Industrial property is set to be one of the most important assets to a company. It is therefore vital before entering into a new market, to ensure its proper protection. In Spain, with rare exceptions, the principal registry governs these types of assets, which has come to mean that there is no right to an invention or distinct insignia if it has not been previously registered. In our country, unlike for example the United States, a system of first-to-file is in effect: priority rights are given to the first who files with the registry, ie, use does not give, except in the situations of well-known brands, the right to bring action against third parties.
The registration system, as referred to above, is governed by the principle of territoriality, which provides that protection is achieved only in countries where the patent or trademark has been registered. Elsewhere, in principle, these patents could be used freely by others. The registration of the trademark or patent in the country of origin, however, does not automatically grant protection in other countries, and it is therefore necessary to register your industrial property to ensure their protection.
It is worth noting that industrial property rights are proprietary in nature and therefore, it may be treated as a commodity, where it may be subject to acts of assignment or encumbrance, or can be transferable by any legally permitted means. One of the most commonly used contracts for this commodity is a license which authorizes a third party to be able to use these rights granted to them by registry in exchange for a fee.
Spain has ratified the most important international agreements in this area, which, except in rare cases, enable people without Spanish citizenship to obtain due protection of their rights, in addition to enabling Spanish nationals to receive protection in most of the other countries.
Spain’s membership in the European Union has also forced the Spanish legislature to follow the guidelines set out by EU directives on industrial property and require that our laws align themselves with the rest of Europe.
Trademarks
Trademarks are distinctive signs whose primary function is to distinguish and identify products or services released by an entrepreneur into a market from products and services offered by its competitors. It also plays an important role in advertising and the creation of a reputation. Distinctive signs, especially trademarks, are an effective and necessary tool for corporate policy and for consumer protection.
When launching a product or service with an identifiable brand in a Spanish market, one needs to check that:
1. The brand is free for use.
2. The brand is free to be registered.
3. The brand has no negative connotations, ie. it is commercially appropriate.
Before marketing, it should be verified that there is no identical or similar trademark previously registered so as to distinguish identical or similar products from ours, which could prevent us from using the sign in that region.
Once it has been determined that no prior rights of third parties are being violated, it should be considered the different ways in which to register the brand in order to secure exclusive rights and the power to prevent other companies from using the trademark. To register, it must also be verified that the trademark is not generic, deceptive, too detailed, or contrary to public order.
Since April 1996, the procedures by which a registration can be filed efficiently in Spain are as follows:
1.- National System: The registration can be granted by the Spanish Patent and Trademark Office (SPTO). These trademarks may consist of a large number of signs capable of being represented graphically, among which include: words, first and last names, signatures, numerals and their combinations, slogans, drawings, signs, sounds, colors, and three-dimensional shapes, including packaging and wrappers. Based on the aforementioned types, the SPTO may not automatically reject brands that engage in the above prohibitions, but they have created a computer search at your request for information about holders of earlier identical or similar signs that might have an interest in opposing certain designs.
The registration of a trademark is granted for a term of 10 years, renewable indefinitely for periods of identical duration. However, registration may be forfeited if the trademark is not renewed, if it is not the subject of actual use for an uninterrupted period of five years, or the mark becomes too generic or misleading to distinguish these goods or services from others. .
A new feature was the creation of “electronic office” for the Spanish Patent and Trademark Office by order of the Ministry of Industry on 9 March, 2010. The SPTO is well-integrated into the inter-ministerial initiative to move the public to the digital age in order to facilitate and streamline administrative procedures relating to industrial property rights.
2.- International System: Madrid Agreement/Madrid Protocol: The so-called “international system” consists of the Madrid Agreement of 1891 and Madrid Protocol of 1989 (also relating to the Madrid Agreement), and are both administrated by the World Intellectual Property Organization (WIPO), which is based in Geneva.
It should be noted that although known as the “international system”, strictly speaking, it is simply a system in which administrative procedures have been unified and by which, ultimately, consists of multiple national registers.
