Trade Marks & Copyright 2024 Comparisons

The basic regulations applicable to national trade marks, trade names and copyright are:

• Act 17/2001 of 7 December 2001, on trade marks (the “TM Act”);
• Royal Decree 687/2002 of 12 July 2002, approving the regulations for the implementation of Law 17/2001 of 7 December, on trade marks;
• Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017, on the European Union trade mark (codification);
• Royal Legislative Decree 1/1996 of April 12th, approving the revised text of the Intellectual Property Law, regularising, clarifying and harmonising the current legal provisions on the subject (the “RLD 1/1996 IP Law”);
• the Civil Procedure Act 1/2000 of 7 January 2000;
• Organic Law 10/1995 of 23 November 1995, on the Criminal Code; and
• Royal Decree of 14 September 1882, approving the Criminal Procedure Act.

Spanish law recognises as “earlier marks” those unregistered marks which, on the filing or priority date of the application for the mark under examination, are “well known” in Spain within the meaning of Article 6 bis of the Paris Convention.

Key international agreements affecting the registration of trade marks and copyright in Spain include the following:

• the Paris Convention for the Protection of Industrial Property, 20/03/1883;
• the Madrid Agreement concerning the International Registration of Marks of 14 April 1891, as revised in Stockholm on 14 July 1967;
• the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks of 27 June 1989;
• the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks, and the Protocol Relating to that Agreement;
• the Trademark Law Treaty, 27/10/1994;
• the Singapore Treaty on the Law of Trademarks, 27/03/2006;
• the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, revised in Stockholm on 14 July 1967 and in Geneva on 13 May 1977, and amended on 28 September 1979, 15/06/1957;
• the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, amended on 1 October 1985, 12/06/1973; and
• the Agreement on Trade-related Aspects of Intellectual Property rights, 15/04/1994.

The laws applicable to foreign trade mark and copyright holders are the TM Act and the RLD 1/1996 IP Law.

Among the types of distinctive signs are:

• product marks;
• service marks;
• collective marks;
• guarantee marks; and
• trade names.

In accordance with Article 4 TM Act, all signs – particularly words, and including personal names, designs, letters, numerals, colours, the shape of goods or of their packaging, or sounds – may be registered as trade marks.

The following trade marks require authorisation from a person other than the applicant:

• the civil name or image identifying a person other than the applicant for the trade mark;
• the first name, surname, pseudonym or any other sign that for the general public identifies a person other than the applicant;
• signs that reproduce, imitate or transform creations protected by copyright or by another industrial property right other than those referred to in Articles 6 and 7 (prior marks and trade names); and
• the name, trade name or business name of a legal person which, prior to the filing or priority date of the mark applied for, identifies in the course of trade a person other than the applicant, if, because of its identity with or similarity to those signs and its identical or similar scope of application, there exists a likelihood of confusion on the part of the public.

Industrial designs may be registered as trade marks provided that they meet the requirements for registration as trade marks (please see 2.2 Essential Elements of Trade Mark Protection).

Concerning the protection of well-known marks that are neither registered nor in use, please see 1.1 Governing Law.

Pursuant to Article 4 TM Act, all signs may constitute trade marks, provided that such sign fulfils the following requirements:

• it distinguishes the goods or services of one undertaking from those of other undertakings; and
• it is represented in the Register of Trade Marks in such a way as to enable the competent authorities and the general public to determine the clear and precise subject matter of the protection granted to its proprietor.

Distinctiveness must be assessed in relation to the particular goods or services for which registration is sought. In addition, the assessment of distinctiveness must take into account the perception of the relevant public targeted by those goods or services.

Trade marks which have become distinctive through use before the date of granting of registration shall not be refused. In order to prove acquired distinctiveness, the following evidence shall be relevant:

• a computer-based market survey that provides information about the degree of knowledge of the mark, the market share it has, and the position it occupies in the market;
• marketing, advertisements and promotional material demonstrating the trade mark’s visibility, intensity and reach;
• a list of all the current worldwide registrations of the mark; and
• representative invoices (ideally from key clients).

Article 34 of the TM Act sets out the rights conferred on trade mark owners. These rights are linked to the validity of the trade mark in question. The main rights conferred on the proprietor of a trade mark are as follows:

• registration of a trade mark shall confer on its proprietor exclusive rights therein;
• the proprietor of such registered trade mark shall be entitled to prohibit any third party from using, without their consent, in the course of trade, an identical or similar sign for identical or similar goods or services;
• the proprietor of that registered trade mark shall also have the right to prevent third parties from bringing goods into Spain in the course of trade, without their being released for free circulation, in the case of goods (including their packaging) which come from third countries, and which bear without authorisation a trade mark identical to the trade mark registered for those goods or which cannot be distinguished in its essential aspects from that trade mark; and
• the proprietor of a registered trade mark may prevent traders or distributors from removing that trade mark without their express consent.

Article 3 of Directive (EC) 2001/29 on copyright and related rights in the information society grants authors the exclusive right to authorise or prohibit any communication to the public of their works, including making available to the public, in such a way that any person may access them from a place and at a time individually chosen by that person. This right is not exhausted after an act of communication or making available.

This exclusive right of the author presupposes the power to authorise, prohibit or restrict acts of communication to the public of their work.

According to Article 3 of Directive (EC) 2001/29 and Article 196 of the RLD 1/1996 IP Law, once technological measures have been imposed, their circumvention is prohibited.

In order to prove use of a trade mark, four factors must be proven by the evidence as a whole, in respect of the goods and services for which the trade mark is registered:

• place;
• time;
• extent; and
• nature of use.

