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 12 April, approving the revised text of the Intellectual Property Law, regularising, clarifying and harmonising the current legal provisions on the subject (“RLD 1/1996 of the 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.

Spain is a member of several key international treaties and conventions that govern trade marks and copyright. Many of these are self-executing, meaning they become applicable without requiring additional national legislation. The main treaties and conventions include:

• Paris Convention for the Protection of Industrial Property (1883);
• Madrid Agreement Concerning the International Registration of Marks (1891);
• Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989);
• Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1957);
• Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (1973);
• Trademark Law Treaty (1994);
• Singapore Treaty on the Law of Trademarks (2006);
• Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) (1994);
• Berne Convention for the Protection of Literary and Artistic Works (1886);
• Universal Copyright Convention (1952);
• Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (1961);
• WIPO Copyright Treaty (WCT) (1996);
• WIPO Performances and Phonograms Treaty (WPPT) (1996);
• Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled (2013);
• Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms (Geneva Phonograms Convention) (1971); and
• Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite (Brussels Convention) (1974).

In Spain, international treaties become part of the national legal system upon ratification, as per Article 96 of the Spanish Constitution, and are considered self-executing.

Foreign trade mark holders are protected under the Spanish Trade Mark Act (Law 17/2001) and EU Regulation 2017/1001 on the European Union Trade Mark (EUTMR). Priority rights under the Paris Convention for the Protection of Industrial Property allow foreign holders to claim earlier filing dates for applications filed within six months.

Foreign copyright holders are protected under the Spanish Intellectual Property Law (Royal Legislative Decree 1/1996) and the Berne Convention for the Protection of Literary and Artistic Works. Spain recognises the automatic protection of works created by authors from member countries of the Berne Convention, TRIPS Agreement, and other applicable treaties.

Among the types of distinctive signs are:

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

In accordance with Article 4 of the 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 (see 2.2 Essential Elements of Trade Mark Protection).

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

Pursuant to Article 4 of the TM Act, any sign may constitute a trade mark, 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 will not be refused. In order to prove acquired distinctiveness, the following evidence is 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 will confer on its proprietor exclusive rights therein;
• the proprietor of such registered trade mark will 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 will also have the right to prevent third parties from bringing goods into Spain in the course of trade, without the goods 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 the proprietor’s express consent.

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 is 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, 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 of the 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 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 dramatic-musical 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;
• compendiums, 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 is presumed to be the person who appears as such in the work, by means of their name, signature or a sign identifying them.

The RLD 1/1996 of the 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 of the 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.

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, a 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 of the IP Law, the rules established in the Civil Code for community of property will 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.

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 will last for 70 years from their lawful disclosure. These periods run from 1 January of the year following the year of 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.

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 of the IP Law and the Organic Law 1/2002 of 22 March, regulating the right of association, as well as 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 protection in Spain arises automatically upon the creation of an original work, without the need for registration. This is in accordance with the Berne Convention for the Protection of Literary and Artistic Works, to which Spain is a party.

While registration is not required to obtain copyright protection, it provides several legal benefits:

• Presumption of validity – registration establishes prima facie evidence of ownership and the details of the copyright (eg, date of creation and authorship).
• Priority – in disputes, registration can help prove the ownership and date of creation, offering a clear advantage.
• Civil actions – registration is not mandatory for bringing civil actions, but it simplifies proving ownership in court.

Spain has an Intellectual Property Registry, which is publicly accessible, enabling anyone to verify registered works and their associated rights.

In Spain, the following entities can apply for copyright registration:

• The author(s) of the work – no representation is required for foreign authors.
• Owners or successive owners of other intellectual property rights – including artists, performers and producers.
• Successive owners who acquire rights from the original owners.
• Representatives of the authors or owners of the rights.
• Persons exercising parental authority, guardianship or curatorship – applicable when the author or owner is a minor or legally incapacitated.

Regarding foreign applicants, representation by a Spanish attorney is not mandatory but may be helpful for navigating the process effectively.

Copyright protection in Spain is automatic, but the following formalities strengthen enforcement:

• Notices and symbols – including the © symbol, the name of the copyright holder, and the year of creation are recommended but not mandatory.
• Registration – which requires submitting the application to the Intellectual Property Registry, along with a copy of the work.

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.

A registry may refuse to register a 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 opposition 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.

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. In exceptional cases, a trade mark may be reactivated after the grace period by means of the “re-establishment of rights” procedure.

Trade mark applications may be filed by natural or legal persons, including public law entities. Persons not resident in a country of the EU 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.

Only very limited alterations are allowed during the registration process. Minor corrections, such as fixing typographical errors or refining classifications of goods/services, can be made by submitting a formal request to the SPTO along with any necessary documentation and applicable fees.