The applicant must designate all the countries where he would want brand protection and, as such, these countries should have ratified either the Agreement and/or the Protocol, depending on the agreement on which the application being process is based. Subsequently, WIPO will notify the national Offices of these designated countries and, within one year (in the case of the Agreement) or 18 months (in case of the Protocol) and if the registration is not in conflict with the national law where these offices are based, the trademark is registered. This is not an open system, however,, since they only entitle certain individuals or legal entities which have an association (because of their nationality, domicile, or real or effective establishment) with a country that is party to one or both of the treaties mentioned, and may, on the basis of a registration or application with the trademark Office of the State, obtain an international registration effective in all or some of the countries who are members of the Madrid Union.
What constituted the most recent advancement was the incorporation of the Spanish language into the processing of trademark applications in the System of International Registration as of 1 April 2004. The assimilation of Spanish into English and into French (until now, the only procedural languages recognized) has helped, without a doubt, develop the exchange of trade relations from the perspective of the internationalization of Spanish companies abroad by attracting international business to Spanish markets.
This initiative will also facilitate compliance with the system of international registration of trademarks in Latin American countries by enabling businesses to file and process international trademark applications in their own language, thereby reducing costs and enhancing the simplicity of processing.
3.- Community Trademark: The main characteristics of the community trademark is its unitary character. The process only requires one process and only one registration, which provides the owner registered protection through the European Union, covering 27 States.
The community trademark, by means of a single registry, covers a market of 500 million consumers.
It’s important to mention that the community trademark does not replace the trademark rights of Member States.
The national and international systems and the community trademarks can coexist and in some cases, complement each other.
The community trademark system allows, through a single application and single process, the business to obtain a single registration granting direct protection in all member countries of the European Union. Therefore, the entrepreneur who wants to market their products or provide services throughout Europe, instead of submitting an application in each country where he intends to market his products, may get an EU registration, allowing exclusive rights of the trademark in all States of the EU. It is noteworthy to add that the community trademark is a system open to virtually all companies in the world, and entitles any and all companies to apply if domiciled or established in the European Union, or in a country who is a signatory to the Paris Convention or domiciled in a country who is a member of the World Trade Organization.
The community trademark is administered by the Office for Harmonization in the Internal Market (OHIM), which is based in the city of Alicante (Spain). Trademark applications may be submitted in any of the official languages of the European Union, although the applicant must designate a second language among the five offices of the OHIM (German, English, Spanish, Italian, and French) in case there are opposition, revocation or invalidity action proceedings which may need to be in this second language.
Another great advantage of the community trademark is there is no use requirement for the obtaining of the registration, because the use of the trademark in a single country of the European Union is usually sufficient to maintain its validity. Additionally, the drastic reduction of the fees for registration of community trademarks, as of May 2009, is an undeniable incentive to opt for this registration system.
Registration is granted for 10 years and is renewable, subject to a fee, for identical periods of time. The community trademark gives its owner in the entire territory of the European Union the right to exclude others from using it without his consent, as well as, protects against the use of identical or similar brands that could create a risk of confusion among consumers. It is very important to mention that if there is a violation, it is possible to sanction the violator in any State of the European Union. Matters concerning violation of the community trademark can be heard by the national Community Trademarks Court, as designated by each State.
With regards to community trademarks, we refer to the Organic Law 8/2003 of 9 July for Bankruptcy Reform, which amended the Organic Law of 6/1985 of 1 July by the Judiciary, which designates that the commercial courts and the relevant section of the Provincial Court of Alicante as Spain’s community trademark courts, in first and second instances, respectively, extend its jurisdiction, to this end, to the whole country.
Protection of Inventions in Spain
Inventions can be protected by the Spanish legal system through the following legal instruments that grant holders exclusive rights to patents, utility models, and industrial designs.
The patents seek to encourage investment in R+D and technological progress in a country. The State grants exclusive rights to an invention for a specified period, generally 20 years, in exchanged for a promise that the invention, after this period, will be admitted into the public domain and thus can benefit society as whole by virtue of the technical advantage provided by the invention.
