Spain: Intellectual Property

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This country-specific Q&A provides an overview to intellectual property law in Spain.

It will cover intellectual property rights, licensing, enforcement, establishing infringement or liability, and challenges to intellectual property.

This Q&A is part of the global guide to Intellectual Property. For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/index.php/practice-areas/intellectual-property/

  1. What different types of intellectual property rights exist in this jurisdiction to protect?

    PATENTS:
    Patent registration before the Spanish Patent and Trade Mark Office (SPTO) provides patentee protection to an invention for 20 years, should this invention is novel and meets the inventive step and industrial application. For a patent to be granted, the SPTO undertakes an examination on the merits of the invention.

    Under Spanish law, the following categories are expressly excluded from patentability:

    • Discoveries, scientific theories and mathematical methods.
    • Literary or artistic works, any aesthetic creation as well as scientific works.
    • Schemes, rules and methods for performing mental acts, playing games, or doing business and computer programs.
    • Presentations of information.
    • Methods for treatment of the human or animal body by surgery or therapy.
    • Diagnostic methods practiced on the human or animal body.
    • Animal breeds and vegetal varieties and essentially biological procedures for their obtaining.Human body (including gens and NDA without biological function).

    Provisional protection provides rights against any third party from the date of publication of the application to the publication of the grant. Protection is provided before the publication of the application against any person notified of the filing and contents of the patent application.

    UTILITY MODELS:
    Utility model protection is available for any inventions "capable of industrial application" that consist of providing an object or product of a configuration, structure of composition which results in a "noticeable advantage" in its use or manufacturing process. In order to register a Utility Model, the Statute requires that such invention does not derive from the relevant state of the art "in a very evident manner" for the person skilled in the art. This lowered level of inventive step justifies a lesser duration (10 years).

    While utility models are typically available for protecting objects (instruments, tools, apparatus, devices), only inventions referring to procedures and those that relate to biological material and pharmaceutical substances and compositions are excluded from utility model protection.

    SUPPLEMENTARY PROTECTION CERTIFICATES
    Supplementary protection certificates for medicines and phytosanitary products are included in the list of legal titles granted by the SPTO for the protection of industrial inventions.

    TRADEMARKS:
    Spanish Trademark law, defines a trademark as any sign that is capable both of being represented graphically and of distinguishing in the market the goods or services of one undertaking from those of others. It also provides an inclusive list of signs that may constitute trademarks:

    • words or combinations of words, including those capable of identifying persons;
    • figures, symbols and drawings;
    • letters, numerals and combinations thereof;
    • three-dimensional shapes, including wrappers, containers and the shape of goods or their packaging;
    • sounds; and
    • any combination of the above, without limitation.

    Association Marks:
    Spanish Trademark law, defines an association mark as any sign capable of being represented graphically, which serves to distinguish on the market the goods or services of the members of an association of the goods or services of other companies.

    Only associations of producers, manufacturers, traders or service providers with legal capacity, as well as legal persons governed by public law, may apply for collective marks.

    Signs or indications which may be used in trade to indicate the geographical origin of the goods or services may be registered as collective marks. The right conferred by the collective mark shall not permit the proprietor to prohibit a third party from using such signs or indications in trade, provided that such use is carried out in accordance with fair practices in industrial or commercial matters; In particular, that mark may not be opposed by a third party authorized to use a geographical name.

    The association mark cannot be assigned to third persons nor authorized its use to those that are not officially recognized by the association.

    Certification Marks:
    Spanish Trademark law, defines a certification mark as any sign capable of being represented graphically, used by a plurality of companies under the control and authorization of its owner, certifying that the products or services to which it applies comply with common requirements, in particular as regards their quality, components, geographical origin, technical conditions or method of production of the product or the provision of the service.

    Tradenames:
    Spanish Trademark law, defines a tradename as any sign capable of being represented graphically, which identifies a company in the course of trade and distinguishes it from other companies carrying out identical or similar activities.

    DESIGNS:
    Spanish Design law defines a design as the appearance of all or part of a product which derives from the characteristics of, in particular, the lines, contours, colors, shape, texture or materials of the product itself or its ornamentation. To be protected, the design must have novelty and individual character.

    COPYRIGHT:
    Copyright protection arises automatically from the mere fact of the creation of the work.
    To obtain copyright protection, a work must be original and be expressed in some specific form (therefore an idea is not, by itself, protected). The Spanish Copyright Act recognizes specific related copyrights to performers, phonogram producers, producers of audiovisual recordings, broadcasting organizations, ordinary photographs, specific editorial productions and the creators of databases (sui generis rights).

  2. What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?

    Right

    Duration

    Patents

    20 years from the date the application was filed, provided renewal fees are paid.

    Utility Model

    10 years from the date the application was filed, provided renewal fees are paid.

    Trade mark

    Registered trade mark

    Indefinite, provided it is renewed every ten years.

    Design

    Registered Design

    25 years, provided it is renewed every five years.

    Copyright

    Life of the author plus 70 years. Related rights have specific duration

  3. Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?

    PATENTS (AND UTILITY MODELS):
    The right to an invention belongs to the inventor, o his/her successor in title.

    If the invention is conceived by an employee in the course of the labour relation (during the term of his/her contract, work or service with a company and when the invention is the result of research that is explicitly or implicitly the object of the contract), the employer retains title over the invention. An employee employed as an inventor has no right to additional remuneration for his/her achievement, except where his/her personal contribution to the invention and its importance to the company obviously goes beyond the explicit or implicit terms of his contract or work.

    There is a rebuttable presumption in favor of the employer to claim inventions applied for registration by the employee within a year following expiry of the employment or service relationship.

    TRADEMARKS:
    The first owner of a registered trademark is the named applicant.

    Spanish Trademark law does not provide who owns a trademark. However, the employer can claim ownership of a trademark registered by an employee or a commissioner in breach of contract before civil courts.

    DESIGNS:
    The right to register a design belongs to the author or his successor in title.

    However, when the design has been developed by an employee in the execution of his duties or following the instructions of the employer or under a service relationship, the right to register the design shall correspond to the employer or the contractual party that commissioned the realization of the design, unless otherwise specified in the contract.

    COPYRIGHTS:
    The right over a copyright belongs to the authors of the copyrightable work.

    The assignment to the employer of the exploitation rights in a work created through a work relationship is governed by the terms agreed in the contract. In the absence of an agreement, it is presumed that the exploitation rights have been granted exclusively and with the scope necessary for the exercise of the employer’s regular activity at the time of delivery of the work made through the work relationship.

  4. Which of the intellectual property rights described in questions 1-3 are registered?

    Patents & Utility Models

    Trademarks

    Designs

    Copyrights: A work protected by copyright can be registered before the Copyright Registry, although the registration is optional and just grants a presumption of the existence of the rights in a given date and the registered holder's ownership.

  5. Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?

    PATENTS & UTILITY MODELS:
    Applicants:
    All natural and legal persons can apply for a patent or for a Utility Model (also public administrations).

    Procedure for registration
    In order to have a patent granted in Spain, there are three different options:

    • Via national application. (application is drawn according to the Spanish Patent Act).
    • Via European application (through the European Patent Convention, being Spain a party to the Treaty since 1986.
    • Via PCT application (being Spain a party to the Treaty since 1989).

