drafting a licence of the right of publicity are determining precisely the scope of the licence, and the duration and causes of termination, within which, very importantly, the exact terms in the event of any dishonourable conduct damaging the public image of the individual should be set up. 

The licensor can withdraw the consent to its use at any time due to the very special nature of these personal rights, but the licensee could claim compensation for the losses and damages that the unilateral withdrawal may cause to the licensee in the absence of any condition ruled in the licence agreement for that event, i.e. if there is no justified reason for the withdrawal.

The death of the licensor does not terminate the agreement unless this was agreed by the parties as a termination cause. The agreement binds the successors, and the latter will take over in the agreements signed by the deceased. 

The right of publicity expires 80 years from the death of the individual.

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4.3. Enforcement

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 proceed as well. An exclusive or even a non-exclusive licensee may be entitled to sue, depending on whether the licence agreement provided this entitlement and under what terms and conditions. 

The right of publicity can be enforced against commercial use of the individual’s name, image, likeness, or other unequivocal aspects of their identity, such as their voice. 

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 unauthorised use. 

The defences available to the alleged infringer are 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.

The main issues that celebrities and others face when exercising their right of publicity when working with luxury brands are the potential ambiguities or unprecise terms of the agreement between the brand and the celebrity, which may lead to a controversy about them. Those issues should be inexistent or minimal if the agreement is carefully worded, painstakingly addressing all possible situations, and clearly establishing the rights and obligations of each party to the agreement.

Regarding new challenges in anti-counterfeiting activities in light of the globalisation of fakes and the increasing difficulty in distinguishing well-made fakes from originals, the enormous volume of counterfeiting of luxury brands in Spain remains the same or perhaps even worse in terms of quantity. In addition,  the quality of counterfeits has also increased in many cases, making it far more difficult to distinguish well-made fakes from original products. The Spanish police have a very skilled anti-counterfeiting division, but inevitably they need information from luxury brands to confirm that certain products are fake when the copycat counterfeits are extremely well made, and sometimes luxury brands are reluctant to disclose sensitive information about their products which is considered highly confidential.

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5 . Product placement

Product placement is permitted in Spain (by Law 7/2010 of 31 March, General Law on Audiovisual Communication and by Royal Decree 1624/2011 approving the Implementing regulation of the Law) in motion pictures, short films, documentaries, television series, sports programmes and entertainment programmes, in exchange for a payment. 

In other types of programmes, product placement is only permitted in exchange for free provision of the products or services, as well as economic help for the production or awards of the programme. 

Product placement is expressly prohibited in programmes destined for children. Also, certain products are not allowed for product placement — or for any other kind of advertising — such as cigarettes and any other tobacco products, pharmaceutical products, alcohol over 20% proof, or below 20% proof outside of certain times. 

The General Law on Audiovisual Communication 13/2022, dated 7 July 2022, generally allows product placement in all programming except news and programmes with daily news content, programmes regarding consumer protection, religious programmes and programmes for children.

Product placement must meet the following requirements:

  • Not to condition the editorial content, the organisation of the programme’s schedule, or the catalogue in a manner that affects the editorial responsibility and independence of the medium.
  • Not to directly encourage the purchase or rental of goods or services or include specific promotion references.
  • Not to give undue prominence to the products.
  • To indicate the existence of product placement — at the beginning, end and after each advertising break — when the programme is produced, or its production has been placed by the service supplier or its subsidiary companies.

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 an injunction. In most cases, damages would be the only feasible remedy available.

There are no provisions in the law for product placement aimed specifically at luxury products or services.

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6 . Protection of corporate image and reputation

The laws regarding right of publicity and privacy extend, in general, to legal entities and all corporations (public ones excluded) to enjoy these rights of publicity and privacy without any conditions.

The increase of legislative or litigation challenges regarding environmental issues or issues of diversity and inclusion are currently at the heart of the so-called 2030 Agenda, into which the Spanish government, following the guidelines of the United Nations, is putting a great deal of effort.

As regards the laws and regulations for accessibility by people with disabilities to websites and physical retail facilities, the main regulation is Royal Legislative Decree 1/2013, approving the Consolidated Text of the General Law on the Rights of Persons with Disabilities and their Social Inclusion, issued in application of the provisions of the second final provision of Law 26/2011, adapting regulations to the International Convention on the Rights of Persons with Disabilities.

Furthermore, Royal Decree 193/2023 regulates the basic conditions of accessibility and non-discrimination for people with disabilities for access to and use of goods and services available to the public and Law 11/2023, of 8 May, the transposition of EU Directives on the accessibility of certain products and services.

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”.

It is a common practice to include specific clauses in selective distribution agreements to protect the corporate image/reputation of one of the parties, such as prohibition to sell the products to resellers below a certain standard and maintain the distribution within high quality requirements. Other clauses, such as imposing a prohibition to sell below a certain price or to buy non-original parts/components, enter conflict with competition laws.

However, the above practice must comply with ancillary EU regulations on competition (vertical agreements) since the protection of prestige is not always compatible with restrictions of sales and other limitations. The resellers must be chosen based on objective criteria of a qualitative nature that are laid down uniformly for all potential resellers and applied in a non-discriminatory fashion and the criteria laid down should not go beyond what is necessary. 

Liquidated damages or stipulated fine clauses for breach by a party of provisions protecting the reputation or corporate image of the other party are permissible. To ensure their enforceability, the provisions must be unequivocal, so that the breach can be clearly provided based on objective facts. The clauses can be strict but must not be abusive.

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 advised to exclude the fine from the final compensation. 

Attention must always be put onto fair uses of the trademark, especially in repair shops, as the ECJ has confirmed in numerous instances.

The main unique concern of luxury brands in the secondary market, such as resale, and with third-party providers, such as repair and reconditioning services, is the creation of organised second-hand businesses.

EXPERT ANALYSIS

Chapters

Australia

Belinda Breakspear
Harriet Young

China

Lina Li
Yunze Lian

Germany

Dr Wiebke Baars

India

Dhruv Anand
Nimrat Singh
Sampurnaa Sanyal
Udita Patro
Pravin Anand

Italy

Fabrizio Jacobacci

Japan

Masaki Mikami

Lebanon

Julien Khoury
Nisrine El Haddad
Patricia Seaiby
Rany Sader

Mexico

Ricardo R. Díaz Cisneros

Netherlands

Herwin Roerdink
Tjeerd Overdijk

South Korea

Clare Ryeojin Park
Dae Hyun Seo
Won Joong Kim

Sweden

Helena Brännvall
Karin Crafoord
Magnus Henning

Thailand

Adele Marchal
Chanapa Thussanasumrit
Munif Chaipanya
Orranat Suvarnasuddhi
Pawat Varapirom

Ukraine

Dmytro Stefanovych
Ganna Prokhorova
Ilona Boliubash

United Kingdom

Simon Miles

United States

Alan Behr
Tod Melgar

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