When entering the Spanish market, a foreign investor who will sell products and/or services in this country should register the trademark representing the respective products/services with the local authorities or at an international level. For a trademark registration at the level of the European Union (EU), natural persons and legal entities can address to the EU Trademarks and Designs Registration Office (OHIM). The office receives applications for trademarks and other related intellectual property rights, such as works of art, photographs, websites and others. Our team of lawyers in Spain can provide legal assistance on the legal requirements that have to be met by a trademark registered in this country.
Trademark registration in Spain
If a trademark is registered at the level of the EU, the respective trademark will be protected in all the member states of the Community. Businessmen who want to set up a company in Spain can protect the identity of their business or products/services under the regulations established at a national and international level.
A trademark can refer to a name, a symbol, a figure, a sign, a word or a mark that has been established by the company in order to distinguish the respective company or products on the markets in which the legal entity performs its commercial activities. By registering the trademark, the investors will be able to have exclusive rights on the usage of the respective sign. The trademark can also refer to photos, graphic elements and other elements that represent the identity of a brand or service/products sold by a company.
When registering a trademark in Spain, the sign should simoultaneously meet the following requirements:
• the sign is free to be used on the local market;
• the sign does not have any negative conotations.
Legislation on trademark registration in Spain
The foreign investors will have to decide if they choose to register their trademarks only in Spain or also in other European countries. The Spanish legislation related to trademark registration is based on Trade Mark Act no. 17/2001 that came into force one year later. The old legislation on trademark registration is also applied for the trademarks that were registered before 2002 until they will be renewed. The Trade Mark Act no. 17/2001 was amended a few times and the changes are to be found in the Law 19/2006, Law 53/2007, Law 2/2011, which can be further detailed by our team of Spanish lawyers.
A trademark that is registered in Spain is also protected on the territories of the Balearic Islands, the Canary Islands, Ceuta and Melilla in Northern Africa, regions that are operating under the Spanish legislation.
The registration is necessary in order to prevent the usage of a trademark by a person who doesn’t have any legal right to do so.
Before submitting a request for registering a trademark in Spain or in the EU countries, it is necessary to find out if that trademark was already been registered, so a prior verification is compulsory. In the situation in which the trademark has not been registered with the Spanish authorities, the respective sign has to be included in one of the 45 existing classes, which comprise various economic activities that can be performed here.
It is important to know that a trademark in Spain can be registered with multiple classes.
Registration requirements in Spain
As mentioned above, the trademark should be included in one of the available classes and, in this sense, it is necessary to file for an application that must contain the following minimum documents:
• a request to receive a trademark certificate, in which the investors will provide information on the applicant;
• a representation of the trademark;
• the list of goods/services which will represent the respective trademark;
• a proof on the the payment of the application fee.
The procedure can also be completed by our lawyers, but only in the situation in which the investors will grant the power of attorney. The document can be submitted with the registration application.
What is considered intellectual property?
Products, work or processes can be protected as intellectual property by Spanish businesses that wish to differentiate their products from others on the market. By protecting their logos or distinctive marks, companies gain a competitive advantage not only on the Spanish market but also in the rest of the EU.
The types of work or products that qualify for intellectual property are:
– copyrighted creative work: literary or artistic works, music, software, databases, architectural designs, multimedia and others;
– industrial property: inventions, trademarks, industrial designs and new varieties of plants;
– commercial strategies: confidentiality agreements, trade secrets.
Depending on your type of business and the field in which you activate you may need to file for one or more property rights for your creations.
Our lawyers in Spain can help you make the right copyright or patent application.
How is intellectual property protected in Spain?
The Patent and Trademark Office in Spain (OEPM) receives all applications for the protection of intellectual property. Applicants must pay a registration fee and also pay a fee for the renewal of their protection. Those who make applications for protection at an EU level must present additional translations in Spanish for the required documents.
Intellectual property is protected both at a country level and at an EU level. Multinational companies or those that have branches in Spain and in other countries in the European Union should consider making an EU registration according to the EU laws. Otherwise, the property rights might be protected differently according to each country where the company engages in business transactions. The World Intellectual Property Organisation and the European Patent Office are two regulatory agencies you can address for this matter.
Types of intellectual property in Spain
Spain is a member state of the European Union (EU). As such, the national legislation applicable in the field of intellectual property is harmonized with the legal system available in the EU.
According to the local legislation, there are three main categories of intellectual property in Spain:
• industrial property, which can refer to inventions, patents, trademarks or industrial designs;
• artistic work, which can refer to various artistic creations, such as book, plays, music, television broadcasting and others;
• commercial strategies – they can refer to confidentiality agreements or know-how.
The author of intellectual property in Spain
According to the Spanish legislation, the author is the creator of a literary, artistic or scientific work. It is important to know that the author of a creation which can be protected by the intellectual property rights can’t transfer the ownership rights through sales or donations.
In the situation of creations which have an author who signed under a pseudonym, the legal provisions state that the author will be the natural person who provided the respective creation, but his or her identity will not be made public; our team of Spanish lawyers can offer more details in this matter.
Patrimonial rights in Spain
Those who are interested to protect their creations should know that they have full ownership on the ways in which the respective work will be used. An important aspect is that the creator of a work has full rights on the creation throughout his or her entire life, but also a period of 70 years after the person has passed away.
Receive a patent in Spain
The legislation applicable to patents in Spain states that the owner of the patent has exclusive rights over his or her invention for a period of 20 years. After the grant to the exclusive right is terminated, the respective invention will become an asset of the public domain. It is important to know that after the period of 20 year has passed, the invention can be used by other persons or legal entities without the approval of the inventor.
The legislation states that such inventions can be used for commercial purposes as well, after the expiration date of the patent.
Patentable inventions in Spain have to respect several requirements that will attest their validity:
• industrial application.
It is important to know that Spain is a contracting state of the Patent Cooperation Treaty, an agreement which aims to reduce the costs referring to patents for those who want to protect their inventions at an international level.
Intellectual property disputes, resolved in Spanish courts
One of the most common ways in which the intellectual property (IP) disputes can be resolved is by addressing the case to the Spanish courts. It is important to know that the local authorities created in 2005 new courts to handle, amongst many other issues, intellectual property conflicts, which can be addressed to specialised commercial courts.
Such cases are addressed according to the jurisdiction in which the dispute appeared, but in the situation in which in that particular jurisdiction there is no Commercial Court, the case will be handled by the Court of First Instance.
However, it is important to know that, if the litigious case is addressed to the Commercial Court, the average length of the trial can last approximately 12 months for the first instance and up to 18 months for the appeal. In this situation, more and more natural persons or legal entities are trying to resolve these issues through alternative dispute resolution; our team of Spanish attorneys can provide assistance for the resolution of an IP dispute.
Types of intellectual property disputes in Spain
There is a wide area of IP disputes which can arise in this field, but as a general rule, IP cases usually refer to:
• trademark rights;
• patent rights;
• industrial design;
Investors are invited to contact our law firm in Spain for more details on the trademark classification.