    For the purpose of obtaining a filing date, a patent application should contain a request to grant a patent (including data of the applicant, description, claims, abstract of the invention and drawings) and the confirmation of the official fee payment.

    Further to the filing of the application, the SPTO undertakes out a formal ex officio examination. A Report on the State of the Art is prepared and published, and the applicant can modify the terms of the application. The SPTO will examine the patent application on the merits (utility models are not examined on the merits).

    The granting of the application opens a six-month period for third parties´ possible oppositions.

    TRADEMARKS:
    Applicants:

    • Spanish natural or legal persons.
    • natural or legal persons who are habitually resident or have an effective and serious industrial or commercial establishment in Spain or who enjoy the benefits of the Paris Convention for the Protection of Industrial Property of March 20, 1883 (in accordance with the provisions of the Act in force in Spain).
    • natural or legal persons of countries members of The World Trade Organization.
    • foreign natural or legal persons of other countries, provided that the legislation of their home state recognized the right of Spanish natural or legal persons to register trademarks in such country (mutual recognition principle).

    Procedure for registration:
    Further to the filing of the application the Spanish Patents and Trademark Office (SPTO) carries out a formal ex officio examination.

    In the case that, the trademark application complies with the corresponding necessary formalities the application is published.

    The publication of the application opens a period of two months for third parties´ possible oppositions followed by a substantive examination by the Spanish Trademark office.

    For the case that there have been third parties oppositions or that the SPTO considers that the trademark application may incur in any prohibition, the trademark application is suspended and the applicant is given one month to plead, after which the SPTO issues the corresponding decision on the application.

    The interested parties may submit to arbitration the disputed issues arising during the procedure for the registration of a mark.

    The arbitration may only deal with the relative grounds for refusal. In no case may questions be submitted to arbitration regarding the occurrence or not of formal defects or absolute grounds for refusal.

    DESIGNS:
    Applicants:

    • Spanish natural or legal persons.
    • Natural or legal persons who are habitually resident or have an effective and serious industrial or commercial establishment in Spain or who enjoy the benefits of the Paris Convention for the protection of Industrial Property of March 20, 1883, (in accordance with the provisions of the Act in force in Spain).
    • Nationals of the Member States of the Organization World Trade Organization.
    • Foreign natural or legal persons of other countries, provided that in the State of which they are nationals, Spanish natural or legal persons are allowed to register their designs in such country (mutual recognition principle).

    Procedure for registration:
    Once the application for design registration has been received, the SPTO will examine ex officio whether the object of the application constitutes a design in a legal sense and if it is not contrary to public order or morality.

    The SPTO shall also examine ex officio whether the application presents a defect not received in previous procedures which makes it impossible to publish the design, classify the products to which it is to be applied or, where appropriate, revise the classification made by the applicant and verify whether the products applied for in multiple applications are integrated in the same class of the International Classification.

    If the SPTO´s ex officio examination reveals that the application is subject to any of the grounds for refusal, the registration procedure will be suspended and will be communicated to the interested party so that within a period of one month present its allegations, eliminate the element causing the repair or request the change of modality.

    Once the period to reply to the suspension of the registration procedure finished (irrespectively of whether the applicant has answered, or not), the SPTO shall decide on the application:

    • granting the design registration in whole or in part;
    • refusing the design registration; or
    • having all or part of the application as withdrawn.

    The resolution of concession, total or partial, will be registered in the Designs Registry and published.

    The deadline for the presentation of objections will be two months, counted from the date on which the publication of the registered design takes place.

    At the end of the deadline for submitting objections, the opposition writs and evidence submitted shall be transferred to the registered design owner who will then have two months to submit claims and, where appropriate, to modify the design.

    Once the reply to the oppositions has been received, or after the deadline for doing so, the SPTO shall issue a reasoned decision, estimating, in whole or in part, or rejecting the oppositions filed.

    The Designs Registry shall record the filing of the oppositions and the identity of the opponents, as well as their estimation or rejection.

    The interested parties may submit to arbitration the disputed issues arising during the opposition proceedings.

    The arbitration may only refer to the following reasons for opposition:

    • That the registered design is incompatible with a design protected in Spain by virtue of a request or registration with a prior date of presentation or priority, but which has only been made accessible to the public after the date of presentation or priority of the later design.
    • That the registered design incorporates a trademark or other distinctive sign previously protected in Spain whose owner is entitled, by virtue of such protection, to prohibit the use of the sign in the registered design.
    • That the registered design implies an unauthorized use of a work protected in Spain by copyright.

    COPYRIGHTS
    To register a work, the author needs to submit a completed application form and to pay an official fee, that generates a public record kept by the Copyright Office (“Registro de la Propiedad Intelectual”). The Registry assigns a filing date, and does not examine the artistic merit (originality) of the deposited work, nor authorship.

  6. How long does the registration procedure usually take?

    PATENTS:
    In standard conditions, from 18 to 24 months. Utility models normally take 8 to 10 months.

    TRADEMARKS:
    Twelve months if the application is not suspended and has no opposition.

    Twenty months if the application is suspended or has oppositions.

    DESIGNS:
    Three days if the application is not suspended.

    Five months if the application is suspended.

    COPYRIGHTS:
    From two to four months.

  7. Do third parties have the right to take part in or comment on the registration process?

    PATENTS & UTILITY MODELS:
    There is a post-grant opposition system in place. Third interested parties will have a six-month period to oppose the patent its registration. Third-party observations regarding the patentability of the invention might be filed during the granting process (after the application is published).

    TRADEMARKS:
    Any person who considers himself harmed may object to the trademark registration by filing an opposition before the SPTO.

    Public Authorities and consumer protection associations can file written observations on possible absolute grounds for refusal; however, such public bodies and associations shall not acquire the status of parties to proceedings.

    DESIGNS:
    Once the designs has been registered, any person may oppose the grant of registration of a design, claiming that the registered design fails to meet any of the protection requirements established in the Spanish Design law.

    It may also be claimed as a ground for opposition by those who are the legitimate owners of the earlier signs or rights:

    A) That the owner of the design registration is not entitled to obtain it according to a final judicial decision.

    B) That the registered design is incompatible with a design protected in Spain by virtue of a request or registration with a prior date of presentation or priority, but which has only been made accessible to the public after the date of presentation or priority of the later design.

    C) That the registered design incorporates a trademark or other distinctive sign previously protected in Spain whose owner is entitled, by virtue of such protection, to prohibit the use of the sign in the registered design.

    D) That the registered design implies an unauthorized use of a work protected in Spain by copyright.

    E) That the registered design implies an improper use of any of the elements listed in Article 6 ter of the Paris Convention or of distinctive emblems and emblems other than those referred to in Article 6 ter which are of public interest such as the emblem, flag and other emblems of Spain, its autonomous communities, Its municipalities, provinces or other local entities, unless it has the proper authorization.

    COPYRIGHTS:
    Third parties do not have the right to intervene in the registration process.

  8. What (if any) steps can the applicant take if registration is refused?

    PATENTS & UTILITY MODELS:
    Should the SPTO refuses the patent, its applicant can file an administrative appeal (recurso de alzada) before the SPTO within a month’s term. Against such decision, the aggrieved party can take still file a jurisdiction appeal before the (non-IP specialised) Tribunal Superior de Justicia (contentious-administrative courts).