Material alterations, including changes to the distinctive character of the trade mark or expanding the scope of goods/services, are strictly prohibited. For such changes, a new application must be filed.

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 will 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 will 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 4.7 Revocation, Change, Amendment or Correction of an Application.

Pursuant to Article 5 of the 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 EU legislation or international agreements to which the EU or Spanish State is a party, which confer protection on designations of origin, geographical indications, traditional wine terms, traditional specialities guaranteed, and plant varieties;

• reproduces, includes or imitates coats of arms, flags, decorations, badges or emblems, but without the required authorisation; 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 will 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.

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.

A party can submit an opposition to a trade mark application within two months from the date of its publication in the SPTO Bulletin. Extensions of time to file an opposition are not permitted in Spain.

According to the provisions of Article 26 of the TM Act, the parties may file a joint request for a stay of proceedings for a maximum period of six months to attempt an amicable resolution before the opposition process continues.

Revocation actions based on non-use of a trade mark can only be filed after five years of registration if the mark has not been used.

Other revocation or cancellation actions, such as those based on absolute or relative grounds, can generally be filed without a specific time limitation unless barred by acquiescence or other legal doctrines.

For copyrights, there are generally no specific time periods for cancellation, as copyright disputes often focus on infringement or validity of ownership rather than revocation.

Opposition to a trade mark application can be based on:

• Absolute grounds, which include lack of distinctiveness or descriptiveness, or violation of public policy.
• Relative grounds, which include –
1. Identical or similar marks for identical or similar goods/services, creating a likelihood of confusion.
2. Well-known unregistered marks protected under the Paris Convention.
3. Infringement of earlier rights, such as copyrights, geographical indications, or names/images of individuals.
4. Applications made by an agent without the owner’s authorisation.

Cancellation grounds for trade marks are:

• Absolute grounds – the mark was registered despite lacking distinctiveness or descriptiveness, or despite violating public policy.
• Relative grounds – the mark infringes earlier rights (eg, prior trade marks, copyrights, or geographical indications).
• Bad faith – the trade mark was registered in bad faith by the applicant.

Revocation grounds for trade marks are:

• Non-use for five consecutive years post-registration.
• The mark has become generic through the proprietor’s inactivity.
• The mark is misleading due to the manner of its use.
• Failure to renew the registration, or voluntary surrender.

Revocation or cancellation actions are initiated by filing with the SPTO, which informs the affected party and begins proceedings.

In Spain, any party with a legitimate interest can file an opposition to a trade mark application. This includes holders of prior rights, such as earlier trade marks, trade names, well-known unregistered marks protected under the Paris Convention, and other rights like copyrights or geographical indications. Additionally, trade mark owners can oppose applications filed by unauthorised agents or representatives. Ownership of a registered trade mark is not mandatory; demonstrating earlier rights or a legitimate interest suffices. Representation by an attorney is required only for opponents domiciled outside the EU, while EU-based parties may represent themselves.

The official fee for filing an opposition with the SPTO is approximately EUR38. Attorneys’ fees for opposition procedures typically range from EUR400 to EUR2,500, depending on the complexity of the case and required evidence.

Revocation or cancellation actions may be initiated by any party with a legitimate interest. For relative grounds, claimants must provide evidence of earlier rights.

In Spain, the opposition procedure against trade marks is an administrative process handled by the SPTO. Once a trade mark application is published in the Official Bulletin of Industrial Property (Boletín Oficial de la Propiedad Industrial, or BOPI), interested parties have two months to file an opposition. The process is conducted in writing, without hearings, and requires the opponent to submit documentation supporting their claims, such as proof of earlier rights or reputation. Discovery as understood in common law jurisdictions does not exist in Spain; the process relies on the parties’ submissions of documentary evidence and arguments. The SPTO reviews the opposition and issues a decision, which can be appealed.

Revocation and cancellation actions can be brought before the SPTO or the civil courts. The SPTO handles cases such as non-use, misleading use, vulgarisation, absolute grounds (eg, lack of distinctiveness) and relative grounds (eg, conflicts with earlier rights).

The SPTO process is administrative, involving formal filing, a contradictory phase, and resolution. Civil courts address revocation or cancellation when they arise as counterclaims in infringement cases or broader disputes.

An appeal may be lodged against the SPTO’s decision – rejecting 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 may be lodged within two months of notification of the office’s decision terminating the proceedings.

Amendments to a trade mark or its list of goods and services during revocation or cancellation proceedings are limited. The trade mark may not undergo substantial changes in a way that changes its distinctive character, but minor corrections may be permitted. The holder can narrow the scope of the registration by removing specific goods or services, often to address claims of non-use or misleading use. However, expanding the scope or introducing new goods or services is not allowed. Such amendments must comply with the procedural rules of the SPTO.