Infringement shall be deemed to have occurred when the defendant uses a registered trade mark without the authorisation of its owner or licensees in connection with the sale or offering of goods or services, and in such a manner as to confuse the users of such goods or services.

In Spain, the right over the trade mark is acquired by registration. Therefore, the use of the symbols ® (registered) and MR (registered trade mark) is not compulsory and does not provide further legal protection. However, the use of these signs can serve to inform that a certain sign is a trade mark and thus prevent possible infringements.

These symbols can only be used once the trade mark is registered.

A trade mark may also be protected under copyright law if the trade mark constitutes a protectable artistic work under intellectual property laws.

Trade marks consisting of surnames interact with the moral rights of the author in the sense indicated in 2.1 Types of Trade Marks.

Article 9 TM Act makes the registration of a trade mark that reproduces, imitates or transforms creations protected by copyright or by another industrial property right conditional upon the applicant’s having the appropriate authorisation.

Article 10 of the RLD 1/1996 IP Law grants protection to works consisting of all original literary, artistic or scientific creations expressed by any means or medium, tangible or intangible, now known or to be invented in the future, including:

• books, pamphlets, printed matter, letters, writings, speeches and addresses, lectures, forensic reports, lecture explanations and any other works of the same nature;
• musical compositions, with or without lyrics;
• dramatic and dramatical-music works, choreographies, pantomimes and, in general, theatrical works;
• cinematographic works and any other audio-visual works;
• sculptures and works of painting, drawing, engraving, lithography and graphic cartoons, comic strips or comics, as well as their essays or sketches and other plastic works, whether applied or not;
• projects, plans, models and designs of architectural and engineering works;
• graphs, maps and designs relating to topography, to geography and, in general, to science;
• photographic works and works expressed by a process analogous to photography;
• translations and adaptations;
• revisions, updates and annotations;
• compendia, summaries and extracts;
• musical arrangements;
• any transformation of a literary, artistic or scientific work; and
• collections of other people’s works, data or other independent elements such as anthologies and databases which, by virtue of the selection or arrangement of their contents, constitute intellectual creations.

The work may be considered as a work, a collaborative work, a collective work or an independent composite work.

Copyright protection is granted to intellectual creations that are original and expressed in any medium or medium of expression.

In accordance with the provisions of Article 5 of the RLD 1/1996 IP Law, the natural or legal person who creates a literary, artistic or scientific work is considered the author. The author shall be presumed to be the person who appears as such in the work, by means of their name, signature or sign identifying them.

The RLD 1/1996 IP Law does not contain any specific provision on work for hire. It simply makes a small allusion in Article 59 to the publishing contract, which makes it necessary to refer to the concept of a work lease in the Civil Code, where one of the parties undertakes to execute a work in exchange for a price. Thus, there are different cases in which the RLD 1/1996 IP Law presupposes the existence of a transfer of rights, such as for collective works, music production contracts, advertising creations or works created within the framework of an employment relationship.

In Europe, the Court of Justice of the European Union noted in its landmark Infopaq decision (Case C-5/08, Infopaq International A/S v Danske Dagblades Forening) that copyright only applies to original works and that originality must reflect the author's “own intellectual creation”. This implies that an original work must reflect the personality of the author, which means that there must be a human author for a work to be protected by copyright.

Authors may disclose their work anonymously or under a pseudonym or sign. The rights granted to these authors shall be the same as those granted to known authors, and the exercise of these intellectual property rights shall correspond to the natural or legal person who brings them to light with the author’s consent, as long as the author does not reveal their identity.

Under the provisions of Article 7 of the RLD 1/1996 IP Law, co-authorship occurs in those situations where there is a collaborative work. In this sense, the work will be the unitary result of the collaboration of several authors. The rights over this work correspond to all the authors.

In order to disclose and modify the work, the consent of all the co-authors is required. In the absence of agreement, the judge will decide.

Once the work has been disclosed, no co-author may unreasonably withhold consent for its exploitation in the form in which it was disclosed.

Without prejudice to what has been agreed between the co-authors of the collaborative work, they may exploit their contributions separately, unless these are detrimental to the common exploitation.

Finally, the intellectual property rights over a collaborative work correspond to all the authors in the proportion they determine. To the extent not provided for in the RLD 1/1996 IP Law, the rules established in the Civil Code for community of property shall apply to these works.

Article 2 of the RLD 1/1996 IP Law sets out the rights that make up copyright. These can be grouped into two broad categories:

• moral rights (paternity, integrity, disclosure, modification and withdrawal); and
• economic rights (exploitation, reproduction, distribution, public communication and transformation).

All rights persist as long as the copyright remains in force.

Moral rights are unwaivable and inalienable; they accompany the author or performer throughout their life and their heirs or successors in title upon their death.

Synchronisation rights are a form of public communication right. A licence is required and must be obtained directly from the right-holders (author, publishers, record labels, etc).

The general rule is that copyright lasts for the life of the author and for 70 years after the author’s death. In the case of anonymous or pseudonymous works, it shall last for 70 years from their lawful disclosure. These periods run from January 1st of the year following the year of the death (or declaration of death) of the author or of the lawful disclosure of the work, as the case may be.

On the other hand, a special term of 50 years is established for the copyright of:

• phonogram producers;
• exploitation rights granted to performers;
• producers of the first fixation of an audio-visual recording; and
• broadcasters.

Not all copyright in a work lapses. The moral rights of paternity and integrity of the author are imprescriptible.

Copyright holders are not required to use the copyright symbol © or the word “Copyright”, although they may include a notice that a particular work is protected by copyright by placing the symbol © in front of the name of the work and indicating the place and year of its disclosure.