    TRADEMARKS:
    In the case that the trademark application is refused, the applicant can contest the SPTO´s decision through an administrative appeal procedure within one month of its publication.

    Further, any unsuccessful party in the administrative appeal process may lodge an appeal before the contentious-administrative courts within two months of publication of the SPTO´s administrative appeal decision.

    DESIGNS:
    When the registered design is cancelled, the design owner can contest the cancellation before the SPTO through an administrative appeal procedure within one month of the publication of the cancellation.

    The decision of the SPTO´s could be subject to a further appeal before the contentious-administrative courts within two months of publication of the SPTO´s administrative appeal decision.

    COPYRIGHTS:
    Should the Copyright Registry refuse to grant copyright protection, the aggrieved party can appeal the Registry’s decision before the Civil courts.

  9. What are the current application and renewal fees for each of these intellectual property rights?

    Applications and renewal fees may vary from year to year, therefore it would be advisable to looked them up at the SPTO´s website.

    PATENTS & UTILITY MODELS:
    http://www.oepm.es/export/sites/oepm/comun/documentos_relacionados/Tasas/Tasas_PatentesNac_ModelosUtilidad_2017.pdf

    TRADEMARKS: http://www.oepm.es/export/sites/oepm/comun/documentos_relacionados/Tasas/Tasas_SignosDistintivos_2017.pdf

    DESIGNS:
    http://www.oepm.es/export/sites/oepm/comun/documentos_relacionados/Tasas/Ley_24_2015_Tasas_Disenos_2017.pdf

    COPYRIGHTS:
    http://www.mecd.gob.es/cultura-mecd/areas-cultura/propiedadintelectual/registro-de-la-propiedad-intelectual/solicitudes-de-inscripcion/tasas.html

  10. What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?

    PATENTS & UTILITY MODELS:
    The annuities should be paid within three months after the due date. There are two further grace periods of three months during which annuities may be paid with a surcharge of 25% and 50% correspondingly.

    TRADEMARKS:
    The renewal application shall be filed and the renewal fees shall be paid in the six months preceding the expiry of the registration.

    The renewal application and the payment of the renewal fees may still be validly made within six months of the expiration of the registration, with the obligation to satisfy, simultaneously, a surcharge of 25 percent of the quota if the payment takes place during the first three months, And 50 percent if carried out within the next three months.

    Failure to pay the renewal fees will imply the expiration of the trademark and the registration will be canceled.

    DESIGNS:
    The renewal application shall be submitted and the renewal fees shall be paid within six months prior to the end of the relevant period of validity.

    Failing that, it may still be validly made within a period of six months from the end of it, with the obligation to pay, simultaneously, a surcharge of 25 percent of the fee if the payment takes place during the first three months, and 50 percent if carried out within the next three months.

    Failure to pay the renewal fees will imply the cancellation of the design registration.

    COPYRIGHTS:
    Copyrights are not subject to renewal.

  11. What are the requirements to assign ownership of each of the intellectual property rights described in questions 1-3?

    PATENTS & UTILITY MODELS:
    The assignment of patent rights must be made in writing when performed inter vivos.

    TRADEMARKS:
    There are no particular requirements to assign the ownership of a registered trademark.

    DESIGNS:
    To be valid, the assignment of design rights must be made in writing when performed inter vivos.

    COPYRIGHTS:
    The exploitation (economic) rights over copyright are transferrable. It is compulsory that the assignment is made in writing, explicitly establishing the rights that are being transferred as well as the time and the territorial scope of the transfer.

    For the assignment to be exclusive, exclusivity needs to be expressly stated in the agreement. Exclusive assignments impede assignor to use the assigned work and allows assignee to grant non-exclusive licenses to third parties (unless otherwise agreed). Exclusive assignee needs the assignor consent to assign such right.

    If the time or the territorial scope are not specified in the contract, the transfer will be for five years and in the territory of the country where the contract is signed.

    The transfer regarding rights on future works would be invalid. Moral rights are not assignable.

  12. Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?

    PATENTS & UTILITY MODELS:
    There is no requirement to register the assignment of the ownership of a patent. However, to be effective against third parties in good faith, patent assignments must be recorded before the SPTO. Non-recorded licenses are not opposable to third parties in good faith.

    TRADEMARKS:
    There is no requirement to register the assignment of the ownership of a registered trademark.

    However, the assignment of the ownership of a registered trademark may be opposed to third parties in good faith only once the assignment is registered at the SPTO.

    There is no requirement to register the assignment of the ownership of a registered design.

    The assignment may be only opposed to third parties in good faith once registered in the Design Registry.

    COPYRIGHTS:
    No specific consequence from a validity perspective.

  13. What are the requirements to licence a third party to use each of the intellectual property rights described in questions 1-3?

    PATENTS & UTILITY MODELS:
    Patents can be licensed for all or part of the Spanish territory, in its entirety or in one of the faculties that make up the exclusive right, for all or part of its possible applications. Licenses may be exclusive or non-exclusive.

    When performed inter vivos the license agreement must be written in order to be valid.
    Unless otherwise agreed, the license is not exclusive and the grantor may grant other licenses and exploit the design itself.

    The exclusive license prevents the granting of other licenses and the grantor of the license can only exploit the design if the contract has expressly reserved that right.

    Unless otherwise agreed, the licensee shall be entitled to exploit the patent throughout the duration of the registration, including renewals, throughout Spain and for all applications.

    The holder of a license may not assign it to third parties or grant sub-licenses, unless otherwise agreed.

    Licensor should also license the technical know-how required to exploit the invention.

    Licensor can enforce its exclusive rights against licensees breaching the terms of the license.

    TRADEMARKS:
    Both the application and the registered trademark may be licensed on all or part of the products and services for which it is registered and for all or part of Spanish territory. Licenses may be exclusive or non-exclusive.

    The holder of a license may not assign it to third parties, nor grant sub-licenses, unless otherwise agreed.

    Unless otherwise agreed, the holder of a license shall be entitled to use the mark for the entire duration of the registration, including renewals, throughout the national territory and in respect of all goods or services for which the mark is registered.

    Unless otherwise agreed, that the license is not exclusive and that the licensor may grant other licenses and use the trademark by himself.

    When the license is exclusive, the licensor may only use the trademark if the contract has expressly reserved that right.

    DESIGNS:
    Both the requested design and the registered design may be licensed, for all or part of the Spanish territory, in its entirety or in one of the faculties that make up the exclusive right, for all or part of its possible applications. Licenses may be exclusive or non-exclusive.

    When performed inter vivos the license agreement must be written in order to be valid.

    Unless otherwise agreed, the license is not exclusive and the grantor may grant other licenses and exploit the design itself.

    The exclusive license prevents the granting of other licenses and the grantor of the license can only exploit the design if the contract has expressly reserved that right.

    Unless otherwise agreed, the licensee shall be entitled to exploit the design throughout the duration of the registration, including renewals, throughout Spain and for all applications.

    The holder of a license may not assign it to third parties or grant sub-licenses, unless otherwise agreed.

    COPYRIGHTS:
    Copyrights may be licensed, explicitly establishing the rights that are being licensed. The agreement must be in writing and should specify the duration and the territorial scope of the license. The license can be exclusive as well as non-exclusive.

  14. Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?