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 of the 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 must notify the SPTO of the filing of the claim against its entry in the Register of Trade Marks and, if appropriate, must 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 will be extinguished, without prejudice to their right to claim from the transferor.       

In accordance with the provisions of Article 46 of the 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 will 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 of the TM Act).

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 of the TM Act). If only the application for registration has been noted down, no other right or encumbrance of the aforementioned kind may be registered until the resolution thereof (Article 48.4 of the 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.

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 of the 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 of the TM Act, an infringement will be constituted for 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.

See 7.2 Legal Claims for Infringement Lawsuits and Their Standards.

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 EU), 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.

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 of the TM Act states that a denial action may not be brought together with an action for nullity or revocation.

In Spain, small trade mark and copyright claims (under EUR2,000) can be resolved through the small claims procedure (juicio verbal) in civil courts, governed by the Civil Procedure Law. Cases are heard by first instance courts or commercial courts, depending on the issue.

The SPTO collaborates with the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center to offer mediation for intellectual property disputes, including trade marks and copyrights. While the SPTO does not provide mediation directly, it supports the process by facilitating access to WIPO’s services, including logistical support such as meeting spaces.

Mediation is voluntary, non-binding, and led by a neutral mediator specialising in intellectual property. The process is governed by Law 5/2012 on Mediation in Civil and Commercial Matters and WIPO regulations, ensuring confidentiality and cost-effectiveness.

The SPTO is not competent to rule on trade mark infringement disputes. For these cases, 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 protected goods or services in a form identical to or indistinguishable from the original will 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 12 December, 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. The case will be decided by the judge.

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

The costs of infringement proceedings will depend on (among other things):

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

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 of the TM Act:

• The right conferred by the registration of a trade mark will 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 will 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, and that are neither descriptive nor 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 of the 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 this does not imply a risk of confusion with the disclosed work, nor harm the original work or its author).

See the discussion of trade mark rights exhaustion in 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing).

For copyright, in accordance with the provisions of Article 19 of the RLD 1/1996 IP Law, when distribution is effected by sale or other transfer of ownership, within the EU, by the actual owner of the right 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).

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 the prohibition or cessation of which 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 are 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 of the TM Act and 140 of the RLD 1/1996 IP Law, the compensation for damages must cover:

• losses suffered; and
• profits forgone.

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 use the trade mark in accordance with the law.

In the case of non-pecuniary damage, compensation will 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 will 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, where infringement of a trade mark has been judicially declared, the owner of that trade mark will – 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 will pay the costs and expenses of the proceedings incurred at request, as and when they are incurred. The unsuccessful party in the proceedings will pay the costs of the proceedings, which will include lawyer’s and solicitor’s fees.

The courts will calculate the court costs, the total amount of which may not exceed one third of the amount of the proceedings, for each of the litigants who has obtained such a ruling. In principle, inestimable claims will 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.

EU 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 EU.

The intervention of the customs authorities will consist, among other things, 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.

In Spain, trade mark and copyright infringement decisions can be appealed. Cases are first heard by the commercial courts, with appeals made to the provincial courts within 20 business days. Appeals may address factual or legal errors, and the provincial court may hold oral hearings.

Further appeals can be taken to the Supreme Court but only on limited grounds, such as breaches of procedural law or significant legal principles.

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.

Spain is actively addressing the challenges posed by artificial intelligence in trade mark and copyright laws. Under the Intellectual Property Act, copyright is limited to works created by natural persons. This means that purely AI-generated works without meaningful human involvement are not eligible for copyright protection. However, if significant human input shapes the creation, the resulting work may qualify for protection, with authorship attributed to the contributing individual.

The Spanish government has taken steps to regulate AI through the creation of the Spanish Agency for the Supervision of Artificial Intelligence, which ensures ethical AI use and compliance with legal standards. This includes monitoring potential intellectual property issues arising from AI-generated content and enforcing ethical practices.

While Spain has not yet seen landmark decisions or significant litigation specific to AI-related intellectual property, the courts are closely monitoring international developments, particularly within the EU. Spanish courts often rely on precedents from other jurisdictions to navigate emerging issues.

In Spain, service providers are generally not liable for illegal content on their platforms under the Law on Information Society Services (LSSI), unless they fail to act after being notified. Copyright and trade mark owners can request takedowns by providing proof of ownership, such as registration.

Online marketplaces often require such registrations to process takedown requests and enforce rights. Courts can also issue dynamic injunctions, requiring providers to block access to infringing content even if it reappears under different URLs.

Spain actively promotes co-operation between rights-holders and platforms to combat online infringement. For instance, initiatives like the PACTO (Platform Against Counterfeiting Online) initiative encourage voluntary agreements between stakeholders to streamline enforcement efforts.