The aforementioned symbols and references must be placed in such a way and position as to clearly show that the exploitation rights are reserved (Article 146.3, RLD 1/1996 IP Law).

In Spain, there are collecting societies for authors’, performers’ and producers’ intellectual property rights. These are private, non-profit, association-based organisations that manage intellectual property rights in their own name or in the name of others.

These entities are governed by the RLD 1/1996 IP Law and the Organic Law 1/2002 of March 22nd, regulating the right of association, as well as by their own statutes. They are subject to administrative supervision and therefore require Ministry authorisation to carry out their functions, among which the following stand out:

• the administration of the intellectual property rights conferred;
• the prosecution of violations of these rights by means of a control of uses;
• the establishment of a remuneration appropriate to the type of exploitation to be carried out, and the collection of this remuneration in accordance with the stipulations of the law;
• in the area of mass uses, concluding general contracts with associations of users of their repertoire and fixing general tariffs for the use of the repertoire;
• enabling the enforcement of rights of a compensatory nature (eg, remuneration for private copying);
• distributing the proceeds to right-holders; and
• providing assistance and promotion services to authors and performers.

Copyright arises by the simple fact of creation of the work, so registration is not necessary to obtain protection. However, there are many benefits to registering a work, among which the following stand out:

• the constitution of a prima facie evidence of the existence of the rights, as they include the data of authorship, date and ownership of the right; and
• the prevention of plagiarism, as registration makes the public aware of the existence of protected rights over a work.

In Spain, there is an Intellectual Property Registry. This is a public organisation in which the following can apply for the registration of copyright:

• the author(s) of the work (without requiring foreign owners to be represented);
• the owners/successive owners of other intellectual property rights (artists, performers, producers, etc);
• the successive owners who acquire the rights of the original owners;
• the representatives of the authors or owners of the rights; or
• the person exercising parental authority, guardianship or curatorship of the author and owner, when the latter is a minor or is legally incapacitated.       

The Intellectual Property Registry is unique throughout the national territory and is made up of the Territorial Registries and the Central Registry. Applications can be filed at the different Registries, which have different procedures, forms and fees. In addition to the general requirements established by each Registry, depending on the type of work to be registered, there will be specific requirements.

Generally, an application for registration is submitted by providing the official registration application forms and a copy of the work, performance or production, in the form and manner indicated on the official forms. Depending on the case, the documentation thereof will be required by virtue of the legislation in force, as well as proof of payment of the corresponding fee.

Once the application has been received, if it does not comply with any of the necessary requirements, the Registry will request the applicant to remedy the deficiency. On the other hand, the Registry may at any time rectify, ex officio at the request of the interested parties, any material factual or arithmetical errors existing in its acts, as well as modify the identifying data of the original author or owner contained in the registration entry, without modifying the remaining data.

The Registry may refuse to register the right on the grounds of:

• the invalidity of the deeds;
• the capacity of the parties;
• the non-existence or incompatibility of the registrable rights; and
• any other legal question.

In such cases, the applicant may bring the appropriate action before the civil courts in accordance with the provisions of Article 145.2 of the RLD 1/1996 IP Law.

Registration may also be refused based on the application of administrative procedural rules. In these cases, the interested parties may lodge the appropriate appeals in administrative proceedings.

Copyright is independent, compatible and cumulative with:

• ownership or other rights over the material thing in which the work is embodied;
• industrial property rights that may exist over the work; and
• other intellectual property rights.

Intellectual property law establishes certain limits and exceptions to copyright, allowing the use of the protected work without authorisation; though in some cases remuneration must be paid.

The registration of a trade mark is constitutive – ie, the rights conferred by the trade mark are acquired by the registration of the trade mark. The mere use of the trade mark in the course of trade does not in itself confer rights.

The benefit conferred by the registration of a trade mark is that its owner will have an exclusive right to the registered sign and can prevent its use by third parties.

There are no additional requirements that depend on the type of trade mark applied for, and the same requirements apply to all types of trade marks.

In Spain, there is a single public register responsible for granting the registration of a trade mark: the Spanish Patent and Trademark Office (SPTO).

Before proceeding with a trade mark application, it is advisable to carry out a prior art search to detect earlier registered trade marks and thus prevent possible oppositions during the registration procedure. This search can be performed by consulting the database of the European Union Intellectual Property Office (EUIPO), called TMview. In addition, there are other paid platforms where these searches can be carried out.

In Spain, the registration of serial trade marks is not allowed.

The registration of a trade mark is granted for a period of ten years from the filing date of the application, and may be renewed successively for periods of ten years without having to prove compliance with any requirement, except for the payment of the corresponding fee.

The application for renewal may be submitted from six months before expiry of the registration until six months after expiry (grace period). Once these periods have elapsed, the trade mark will lapse and cannot be reactivated. Exceptionally, a trade mark may be reactivated after the grace period by means of the “re-establishment of rights” procedure.

The registered trade mark may not be altered during the period of validity, nor may it be altered when it is renewed.

However, if the trade mark includes the name and address of the proprietor, any alteration or deletion thereof which does not substantially affect the identity of the trade mark as originally registered may be registered at the request of the proprietor.

Trade mark applications may be filed by natural or legal persons, including public law entities. Persons not resident in a country of the European Union must act through an industrial property agent.

The application for registration of a trade mark must contain, at least:

• the trade mark application form;
• information on the applicant;
• a representation of the mark; and
• a list of the goods or services for which registration is sought, identifying the class(es) for which protection is sought.

The application fees depend on whether the application is filed online or in person, and are EUR127.88 for an online application in one class and EUR82.84 for each additional class.