    PATENTS & UTILITY MODELS:
    There is no requirement to register the assignment of the ownership of a patent. To be effective against third parties in good faith, patent assignments must be recorded before the SPTO. Non-recorded licenses are not opposable to third parties in good faith.

    TRADEMARKS:
    There is no requirement to register a licence over a registered trademark.

    However, if the licence is not registered at the SPTO it may have no effect against third parties in good faith.

    DESIGNS:
    There is no requirement to register a licence over a registered design.

    A license may only be opposed to third parties in good faith once registered in the Design registry.

    COPYRIGHTS:
    No specific consequence from a validity perspective.

  15. Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?

    PATENTS & UTILITY MODELS:
    Unless otherwise agreed, the exclusive licensee may exercise in his/her own name all the actions against third parties that infringe such IP right.

    In principle, non-exclusive licensees cannot enforce patent rights, but is entitled to request the patentee to bring actions. Absent any response from patentee or denial to bring actions (one month to respond), the non-exclusive licensee is entitled to enforce the patent rights.

    The non-exclusive licensee may require the right holder to commence litigation. Should the patent owner refuse to bring actions (or just ignore such request) within a period of three months, the licensee may initiate it in his/her own behalf. Patent owner must be notified of these circumstance so it can join the action.

    TRADEMARKS.
    Licensees ‘rights in respect of the enforcement of the licensed registered trademark would be defined by the corresponding negotiated licence agreement.

    Unless otherwise agreed, the holder of an exclusive license may exercise in his own name all the actions recognized to the trademark right owner against third parties that infringe the IP right.

    The holder of a non-exclusive license, unless otherwise agreed, would not be entitled to bring infringement actions.

    The licensee, who is not entitled to exercise infringement actions, may require the trademark owner to bring the corresponding legal action. If the trademark owner refuses or fails to exercise the appropriate action within a period of three months, the licensee may initiate it in his own name.

    Prior to the expiration of the three months period, the licensee may request the judge to take urgent precautionary measures when he justifies the need for them to avoid material damage, with the filing of said request.

    The licensee who exercises a judicial action must notify the trademark owner, who may appear and intervene in the proceedings, either as a party or as an intervenor.

    DESIGNS:
    Unless the license agreement provides otherwise, the licensee may only exercise in his own name the actions that are recognized to the design owner against third parties with the express authorization of the said design owner.

    However, the holder of an exclusive license may reliably require the design owner to file the corresponding legal action.

    If the design owner refuses or does not exercise the appropriate action within the period of three months, the exclusive licensee may initiate it in his own name, accompanying the request made. Prior to the expiration of this period, the licensee may request the judge to take urgent precautionary measures when the need for them in order to avoid material damages it is justified with the presentation of said request.

    Both the licensor and the licensee who exercises an action shall notify each other of this circumstance. The design owner may appear and intervene in the procedure initiated by the licensee.

    When the design owner exercises the action, the licensee shall also be entitled to intervene in the proceedings in order to claim the corresponding compensation.

    COPYRIGHTS:
    The exclusive licensee may exercise in his/her own name infringement actions.

  16. Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?

    PATENTS & PATENTS:
    According to the Spanish Criminal code, whoever that wilfully makes, imports, uses, sells or disposes of the patented product or process shall be condemned with prison sentence ranging from two to four years and an economic sanction to be determined based on the nature and circumstances of the infringement.

    While it is customary for the patentee to be the party that initiates criminal proceedings by the filing of a criminal complaint, the Spanish Public Security Forces may also proceed ex officio on the basis of their own investigations.

    TRADEMARKS:
    Criminal proceedings can be commenced against those who intentionally manufacture, import, store or sell counterfeit goods.

    The legal penalties and remedies in criminal proceedings are:

    • Imprisonment of between one and four years for manufacturing, importing, offering, distributing or commercialising wholesale counterfeit goods;
    • Imprisonment of between six months and three years for offering, distributing or commercialising retail sale counterfeit goods;
    • Imprisonment of between six months and two years for street vending and occasional sale of counterfeit goods (if certain conditions are met, the imprisonment can be substituted by the payment of a fine);
    • Payment of damages;
    • Destruction of the infringing goods.

    Only the owners of registered trademarks (national, international or EUTM) can seek protection under criminal law.

    DESIGNS:
    Criminal proceedings can be commenced against those who with industrial or commercial purposes, without the consent of the owner of a design and with knowledge of its registration, manufacture, import, possesses, uses, offers or introduces in commerce objects protected by such design right.

    The legal penalties and remedies in criminal proceedings are:

    • imprisonment from six months to two years.
    • Payment of damages.
    • Destruction of the infringing goods.

    Only the owners of registered designs (national, international or European) can seek protection under criminal law.

    COPYRIGHTS:
    Criminal proceedings can be commenced against those who, with direct or indirect benefit intend, wilfully and without the consent of the holder of the copyrights, reproduces, imitates, distributes broadcasts, transforms or performs, wholly or partially, a literary, artistic or scientific work manufacture, import, possesses, uses, offers or introduces in commerce objects protected by such design right.

    The main legal penalties and remedies in criminal proceedings are:

    • Imprisonment from six months to two years.
    • Payment of damages.
    • Destruction of the infringing goods.
  17. What other enforcement options are available in your jurisdiction for each of the intellectual property rights described in questions 1-3? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.

    Civil court proceedings.
    Conciliation: before commencing legal proceedings relating to inventions made in connection with an employment or service relationship, the dispute may be submitted, if the parties so agree, to an act of conciliation before the SPTO.

    Mediation and Arbitration: those interested, may resort to mediation or submit to arbitration any disputes arising between them as far as the matters are not excluded from the free disposal of the parties. It is needed that both parties expressly agree to enter into mediation/arbitration.

    The final arbitral award needs to be notarized, and shall have effects of res judicata, and the SPTO will proceed to carry out the necessary actions for its execution. The award is self-enforceable vis-à-vis third and can be appealed before the competent Court of Appeals (Audiencia Provincial).

    The mediation agreement signed by the mediator and the parties, once raised to a public deed or approved by the Judge, is constituted as an enforcement order and the SPTO shall be notified to proceed with the execution thereof.

    The SPTO shall be notified of the presentation of an appeal against the arbitration award or the exercise of a nullity action against the agreement in the mediation agreement.

    Since 2017, the SPTO is statutory allowed administer arbitrations.

  18. What is the length and cost of such procedures?

    Civil court proceedings:
    The length of civil court proceedings would depend on the complexity of the case, the defendant’s procedural conduct and the workload of the competent court.

    Nevertheless, in normal circumstances, the time frame for civil actions could be of around one year at first instance and around two years for an appeal judgement.

    If the case is taken before the Supreme Court a decision on the acceptance to procedure of the appeal before the Supreme Court could take from one to two years. For those cases accepted to be heard by the Supreme Court a decision on the merits could take around two or three years.

    Regarding the cost of proceedings, court fees would depend on the number of judicial actions taken and the value of the claim.

    As per the cost of the preparation and follow up of civil court proceedings, again, costs would depend on the complexity of the case and the defendant’s procedural conduct. Lawyers´ and other professionals´ fees may vary significantly from case to case and, therefore, estimates should be given on a case to case basis.

    Arbitration:
    The length of arbitration would depend on the complexity of the case, nevertheless, in normal circumstances, if there is no agreement of the parties to the contrary, the dispute must be decided by an award within six months after the date of submission of the response or expiration of the deadline to answer.