The patent owner may exploit the invention and prevent third parties from exploiting, marketing or introducing the invention into the market without the owner’s consent. During this term, the third party may exploit the invention prior to the owner’s obtaining a license.
New inventions are patentable if they involve an inventive operation and are capable of industrial application.
Patents are granted for a period of 20 years from the date of application. However, to maintain the patent, it is necessary to pay an annual fee which is increased every year. After this period, the subject of the patent enters the public domain and may be used by any party. The Supplementary Protection Certification for plant protection products and pharmaceutical patents, in force since 1998, extends the patent term by up to a maximum of five years for the time it took to obtain the relevant administrative authorization required to market these products.
Finally, the reform of the Patent Act operated by Law 17/2009 of November 23, abolished the requirement for patent licenses and transfers to become public record, referring to the implementation of the regulation of Patent Law which further defined these formal requirements. This Regulation has been recently modified to harmonize the documentary requirements for the registration of transfers, licenses, property, name changes, and other modifications of rights for all types of industrial property thereby significantly reducing red tape.
Intellectual Property
In Spain, intellectual property is governed by Royal Decree 1/1996 of 12 April, approving the Consolidated Copyright Act. In addition, for intellectual property issues, it should be noted that Spain is a part of the Berne Convention for the Protection of Literary and Artistic Works.
Members are subject to copyright of all original literary, artistic, or scientific works such as books, musical compositions, audiovisual works, blueprints, drawings, graphs, computer programs and databases.
In Spain, intellectual property arises from the moment of creation, without requiring any registration, which means automatic protection. However, it is always possible to file the work in the Intellectual Property Registry in order to obtain stronger evidence in claims against third parties.
Protection for copyrights lasts for 70 years from the death of the author if he was a natural person. In cases where legal persons are recognizes as the authors, the protection period lasts for 70 years from the 1st of January of the year following the lawful registration of the work or from its creation, if it has not been reported or filed.
Intellectual Property generates various types of rights, some economic, and other “moral”. The latter are indispensable and inalienable, and allow the author, among other things, to determine whether to disclose or register his work, so as to demand recognition of his authorship. On the contrary, rights that are economic or of exploitation can be traded or transferred, so that they may be used by third parties.
In Spain, the ownership of rights corresponds always to the creator of the work, unless the work was created in the course of an occupation, where it would be treated as a collective work and/or transferred to third parties.
In addition, computer programs are protected by copyright along with documentary information that accompanies them, and are treated, except in rare exceptions, as literary works.
The aforementioned Copyright Act in addition to regulating copyright, also recognizes the so-called neighboring rights for performers, phonogram producers, producers of audiovisual recordings, and broadcasting organizations.
Actions against Violations of Intellectual Property Rights
The owner of intellectual or industrial property rights may bring actions both through civil or penal means, against those infringing upon his rights in Spain.
The procedure for the filing actions in the Civil Courts is governed by the Code of Civil Procedure, which provides the trademark holder a legal remedy through ordinary proceedings to enforce his rights against third parties.
The holder whose rights have been violated may request:
• The cessation of the acts that violate the law.
• Compensation for damages.
• The seizure of the objects produced or imported.
• The attribution of ownership of the objects or means seized. The adoption of measures necessary to prevent further attacks that violate the law.
• The publication of the conviction.
The right holder may also request interim measures aimed at ensuring the effectiveness of these legal actions.
Industrial property rights are protected equally by criminal law. In addition to activities relating to marketing, use, manufacture, and imitation of inventions and distinctive signs without permission from the owner, amendments of the Penal Code, put into effect on 1 October 2004, introduced, as an offense, forgery of plant variety and parallel importations. For such offenses, the criminal code, following the amendment, provided for sentences of imprisonment from six months up to two years and fines for periods of twelve to twenty-four months.
It is also worth noting that the causes for which determine whether a crime is extremely serious have been expanded to encompass many possible offenses for which the Criminal Code provides for increased penalties consisting of imprisonment (one to four years), fines (twelve to twenty-fourth months), and disqualification of the exercise of the profession relating to the offense (for a period of two to five years).
Mariscal Abogados
Legal services on IT Law in Spain (+info)