It is not necessary for the applicant to use the mark prior to the application/registration.

The SPTO will review the application only on absolute grounds. Therefore, it will not take into account prior registered rights.

Once the trade mark application has been published, opposition to the registration may be filed:

• on absolute grounds, by any natural or legal person who considers themself to be adversely affected;
• on relative grounds, by the owners of the earlier trade marks or trade names referred to in the articles, as well as licensees authorised by the owners of such trade marks or trade names;
• in the case of earlier names and copyrights referred to in 2.1 Types of Trade Marks, by the holders of the earlier rights or the persons entitled to exercise those rights;
• in the case of trade marks which include a protected designation of origin or geographical indication, by the persons entitled to exercise under the applicable law the rights deriving from the corresponding protected designation of origin or geographical indication; or
• in the case of trade marks of proprietors seeking to register their representatives in their own name, the actual proprietors of said trade mark.

Written observations may also be submitted on absolute grounds by:

• public administrations;
• consumer and user associations;
• regulatory councils; or
• governing bodies of the protected designations of origin or geographical indications.       

Please see 4.4 Term of Registration.

The applicant or proprietor of a trade mark may divide the trade mark application or registration into two or more divisional applications or registrations, by distributing the goods or services listed in the initial application or registration.

To divide an application or registration, it is necessary for it to include several goods or services. The division may only be done during the registration or appeal proceedings, and shall only be accepted if, with such division, the suspension, opposition or appeal is confined to one of the divisional applications or registrations. A division of the application or registration may also be made where a partial transfer of the application or registration is requested.

Such division shall give rise to the payment of the corresponding fee.

Where there is an error in the information provided by the applicant, the SPTO will inform the applicant and ask them to correct the error. In addition, the applicant may request correction of the erroneous information, as mentioned in 4.4 Term of Registration.

Pursuant to Article 5 TM Act, the SPTO may refuse a trade mark application where it:

• cannot constitute a trade mark because it does not comply with Article 4 (see 2.2 Essential Elements of Trade Mark Protection);
• is devoid of distinctive character;
• consists exclusively of generic, descriptive or suggestive terms;
• is contrary to the law, public policy or morality;
• is likely to mislead the public – for example, as to the nature, quality or geographical origin of the goods or service;
• is excluded from registration by virtue of national or European Union legislation or international agreements to which the European Union or the Spanish State is a party, which confer protection on designations of origin, geographical indications, traditional wine terms, traditional specialities guaranteed, and plant varieties;
• without the required authorisation, reproduces, includes or imitates coats of arms, flags, decorations, badges or emblems; or
• has not been authorised by the competent authorities, and must be refused under Article 6ter of the Paris Convention.

After examining the application, if the SPTO considers that the application may be refused on absolute grounds, it shall notify the applicant and allow them a period of one month in which to submit any observations they deem appropriate. Within this period, the applicant may:

• withdraw the application;
• limit, amend or divide the application; or
• submit arguments on the grounds that the objection contradicts the provisions of the law.

An appeal may be filed with the SPTO against a decision rejecting a trade mark application. No administrative appeal may be lodged against the SPTO’s decision resolving the appeal, and an appeal must be lodged before the contentious-administrative jurisdiction.

The time limit for lodging an appeal against the refusal of a trade mark is one month from the date of publication in the Official Intellectual Property Gazette. This period cannot be extended.

Spain is a party to the Madrid system. An application should be filed on the official form provided for by the Common Regulations under the Madrid Agreement and Protocol, by:

• the proprietor of a trade mark registered in Spain under the Madrid Agreement; or
• the proprietor or mere applicant for a trade mark under the Protocol.

Third parties who consider themselves to be adversely affected may file an opposition, as indicated in 4.8 Consideration of Third-Party Rights in Registration. The time limit for filing an opposition is two months from the publication of the trade mark. This time limit cannot be extended.

According to the provisions of Article 26 TM Act, the parties may file a joint request for a stay of proceedings for a maximum period of six months, in order to try to reach an amicable settlement.

Opposition may be filed on the following grounds.

• Absolute grounds (see 4.12 Refusal of Registration).
• Relative grounds – ie:
1. existence of an earlier identical trade mark designating identical goods or services;
2. existence of an earlier identical or similar trade mark/trade name and where, because the goods or services they designate are identical or similar, there is a likelihood of confusion on the part of the public; and
3. existence of an earlier unregistered trade mark which is well known.
• For a trade mark that infringes earlier rights (such as geographical indications, appellations of origin, copyright, the name or image of a person other than the applicant) or that is applied for in the name of an agent without due authorisation from the owner.

Persons entitled to object are indicated in 4.8 Consideration of Third-Party Rights in Registration. The opponent does not need to be represented unless they are resident/established in a non-EU country.

The official opposition fees are around EUR38, and the professional fees will depend on the complexity of the case (on average, around EUR1,100).

The opposition procedure consists of a written procedure that starts with the filing of the official opposition form and payment of the corresponding fee. It is possible to file arguments in support of the opposition at the same time or at a later date – always before the SPTO issues a suspension of the processing of the trade mark application, informing the applicant that the application has been opposed.

Evidence of use of the earlier mark on the market (catalogues, website screenshots, market research, affidavits, etc) may be provided.

An appeal may be lodged against the SPTO’s decision rejecting the opposition filed against a trade mark application within a period of one month from the date of notification of the Office’s decision.

No administrative appeal may be lodged against the decision of the SPTO, but a judicial appeal must be lodged within two months of notification of the Office’s decision terminating the proceedings.