  19. Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.

    Civil court proceedings:
    Competent courts in civil court proceedings:
    The competence to hear civil judicial cases on Patents, Trademarks and Designs corresponds to the Civil courts of Barcelona, Madrid and Valencia.

    However, in those civil judicial proceedings cases in which either a EUTM or a Community design is invoked together with a Spanish trademark and/or Spanish Design the competence to hear the case corresponds to the EUTM Courts located in Alicante.

    Copyright infringement cases are to be brought before the tribunals of the place where the infringement took place, or where there are illicit copies (claimant’s choice).

    How to start civil court proceedings:
    Civil court proceedings should be commenced by the filing a writ of claim describing the facts of the controversy, reasoning the legal grounds supporting the claims and detailing the corresponding petitions.

    If the claimant is interested in requesting interim injunctions measures to ensure the effectiveness of the judgement adopted in the main action, such request, in principle, should be filed together with the writ of claim on the merits.

    Exceptionally, in cases of special urgency or necessity, there is the possibility of filing a request for interim injunction measures prior to the filing of the writ of claim on the merits. However, the measures will be rendered ineffective if the claim on the merits is not filed within the twenty days following the adoption of the interim injunctions measures. If the facts so justifies, interim injunctions might be also filed after the commencement of the main case.

    Basics of the civil procedure:
    Civil court proceedings commence with the filing of the claimant´s writ of claim. If the claim fulfils the necessary formalities, the Court will accept the claim to procedure and a copy of the writ of claim will be served to the defendant to prepare and file its answer to the claim within 20 working days term.

    The defendant when replying to the claim can also file its own counterclaim, copy of which will be then served to the claimant to respond.

    In an unprecedented exemption to the general rule in civil proceedings, the defendant in patent cases ("alleged infringer") will be granted a two-month term to answer the claim /file a counter claim (Section 119). General principle under Spanish law is that defendants in civil litigation have 20 working days to prepare their defence and file all relevant documents to sustain their case.

    It is still to see if such term will be also applicable to other IP (non-patent) cases.

    Once both parties have filed their corresponding initial writs (writ of claim, possible counterclaim and responses) the Court will fix a date for a pre-trial hearing. The time to the pre-trial hearing would vary depending on the complexity of the case and the competent court´s workload. However, in normal circumstances, it would take place in the two or three months following the filing of the parties’ initial writs.

    The aim of the pre-trial hearing is exploring the possibility of reaching an agreement between the parties. While some judges are pro-active in this respect and encourage parties to settle the dispute (even proposing guidelines to do so), the majority of judges leave this to the parties' initiative. If no agreement is possible, assessing the need to conduct a trial hearing and deciding on the evidence to be produced during such trial hearing.

    In the case that, the Court considers that the evidence filed by the parties together with their corresponding writs (writ of claim, possible counterclaim and responses) is enough to decide the case on the merits, there will be no trial hearing. The Court will issue its judgement in the next three to six months after the pre-trial hearing.

    If, however, the Court considers that the evidence filed by the parties together with their corresponding writs (writ of claim, possible counterclaim and responses) is not enough to decide the case on the merits, it will decide on the evidence proposed by the parties at the trial and fix a date for the trial hearing.

    The time to trial may depend, again, on the complexity of the case and the competent court´s workload. Nevertheless, in normal circumstances, the trial hearing would take place six to nine months after the pre-trial hearing.

    Format of the trial in civil court proceedings:
    The trial shall commence practicing the admitted evidence.

    Although it is the parties' duty to impel and foster judicial proceedings (adversarial principle), the Court might take a pro-active approach during the case and can raise questions to counsels, parties, witnesses and experts. Spanish law also provides that the Judge can request the deposition of witnesses or the disclosure of documents on the Judge's own initiative.

    Further, having set out its conclusions on the facts at issue, each party may orally inform the legal arguments on which its claims are based.

    If the Court does not consider itself sufficiently illustrated on the case with the conclusions and reports provided for by the parties, it may request pleading counsels further explanations.

    Usually the trial hearing takes place in one day. However, the Court may decide to conduct the trial hearing in several days depending on the complexity of the matter and the amount of evidence to be produced during the trial hearing.

    In normal circumstances, a decision on first instance would be issued within three to six months following the trial hearing.

    Award and relief in civil court proceedings:
    Among other things, the Patent, Utility Model, Trademark and/or Design holder may seek the following remedies:

    • cessation of the infringing acts;
    • compensation for damages;
    • delivery or destruction of the infringing goods at the infringer’s expense;
    • delivery or destruction of the means principally used to commit the infringement at the infringer’s expense;
    • transfer of ownership of the infringing goods and the means intended to commit the infringement;
    • publication of the judgment at the infringer’s expense, and
    • reimbursable legal costs.

    Possible appeals in civil court proceedings:
    The judgement of first instance can be appealed before the Court of Appeal. The Court of Appeal would be able to review both the assessment of the evidence produced in proceedings on the facts as well as the legal reasoning of the judgement of first instance.

    Solely if certain requirements are met there is the possibility of filing new evidence during the appeal phase and of conducting an appeal hearing.

    Further, the appeal decision can be appealed before the Supreme Court if certain (and very restrict) requirements are met. The Supreme Court would only review the legal reasoning of the appeal judgement (error of law) but would not re-asses the facts of the case.

  20. How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so?

    Any necessary information (fact or technical) should be provided and/or requested to the court by the parties.

    In principle, the means of proof that may be used in trial are: 1. Parties cross-examination; 2. Public documents, 3 Private documents; 4. Expert opinions; 5. Judicial recognition; 6. Witnesses cross-examination.

    Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?
    Under Spanish law, there are no technical judges.

    Where scientific, artistic, technical or practical knowledge is required to assess relevant facts or circumstances in the matter or to obtain certainty about them, the parties may submit the opinion of experts.

    The experts' opinions drawn up by experts appointed by the parties shall be filed, in principle, together with the writ of claim (claimant) or the response to the claim (defendant).

    The parties shall state whether they wish the expert to attend the trial hearing, stating whether the expert should state or explain the opinion issued or respond to questions, objections or proposals for rectification or intervene in any other useful way for the better understanding and assessment of the opinion.

    The claimant or the defendant, may also request in their respective initial briefs that a judicial expert is appointed by the court.

    In such case, the court will proceed to the designation and the cost of the expert opinion shall be at the expense of the party requesting it.

    If both parties request the appointment of an expert by the court and are also in agreement that the opinion is issued by a particular expert, the court will designate such expert.

    The expert appointed by the court shall issue his opinion in writing. This opinion shall be transferred to the parties.

    The parties shall state whether they consider it necessary for the expert to attend the trial hearing in order to provide clarifications or explanations about the opinion.

    In addition, the court may, in any case, decide that it considers necessary the presence of the expert appointed by the court in the trial hearing in order to better understand and value the expert´s opinion.