As a general rule, trade mark/trade name invalidity and revocation actions are not subject to a time limit. However, if the invalidity action is based on relative grounds, the limitation period for acquiescence applies (five years from the time of knowledge of the existence of the invalid trade mark). This period does not apply if the trade mark was applied for in bad faith.

A trade mark may be invalidated on the same grounds as it could have been refused on (absolute grounds and relative grounds). As regards absolute grounds, in addition to the grounds mentioned in 4.12 Refusal of Registration, the invalidity action may be based on the grounds that the applicant acted in bad faith.

Furthermore, upon application by a third party, a trade mark may be revoked:

• if, within five years of the application, the trade mark has not been used in connection with the goods or services for which it is registered (Article 39 TM Act);
• where it has become, through the activity or inactivity of its proprietor, the usual designation in the course of trade for a product or service for which it is registered; or
• where, in consequence of the use which has been made of it, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of the goods or services.

In addition, the SPTO shall declare the trade mark to be revoked when:

• it has not been renewed; or
• it has been surrendered by its owner.

Once an application for revocation/invalidity has been filed, the SPTO will inform the affected party of the application received, initiating the corresponding procedure.

In accordance with the provisions of Article 58 TM Act, an application for invalidity or revocation of the registration of the trade mark may be filed with the SPTO:

• in cases of revocation and invalidity on absolute grounds – by any natural or legal person, as well as groups or bodies representing manufacturers, producers, service providers or traders, and consumer and user associations, legally constituted and registered in accordance with the applicable state or autonomous community legislation, who consider themselves harmed and have legal standing; and
• in cases of nullity on relative grounds – by holders of prior rights.

Actions for revocation and nullity shall be brought before the SPTO or before the courts by way of counterclaim.

If the ground for revocation or invalidity exists in respect of only some of the goods or services for which the trade mark is registered, the declaration of revocation or invalidity shall extend only to the goods or services concerned.

Please see 4.4 Term of Registration.

Once a trade mark infringement claim has been brought before a court, the defendant may not file an application for invalidity or revocation of the trade mark before the SPTO as a defence, but must file a counterclaim before the court.

Pursuant to the provisions of Article 2 TM Act, where the registration of a trade mark has been applied for by fraudulently infringing the rights of a third party or in violation of a legal or contractual obligation, the injured party may claim ownership of the trade mark in court.

Once the claim has been filed, the court shall notify the SPTO of the filing of the claim for its entry in the Register of Trade Marks and, if appropriate, shall order the suspension of the trade mark registration procedure.

If, as a result of the judgment, there is a change in the ownership of the trade mark, the licences and other rights of third parties to the trade mark shall be extinguished, without prejudice to their right to claim from the transferor.       

In accordance with the provisions of Article 46 TM Act, the trade mark and its application may be transferred, for all or part of the goods or services for which it is registered or applied for, and entered in the Register of Trade Marks. In principle, there is freedom of form; however, the SPTO requires a valid document of assignment for the change of the owner of the rights.

As far as copyright is concerned, the assignment may only be made in respect of economic rights, and is required to be in writing. The assignment shall be limited to:

• the right or rights assigned;
• the methods of exploitation expressly provided for; and
• the time and territorial scope to be determined.

Both the rights conferred on the proprietor of a trade mark and the exploitation copyright are transferable via mortis causa.

Generally, trade mark licences are classified as contractual (exclusive, non-exclusive), full or compulsory.

Both the trade mark application and the trade mark registration may be licensed for:

• all (full licence) or part (partial licence) of the goods and services for which it is registered; and
• all (full licence) or part (limited licence) of the Spanish territory.

The law does not expressly require that it be granted in writing, but the SPTO requires a valid licence document to be provided in order to register the licence.

Unless otherwise agreed, the holder of a licence is entitled to use the mark for the entire duration of the registration, including renewals (Article 48.4 TM Act).

Please see 7.1 Assignment Requirements and Restrictions.

The licence or assignment of a trade mark may only be opposed against bona fide third parties once it has been entered in the SPTO’s Register of Trade Marks. Once entered in the Register, no other trade mark of the same or an earlier date which is opposed or incompatible with it may be entered in the Register of Trade Marks (Article 48.3 TM Act). If only the application for registration has been noted down, no other right or encumbrance of the aforementioned kinds may be registered until the resolution thereof (Article 48.4 TM Act).

The application for registration that first reaches the competent body will have priority over those that come later, and the corresponding registration operations will be carried out according to the order of presentation.

Once the exploitation rights over a protected work have been transferred, it is necessary to abide by the terms of the contract. Thus, in the case of a temporary assignment, the copyright will be recovered once the term for which the contract was granted has expired. In the case of an assignment without a time limit, the transferred rights could be recovered on the basis of a breach of contract by the assignee.

Both the application and the trade mark registration may be given as security or be the subject of other rights in rem, options to purchase, attachments or other measures resulting from the enforcement procedure, for all or part of the goods or services for which they are registered or applied for.

If a chattel mortgage is constituted, it shall be governed by its specific provisions and shall be entered in Section 4 of the Register of Movable Property.

Civil actions arising from trade mark and copyright infringement are time-barred after five years from the day on which they could have been brought (Article 45 TM Act).

The proprietor of a trade mark may bring the following actions:

• the cessation of acts infringing their rights;
• compensation for damages suffered;
• the adoption of the measures necessary to prevent the infringement from continuing and (in particular) the removal from the course of trade of the goods, packaging, wrapping, advertising material, labels or other documents on which the infringement of the trade mark right has materialised, as well as the seizure or destruction of the means principally intended for the commission of the infringement;
• the destruction or disposal for humanitarian purposes (if possible), at the option of the plaintiff, of the goods unlawfully identified with the trade mark which are in the possession of the infringer;
• the attribution of ownership of the seized goods, materials and means, where possible; and
• the publication of the judgment at the expense of the convicted party by means of notices and notifications to the persons concerned.