    What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
    Disclosure:
    Prior to commencing civil court proceedings for the infringement of an IP right, and in preparation of such civil court proceedings, the IP right owner may initiate separate judicial proceedings in order to request:

    • data on the possible offender, the origin and distribution networks of works, goods or services that infringe an IP right.
    • the display of bank, financial, commercial or customs documents produced in a certain time and presumed to be in the power of who would be sued as responsible of the IP infringement.
    • data to identify the ISP on which there are reasonable indications that it is putting at the disposal or disseminating works or services allegedly infringing an IP right, considering the existence of an appreciable level of audience in Spain of said ISP or an appreciable volume of unauthorized protected works and services made available or broadcast.
    • data from an ISP necessary to carry out the identification of a user of its services, on which there are reasonable indications that the user is making available or disseminating directly or indirectly, contents, works or services allegedly infringing with commercial aim.
    • This disclosure might involve the examination of the alleged infringer and of any third party with a knowledge of the case.

    Any of those requests must be accompanied and justified by sufficient evidence of the likelihood of infringement (i.e., samples of the relevant goods).

    The information obtained by means of the procedures referred above shall be used exclusively in the course of the following civil court proceedings for the infringement of the corresponding IP rights of the applicant for the measures, with a prohibition to disclose it or communicate it to third parties.

    Discovery:
    The person entitled to exercise the actions deriving from the IP right may request the judge to order, as a matter of urgency, the practice of measures for the verification of facts that may constitute an infringement of the exclusive IP right.

    Before deciding on the request made, the court may request the reports and order the investigations that he deems appropriate.

    The practice of the requested measures may only be agreed when, given the circumstances of the case, the infringement is presumed but it is not possible to verify without recourse to the requested measures.

    If the court grants the practice of the requested measures, the petitioner would have to pay the amount fixed as bond by the court to respond to any damages that may be caused to the other party.

    If the court does not consider the claim well founded, it will deny it by means of an order that will be appealable in both effects.

    For patent pre-litigation discovery (filed by patentee in order to learn facts or data that are critical to sustain the complaint in a later stage), it is expressly foreseen that investigated party ("future defendant" in the deriving patent litigation) will not be notified of the pendency of such proceedings in order not to frustrate its outcome.

    Anticipation:
    Prior to the commencement of any proceedings, any party intending to initiate proceedings, or any of the parties during the course of the proceedings, may request from the court the advance practice of any act of evidence, when there is a well-founded fear that, because of persons or because of the state of things, the appraisal of such evidence could not be carried out at the procedural moment usually envisaged.

    The documents and other evidence obtained, as well as the materials that can faithfully reflect the evidentiary actions performed and its results, shall be under the custody of the court until the claim is filed.

    The writ of claim should be filed within the two months following the obtaining of the anticipated evidence.

    Assurance:
    In cases of infringement of intellectual property rights, once the applicant has presented the evidence of the infringement reasonably available, measures of assurance may consist, in particular, in the detailed description of the litigious goods, as well as the seizure of the litigious goods, the materials and instruments used in the production or distribution of these goods and any related documents.

    The writ of claim should be filed within twenty days following the measures adopted to assure the evidence.

  21. How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?

    The parties may request as evidence for the trial hearing: the other party cross-examination; expert opinions; judicial recognition; witnesses’ cross-examination.

    Witnesses may be summoned by the judge after being proposed by the parties. The Court may also call witnesses on its own initiative. It is customary to call the inventor especially in patent invalidation proceedings, either as party or as witness. Giving false testimony is a criminal offense under Spanish law, and witnesses and experts are specifically warned before their deposition begins.

    It is for the court to decide the necessity of carrying out the evidence requested by the parties (in addition to the documentary evidence filed in proceedings) on a case to case basis.

  22. What customs procedures are available to stop the import and/or export of infringing goods?

    Regulation (EU) N. 608/2013 concerning customs enforcement of IP rights applies in Spain covering: Trademarks; Designs; Copyright or any related rights; Geographical indications; Patents; Supplementary protection certificates for medical products; Supplementary protection certificates for plant protection products; Plant variety rights; Topography of semiconductor products; Utility models and Tradenames.

    The customs enforcement of IP rights shall not apply, however, to:

    • goods that have been released for free circulation under the end-use regime.
    • goods of a non-commercial nature contained in travelers’ personal luggage.
    • goods that have been manufactured with the consent of the right-holder or to goods manufactured, by a person duly authorized by a right-holder to manufacture a certain quantity of goods, in excess of the quantities agreed between that person and the right-holder.

    The Application for Customs Action (AFA) can either be national (only for Spain, based in national or EU IP rights), or European (for all or some of the EU Members, based in EU IP rights).

    Certain specific information/documentation need to be filed together with the AFA, not only on the IP rights to be invoked but also on products characteristics, prices, distribution channels etc.

    When granting the AFA the competent customs department shall specify the period during which the AFA would be in force (that shall not exceed one year from the day following the date of adoption). The AFA could be extended at the request of the holder.

    Once the AFA is in force Spanish Customs authorities may inform of the detention of any suspicious importation and give the opportunity to inspect the goods retained.

    If it is not possible to secure the destruction of the products detained at Customs level in application of the corresponding customs procedure, court proceedings (either civil or criminal) should be commenced to to determine whether the alleged IP right has been infringed.

    If no court proceedings are commenced in the given term the detained products would be released.

  23. Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.

    There are no non-court enforcement options or dispute resolution mechanisms mandatory in respect of IP right disputes.

  24. What options are available to settle intellectual property disputes in your jurisdiction?

    IP rights disputes may be settled at any time between the parties even if criminal or civil judicial proceedings have been initiated.

    In criminal court proceedings, despite the agreement reached by the parties, proceedings may be continued at the request of the Public Prosecutor.

    In civil court proceedings, the parties are entitled to dispose of the subject of proceedings and may waive, desist, be acquitted, mediate or arbitrate and compromise on what is the object of proceedings, except when prohibited by law or established by limitations of general interest or for the benefit of third parties. Settlement discussions are normally held out of Court, although in certain instances they might take place in presence of the Judge.

    The settlement agreement may be reached at any time of the first instance or of the appeals or enforcement of judgment.

    While negotiating a settlement agreement, the parties may request the suspension of civil proceedings, which shall be agreed by the civil court provided that it does not prejudice the general or third-party interest and that the period of suspension does not exceed sixty days.

    The parties may keep the agreement confidential or request the agreement to be approved by the civil court that is hearing the litigation that is intended to end.

  25. What is required to establish infringement of each of the intellectual property rights described in questions 1-3? What evidence is necessary in this context?

    PATENTS & UTILITY MODELS:
    Under Spanish law, anyone who exploits the patented subject matter without the patentee's consent may be liable for patent infringement.

    Forbidden conducts include a broad array of commercial activities which entail the exploitation of the patented invention, such as manufacturing, offering for sale, putting on the market, using the patented product or importing or possessing the product for one of the above-mentioned purposes, and also making use of a patented process or offering such use, offering for sale, putting on the market, using the product directly obtained by the patented process or importing or possessing the product for any of said purposes.

    Indirect infringement of a patent occurs when a third party, without the consent of the proprietor of the patent, hands over, or offers to hand over, to unauthorized persons the means to an essential part of the invention to be used for putting the invention into effect. The third party must be aware that the means to the invention will be used in this way.

    TRADEMARKS:
    A trade mark infringement occurs when a third party, without the consent of the owner, uses in the course of trade:

    • Any sign that is identical to the trade mark in relation to goods or services that are identical to those for which the trade mark is registered;
    • Any sign that, since it is identical or similar to the trade mark and since the goods or services are identical or similar, creates a risk of confusion among the public (the risk of confusion includes the risk of association between the sign and the trade mark);
    • Any sign that is identical or similar to the trade mark in relation to goods or services that are not similar to those for which the trade mark is registered, when the trade mark is well known or famous in Spain and:
    • when the use of the sign made without just cause may suggest a connection between those goods or services and the trade mark owner; or
    • where the use may generally imply unfair advantage of, or cause damage to the distinctive character or the repute or awareness of the registered trade mark.

    The evidence necessary to prove a trademark infringement may vary depending on the circumstances of the case and should be decided on a case to case basis.

    DESIGNS:
    The registration of the design will confer to its owner the exclusive right to use it and to prohibit its use by third parties without its consent.

    For these purposes, use shall mean the manufacture, supply, marketing, import and export or use of a product incorporating the design, as well as storage of said product for any of the aforementioned purposes.

    The protection conferred by the registered design shall extend to any design that does not produce a different general impression on the informed user.

    In order to determine the scope of the protection, the author's margin of freedom when designing will be taken into account.

    The evidence necessary to prove a design infringement may vary depending on the circumstances of the case and should be decided on a case to case basis.

    COPYRIGHTS:
    Copyright is infringed by anyone that exploits the copyrighted subject matter without authorisation. Specifically, the unauthorised reproduction, distribution, public communication; and transformation of the copyrighted work are deemed infringing conducts.

  26. What defences to infringement are available?

    PATENTS & UTILITY MODELS:

    • Non-infringement conduct: defendant might state that he/she does not exploit the patent's subject-matter since the challenged conduct does not fall within the scope of the patent.
    • Invalidation: the grounds for invalidating a patent can also be raised as a defence to a patent infringement claim.
    • Prior use in good faith (started or prepared before the patent's priority date): the patent over cannot enforce its rights against a third party in good faith, who would be entitled from continuing or commencing working the patent or from making preparations in the same manner as before in such a way as to meet the reasonable needs of their business.
    • Statute of limitations: time limit for bringing a civil action for infringement of a patent shall be five years from the time that the claim could have been filed.
    • Private use: patents cannot be enforced against acts carried out in private, having no commercial purpose.
    • Experimental use ("Bolar exception"): patents cannot be enforced against acts carried out for experimental purposes relating to patent's subject matter. Performing studies and trials needed for obtaining authorization for the commercialization of pharmaceutical drugs is also excluded from patent enforcement.

    The defendant who is the owner of a later patent may not invoke its exclusive rights to defend himself against a patent infringement claim against him based on a prior patent.

    TRADEMARKS:
    Possible defenses to trade mark infringement are:

    • Invalidity of the registered trade mark;
    • Non-use of the claimant's trade mark within an uninterrupted five-year period;
    • Fair use;
    • Lack of confusion;
    • Exhaustion of owner's rights.

    DESIGNS:
    Possible defenses to design infringement are.

    • Invalidity of registered design (lack of novelty or individual character).
    • Lack of infringement (different general impression on the informed user).
    • Acts done privately and for non-commercial purposes.
    • Acts done for experimental purposes.
    • Acts of reproduction for the purpose of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source.
    • Servicing and repairing of foreign vessels and aircrafts on a temporary stay on Spanish territory.
    • Exhaustion of owner's rights.
    • Prior use.

    COPYRIGHTS:
    The usual defences to copyright infringement actions are:

    • Lack of infringement.
    • Lack of originality of the claimant's work.
    • The content of the claimant's work was already in the public domain.
    • The copyright is exhausted.
    • Application of a copyright exception.
    • Parody defence.

    The Copyright Act refers to the following exceptions to copyright enforcement:

    • Provisional reproduction and private copy.
    • Public security official procedures and disabilities.
    • Quotations and summaries for educational reasons or scientific investigations.
    • Articles on topical subjects.
    • The legitimate user of a database can, without the authorisation of the owner, perform all the necessary acts to access the content of the database and use it.
    • Technical recording by cable or satellite.
    • Reproduction, loan and consulting for investigation or preservation in specific premises such as museums, libraries or cultural institutions.
    • Official acts and religious ceremonies.

    Provided that they are applicable, the same defences could be used for related rights.

  27. Who can challenge each of the intellectual property rights described in questions 1-3?

    PATENTS & UTILITY MODELS:
    Expiry:
    Patents expiry 20 years from the day of its application. Utility Models expiry 10 years from the day of its application. Such registrations can also expiry if surrendered by its registered owner (unless third parties’ rights are affected).

    Invalidity/Cancellation:
    Patents and Utility Models may be also cancelled by civil courts at the request of any natural or legal person or any association legally constituted for the representation of the interests of manufacturers, producers, service providers, traders or consumers that are affected or have a subjective right or legitimate interest.

    TRADEMARKS:
    Expiry:
    A trademark may be cancelled by the SPTO if it is not duly renewed or if it is surrendered by the owner unless the surrender may affect the rights of third parties (e.g. where the rights are subject to licences, attachments or call options).

    A trademark may be also cancelled by civil courts at the request of any natural or legal person or any association legally constituted for the representation of the interests of manufacturers, producers, service providers, traders or consumers that are affected or have a subjective right or legitimate interest.

    Invalidity:
    A trademark may be declared invalid on the basis of nullity absolute grounds at the request of the SPTO or any natural or legal person or any association legally constituted for the representation of the interests of manufacturers, producers, service providers, traders or consumers that are affected or have a subjective right or legitimate interest.

    A trademark may be declared invalid on the basis of nullity relative grounds at the request of the holders of the earlier rights affected by the registration of the mark, or their successors in title.

    DESIGNS:
    Expiry:
    A design may be cancelled by the SPTO if it is not duly renewed or if it is surrendered by the owner unless the surrender may affect the rights of third parties (e.g. where the rights are subject to licences, attachments or call options) or if there is an ongoing claim action on the design´s ownership and the claimant has not consented the surrender.

    A design may be also cancelled by civil courts at the request of a third party when the design´s holder is no longer entitled to own the registered design.

    Invalidity:
    Any natural or legal person, as well as any group legally constituted to represent the interests of manufacturers, producers, service providers, traders or consumers that are affected or have a subjective right or legitimate interest, may request the invalidity of a registered design alleging:

    • That what is requested as a design does not conform to what is defined as such by law;
    • That the design does not comply with any of the legal requirements for protection.

    However, only the holders of the right on which annulment proceedings are based can request the invalidity of a design alleging:

    • That it has been declared by a final judicial decision that the design holder does not have the right to obtain the design registration;
    • that the registered design is incompatible with a design protected in Spain by virtue of a request or registration with a prior date of presentation or priority, but which has only been made accessible to the public after the date of presentation or priority of the later design;
    • That the registered design implies an improper use of any of the elements listed in Article 6 ter of the Paris Convention or of distinctive emblems and emblems other than those referred to in Article 6 ter which are of public interest such as the emblem, flag and other emblems of Spain, its autonomous communities, Its municipalities, provinces or other local entities, unless it has the proper authorization.
    • That the registered design incorporates a trademark or other distinctive sign previously protected in Spain whose owner is entitled, by virtue of such protection, to prohibit the use of the sign in the registered design;
    • That the registered design implies an unauthorized use of a work protected in Spain by copyright;

    COPYRIGHTS:
    Expiry:
    Copyrights expiry 70 from the death of its author (there are specific durations for related rights).