For their part, the copyright holder may request the cessation of the infringer’s unlawful activity and demand compensation for the material and moral damages caused, and may request the publication or dissemination, in whole or in part, of the court or arbitration decision in the media at the expense of the infringer.

In accordance with the provisions of Article 34 TM Act, an infringement shall be constituted for the use in the course of trade, without the consent of the proprietor:

• of a sign which is identical to the trade mark and is used for goods or services identical to those for which the trade mark is registered;
• of a sign which is identical or similar to the trade mark and which is used for goods or services identical or similar to the goods or services for which the trade mark is registered, if there is a likelihood of confusion on the part of the public (the likelihood of confusion includes the likelihood of association between the sign and the trade mark); or
• where the sign is identical or similar to the trade mark (regardless of whether or not it is used for goods or services which are identical or similar to those for which the trade mark is registered), when the trade mark enjoys a reputation in Spain and the use of the sign without due cause takes unfair advantage of the distinctive character or the repute of the trade mark, or where such use is detrimental to such distinctive character or repute.

Furthermore, copyright infringement will exist when a protected work is used (reproduced, translated, adapted, exhibited or performed in public, distributed, broadcast, or communicated to the public) without the permission of the right-holder and when such use is not included within the limits of copyright.

Please see 8.2 Legal Claims for Infringement Lawsuits and Their Standards.

The parties to the infringement proceedings shall be the holders of the infringed right and/or the licensee, and all those who have participated in the infringing act. In infringement proceedings brought by the owner of the right, the licensee may intervene to obtain compensation for the damage suffered.

The right conferred by the registration of a trade mark may be asserted against third parties only as from the publication of its grant. However, the application for registration of a trade mark shall confer on its proprietor, as from the date of its publication, provisional protection in the form of the right to claim compensation if a third party has, between that date and the date of publication of the grant, made use of the trade mark which would be prohibited after that period.

See 4.12 Refusal of Registration and 6.3 Ability to File a Revocation/Cancellation Proceeding.

The law does not expressly provide for a certain requirement to be fulfilled prior to the filing of the lawsuit. However, it is advisable to send a cease-and-desist letter to the alleged infringer, urging them to cease their conduct and to pay compensation for the damage caused.

The courts competent to hear trade mark and copyright infringement disputes are the Commercial Courts. In the second instance, the Provincial Courts have jurisdiction; and in the third instance, the Supreme Court has jurisdiction.

The parties must be represented by a lawyer and a solicitor in the proceedings. Foreign owners may file infringement suits provided they have a valid registration in Spain (ie, trade mark in Spain or trade mark in the European Union), or a well-known trade mark.

The claim must be accompanied by the documents and evidence supporting the claims; as such, costs may be incurred prior to filing for the preparation of market studies or expert studies, among others.

The application should state:

• all the facts on which the claim is based;
• the grounds on which it is based; and
• the evidence to be adduced.

Once the claim has been filed, it may not be amplified unless there are new facts or evidence of particular importance to the case.

The defendant may answer the claim received and file a counterclaim.       

An alleged infringer may bring a denial action or a boast action in which they ask a court to rule on the existence or non-existence of an infringement. Article 61 bis 6, TM Act states that a denial action may not be brought together with an action for nullity or revocation.

Please see 12.2 Alternative Dispute Resolution.

The SPTO is not competent to rule on trade mark infringement disputes, and it is necessary to go to court.

The incorporation or reproduction of the elements of a trade mark, without the consent of the owner, on the protected goods or services in a form identical to or indistinguishable from the original shall be considered counterfeiting.

An infringer may be civilly and/or criminally liable depending on the activity carried out. There are different ways of combating counterfeiting through civil, criminal or customs proceedings.

Furthermore, smuggling is generally considered to be the importation or exportation of goods without presenting them for clearance at customs offices and without paying the corresponding taxes, as well as the trading, possession or circulation of non-EU goods lawfully traded without complying with the legally established requirements. It should be noted that the crime of smuggling is not typified in the Penal Code but in the Organic Law 12/1995, of December 12th, on the repression of smuggling.

The Civil Procedure Act contains special provisions applicable to trade mark and copyright proceedings.

In Spain, there are several Commercial Courts with exclusive jurisdiction to hear industrial and intellectual property disputes. Once proceedings have been initiated, the parties must provide evidence to support their claims in accordance with the rules on the burden of proof, and the case will be decided by the judge.

The owner of the intellectual or industrial property right shall be presumed to be the person in whose favour the right is registered.

In accordance with the provisions of Article 256 LEC, any trial may be prepared by requesting that the person to whom the claim was addressed provide relevant information or evidence – in particular, concerning:

• obtaining data on the possible infringer, and the origin and distribution networks of the infringing works, goods or services;
• the production of banking, financial, commercial or customs documents, produced in a given period of time and which are presumed to be in the possession of the person who would be sued as responsible;
• that the provider of an information society service be identified, in relation to which there are reasonable indications that they are making available or disseminating (directly or indirectly) content, works or services that are the subject of that right; and
• the right of a provider of information society services to provide the data necessary for the identification of a user of its services.

Expert evidence and market studies are valid evidence in infringement proceedings. The court will give the evidence greater probative value depending on whether it is party evidence or evidence required by the court without a party’s request.

The costs of infringement proceedings will depend on (inter alia):

• the complexity of the case; and
• the volume and type of evidence to be adduced by the parties and the opposing party.

Article 40 TM Act establishes that the trade mark owner may bring the corresponding civil or criminal actions against those who infringe their rights.

Criminal actions for trade mark infringement are regulated in Articles 274 and 276 of the Criminal Code. The penalties range from:

• six months to four years imprisonment and a fine of 12 to 24 months (Article 274); and
• two to six years imprisonment and a fine of 18 to 30 months (Article 276), when the benefit obtained is of special economic significance, the facts are particularly serious in relation to the value of the objects or the offender belongs to a criminal organisation.

According to Article 287 of the Criminal Code, offences against industrial property belong to the category of “public offences”.

Consequently, they are prosecuted by the Public Prosecutor’s Office, while the injured party or any other third party may appear before the court as a private prosecutor.

The following grounds of defence may be raised by way of non-infringement:

• lack of identity between the signs and/or the goods and services at issue;
• the signs and/or goods and services at issue are dissimilar, and there is no likelihood of confusion among the relevant public; and
• the alleged infringer is not using the sign as a trade mark, and the alleged infringer is not using the sign in the course of trade.

In addition to non-infringement, the following grounds of defence can be invoked:

• in a counterclaim – owing to invalidity of the registered trade mark on which the infringement claim is based;
• revocation of the registered trade mark on which the infringement claim is based, among others – owing to absence of genuine use, the term becoming generic or the sign becoming misleading;
• substantive grounds – where the alleged infringer holds a prior right or exhaustion; and
• procedural grounds – the exceptions of lis pendens or of res judicata, expiry of the time limit to exercise the infringement action or lack of legal standing to bring an infringement action.

The following applies in accordance with the provisions of Articles 36 and 37 TM Act.

• The right conferred by the registration of a trade mark shall not entitle its proprietor to prohibit a third party from using it for goods put on the market in the European Economic Area under that trade mark, by the proprietor or with their consent (exhaustion of rights).
• A trade mark shall not entitle the proprietor to prohibit a third party from using it in the course of trade, if the use by the third party is in accordance with honest practices in industrial or commercial matters, and from using:
1. their name or address, where the third party is a natural person;
2. signs or indications that are devoid of distinctive character, descriptive or suggestive; or
3. the trade mark, for the purpose of designating goods or services as corresponding to the owner of that trade mark or referring to them.

Furthermore, the authorisation of the copyright holder will not be necessary in the following cases (Articles 31 to 39 RLD 1/1996 IP Law):

• provisional reproductions and private copying;
• use for security purposes or for the development of official procedures;
• acts for the benefit of persons with disabilities;
• quotations, reviews and illustration for educational or scientific research purposes;
• reproduction and communication of works and articles for current affairs disseminated in the media;
• use of databases;
• use of the works for current affairs and those placed on public roads;
• transmission of the work by cable, sending it to a satellite, and technical recordings of the work;
• orphan works (unidentified or untraceable owners);
• official events and religious ceremonies; and
• parody (as long as it does not imply a risk of confusion with the disclosed work, nor harm the original work or its author).

Pursuant to Article 31.2, RLD 1/1996 IP Law, the reproduction, on any medium and without the assistance of third parties, of work already published does not require the author’s authorisation when the following circumstances (which constitute the legal limit of private copying) occur simultaneously:

• when it is carried out by a natural person exclusively for private, non-professional and non-business use, and for neither directly nor indirectly commercial purposes;
• when the reproduction is made from a lawful source and the conditions of access to the work or service are not infringed; and
• when the copy obtained shall not be used collectively or for commercial gain, nor be distributed for a price.

The following shall be excluded from the provisions of the foregoing paragraph:

• reproductions of works that have been made available to the public by wired or wireless means in such a way that any person may access them from a place and time of their choosing, with the reproductions of the works being authorised, as agreed by contract and (where appropriate) against payment of a price;
• electronic databases; and
• computer programs.

According to Article 31.1, RLD 1/1996 IP Law, the author’s authorisation is not required for acts of temporary reproduction which, in addition to lacking in themselves an independent economic significance, are transitory or accessory and form an integral and essential part of a technological process, and whose sole purpose is to facilitate either a network transmission between third parties by an intermediary or a lawful use, understood as that authorised by the author or by law.

Please see the discussion of trade mark rights exhaustion in 10.2 Defences to Copyright Infringement (Fair Use/Fair Dealing).

For copyright, in accordance with the provisions of Article 19, RLD 1/1996 IP Law, when distribution is effected by sale or other transfer of ownership, within the European Union, by the owner of the right themself or with their consent, this right is exhausted with the first sale (although only for successive sales and transfers of ownership that take place in that territorial area).

In accordance with the provisions of Article 37, RLD 1/1996 IP Law, copyright owners may not oppose reproductions of works when they are made for non-profit-making purposes by museums, libraries, sound libraries, film libraries, newspaper libraries or archives (in public ownership or integrated into institutions of a cultural or scientific nature), and when the reproduction is made exclusively for research or conservation purposes.

Likewise, the aforementioned institutions shall not require authorisation from the right-holders for the loans they make.

The owner of the trade mark or copyright may apply to the court for the adoption of such interim measures as they deem necessary to ensure the effectiveness of the judgment. In particular, they may request:

• the intervention and deposit of income obtained through an activity that is considered unlawful and whose prohibition or cessation is sought in the lawsuit, as well as the consignment or deposit of the amounts claimed as remuneration for the intellectual property; and
• the temporary deposit of copies of the works or objects that are considered to have been produced in breach of the rules on intellectual and industrial property, as well as the deposit of the material used for their production.

Precautionary measures may not be granted ex officio by the judge, nor may they be more burdensome than those requested. Precautionary measures may only be granted if the person requesting them justifies that, in the case in question, situations could arise during the pendency of the proceedings (if the measures requested were not adopted) which would prevent or hinder the effectiveness of the protection that could be granted in an eventual favourable judgment. In addition, the applicant for the precautionary measure must provide sufficient security to respond quickly and effectively to the damages that the adoption of the precautionary measure may cause to the defendant’s assets.

The defendant may plead what they deem appropriate, making use of all the evidence at their disposal.

In accordance with the provisions of Articles 43 TM Act and 140 RLD 1/1996 IP Law, the compensation for damages shall cover:

• losses suffered; and
• profits foregone.

In addition, compensation may be claimed for the damage caused to the prestige of the trade mark by the infringer, and for the investigation costs incurred in obtaining evidence.

In the case of trade mark infringement, in fixing the damages, the following shall be taken into account at the option of the injured party:

• the negative economic consequences, including the profits that the owner would have made through the use of the trade mark had the infringement not taken place or, alternatively, the profits that the infringer has made as a result of the infringement; and
• a lump sum, including (at least) the amount the infringer would have had to pay to the trade mark owner for the granting of a licence that would have enabled them to carry out use of the trade mark in accordance with the law.

In the case of non-pecuniary damage, compensation shall be payable, even if the existence of economic loss is not proven.

In addition, among other circumstances, the reputation and prestige of the trade mark and the number and types of licences granted at the time the infringement began shall be taken into account. In the case of damage to the prestige of the trade mark, the following will also be taken into account:

• the circumstances of the infringement;
• the seriousness of the injury; and
• the degree of dissemination in the market.

Finally, the owner of a trade mark whose infringement has been judicially declared shall – in any case and without the need for any proof – be entitled to receive, as compensation for damages, 1% of the turnover achieved by the infringer with the unlawfully marked goods or services.

Each party shall pay the costs and expenses of the proceedings incurred at request, as and when they are incurred. The unsuccessful party in the proceedings shall pay the costs of the proceedings, which shall include lawyer and solicitor fees.

The courts shall calculate the court costs, the total amount of which shall not exceed one third of the amount of the proceedings, for each of the litigants who have obtained such a ruling; moreover, in principle, inestimable claims shall be valued at EUR18,000.

Compensation for the damage caused may be claimed directly from the defendant or claimed in civil proceedings where the law requires notice to be given to the defendant as part of the proceedings.

European Union legislation provides for a procedure concerning goods suspected of infringing intellectual property rights which are, or should be, under customs supervision or subject to customs control within the territory of the European Union.

The intervention of the customs authorities will consist, inter alia, of the detention of goods suspected of infringing certain intellectual property rights until they are destroyed, or until it is determined that they are indeed goods that infringe intellectual property rights.

The holder whose industrial or intellectual property rights are infringed may file an application for action to be taken by the customs authorities.

The infringement defendant may cease the infringing activity and try to reach an agreement with the right-holder, including the payment of compensation to the right-holder.

The right-holder may file a lawsuit without the need for prior conciliation or mediation with the alleged infringer.

In Spain, there are different dispute resolution alternatives, such as conciliation, mediation or arbitration.

As a general rule, these procedures are usually resorted to when there is a prior contractual relationship between the parties, and when they agree to resort to these channels in the event of a dispute.

In legal proceedings on trade mark infringement, if the trade mark is pending a claim or application for invalidity or revocation before another court or before the SPTO, the court, at the request of both parties or of one of them (and having heard the other party), may by order decree the suspension of the proceedings, until the other court or office issues a final decision on the invalidity or revocation (Article 61 bis TM Act).

Decisions of the courts of first instance that deal with trade mark or copyright infringement may be appealed to the Provincial Courts.

The appeal must be lodged with the court that delivered the judgment, and may be based on both factual and legal grounds raised by the parties at first instance.

Judgments handed down in all types of trials, final orders and any others that the law expressly provides for may be appealed, with the exception of judgments handed down in oral trials on the grounds of the amount of the claim when this does not exceed EUR3,000.

An appeal is expected to take between six months and two years to be resolved.

Appeals in trade mark and copyright infringement matters shall be heard through the general rules laid down in the Civil Procedure Act.

The appeal is an appeal for full review of the instance, as the appellate court has the power of absolute cognition – ie, both factual and legal (substantive or procedural).

Please see 2.1 Types of Trade Marks.

Law 3/1991, of 10 January 1991, on unfair competition aims to ensure competition in the interests of those acting in the market, which grants additional protection to holders of industrial property rights.

Recently, the Council and the European Parliament reached an agreement on the regulation of artificial intelligence (AI). The aim is to pass the first Artificial Intelligence Act, to encourage the development and adoption of safe and reliable AI in the EU single market. It is based on the premise that AI is capable of causing harm to society.

If this law is approved, the current concepts of AI could change, and this subject could be considered capable of infringing or owning rights.

Law 34/2002, of July 11th, on information society services and electronic commerce establishes the obligations of information society service providers.

The aforementioned service providers must provide information to their clients about the possible liabilities they may incur for the use of the internet for illicit purposes – in particular, for the commission of criminal offences and for the infringement of intellectual and industrial property legislation.

The registration of industrial property rights is optional for the holder of such rights, and their registration is not necessary in order to operate in the market. However, it is advisable to register such rights in order to prevent third parties from using them. It is also advisable to resort to other protection mechanisms through the signing of NDAs or the protection of a company’s valuable information by means of business secrets.