    Invalidity/Cancellation:
    There are no specific proceedings aiming the invalidation or cancellation of a copyright.

    There are no specific proceedings aiming the invalidation or cancellation of a copyright. However, in the course of a copyright infringement case, defendant can argue that the claimant’s work is not copyrightable (i.e. on the grounds of lack of originality).

  28. When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?

    PATENTS & UTILITY MODELS:
    Expiry:
    Expiration may be decided by the SPTO or requested before civil courts at any time during the subsistence of the trademark right.

    Invalidity/Cancellation:
    Thirds parties can file observations during the granting process, or oppositions once the patent has been registered.

    Once the patent has been registered, invalidity may also be applied for before civil courts at any time during the subsistence of the right.

    TRADEMARKS:
    Expiry:
    Expiration may be decided by the SPTO or requested before civil courts at any time during the subsistence of the trademark right.

    Invalidity:
    Invalidity on absolute or relative grounds for refusal may be requested before the SPTO during the registration process.

    Once the trademark has been registered, invalidity may be requested before civil courts at any time during the subsistence of the right.

    An invalidation action based on absolute grounds will not be time barred.

    However, if the owner of the earlier right has tolerated the use of the infringing mark for a period of five successive years, the right to bring an invalidation action based on relative grounds will lapse, unless the infringing mark was registered in bad faith.

    DESIGNS:
    Expiry:
    Expiration may be decided by the SPTO or requested before civil courts at any time during the subsistence of the design right.

    Invalidity:
    The nullity action may be exercised during the validity of the design registration and during the five years following its expiration or extinction.

    COPYRIGHTS:
    Third parties might challenge a registered copyright before the civil courts. Moreover, in the course of a copyright infringement case, defendant can argue that the claimant’s work is not copyrightable (i.e. on the grounds of lack of originality).

  29. Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?

    PATENTS & UTILITY MODELS:
    Patent invalidation may be declared by the SPTO in the course of opposition proceedings. A decision of the Spanish Patent and Trademark Office on patent validity can be appealed to the contentious-administrative courts.

    Invalidation proceedings can be also brought before the Civil courts, but it is forbidden invoking the same legal grounds already alleged before the Spanish Patent and Trademark Office.

    Patent invalidation may be also requested through specific proceedings or during the course of a patent infringement case (as a counterclaim). In this latter case, both the patent infringement and the patent invalidation action will be dealt by the same Court and will be resolved in the same judgment.

    A patent in Spain may be invalidated totally or partially depending on whether the causes for invalidation affect all or only certain claims of the patent. A patent registered in Spain can be declared invalid if it can be established that:

    • Conditions of patentability are not met (novelty, inventive step and industrial application);
    • Its subject-matter falls within the patentability exception;
    • Lack of clear and complete description;
    • The subject matter of the patent goes beyond the content of the application as filed; or
    • The owner of the patent had no right to obtain the patent.

    The patentee will be allowed to revoke or limit the scope of his/her patent by modifying its claims at any time during the patent lifespan (which also covers the validity period of the supplementary protection certificate).

    In patent cancellation proceedings where the parties have submitted contradictory expertises, the Judge might decide to request the SPTO the issuance of a non-binding "technical expertise" on the controversial technical issues. The author of such expertise might be called to witness at the trial (Section 120.7).

    TRADEMARKS:
    Expiry:
    The expiration of a registered trademarks before civil courts can be requested on the following grounds:

    • Lack of genuine and effective use in the Spanish market in connection with the goods or services for which it is registered. If the use is not made from the time of registration or ceases for an uninterrupted period of five years, without legitimate reason, the trademark may be cancelled;
    • as a result of the owner’s activity or inactivity, the trademark has become a common name for the goods or services for which it is registered;
    • the trademark becomes misleading as a consequence of its use in the market; or
    • the trademark owner no longer has the capacity to own a Spanish trademark.

    Invalidity:
    The invalidity of a registered trademarks before civil courts can be requested on the basis of:

    Absolute grounds:

    • the trademark owner does not have the capacity to own a Spanish trademark.
    • The trademark lacks of distinctive character.
    • The trademark consists exclusively of signs or indications that may serve in trade to designate the species, quality, quantity, destination, value, geographical origin, the time of obtaining the product or the provision of the service or other characteristics of the product or service.
    • The trademark consists exclusively of signs or indications that have become habitual to designate the products or services in the com
    • mon language or in the loyal and constant customs of the commerce.

    • The trademark is constituted exclusively by the form imposed by the nature of the product itself or by the form of the product necessary to obtain a technical result, or by the form that gives a substantial value to the product.
    • The trademark is contrary to the Law, public order or generally accepted moral codes.
    • The trademark may mislead the public, for example about the nature, quality or geographical origin of the product or service.
    • The trademark applied to identify wines or spirits contain or consist of indications of geographical origin identifying wines or spirits which do not have such origin, even where the true origin of the product is indicated or the geographical indication translated or accompanied by Expressions such as "class," "type," "style," "imitation," or the like.
    • The trademark reproduces or imitates the coat of arms, flag, decorations and other emblems of Spain, its Autonomous Communities, its municipalities, provinces or other local entities, unless the proper authorization is given.
    • the trademark includes insignia, emblems or emblems other than those referred to in Article 6 ter of the Paris Convention and which are of public interest, unless their registration is authorized by the competent authority.
    • the applicant filed the trademark application in bad faith.

    Relative grounds:

    • the trademark is identical to an earlier trade mark designating identical goods or services.
    • the trademark is identical or similar to an earlier trade mark and because the goods or services which they designate are identical or similar, there is a likelihood of confusion on the part of the public; The likelihood of confusion includes the risk of association with the earlier trade mark.
    • the trademark is identical to an earlier trade name designating activities identical to the goods or services for which the mark is sought;
    • the trademark is identical or similar to a previous trade name and because the activities which designate the goods or services for which the mark is sought, there is a likelihood of confusion on the part of the public; The likelihood of confusion includes the risk of association with the previous trade name.
    • the trademark, even if its registration is for dissimilar for goods or services, is identical or similar to a previous well-known or renowned trademark in Spain and the use of the mark may indicate a connection between the products or services covered by it and the owner of the prior well-known or renowned trademarks or, in general, when such use, carried out without fair cause, may lead to an improper use or impairment of the distinctive character or of the notoriety or renown of such earlier signs.
    • the trademark consists of a name or image that identifies a person other than the applicant for the mark.
    • the trademark consists of a name, surname, pseudonym or any other sign that identifies a person other than the applicant for the general public.
    • the trademark consists of signs reproducing, imitating or transforming creations protected by copyright or other industrial property rights.
    • the trademark consists of a trade name, denomination or business name of a legal person that, prior to the filing date or priority of the mark applied for, identifies in the economic traffic a person other than the applicant, if, because it is identical or similar to these signs and because its scope of application is identical or similar, there is a likelihood of confusion on the part of the public.
    • the trademark has been registered without consent by the agent or representative of a third party who is the owner of a trademark in another member of the Paris Convention or the World Trade Organization.

    DESIGNS:
    Expiry:
    The expiration of a registered design before civil courts can be requested when the design´s holder is no longer entitled to own the registered design.

    Invalidity:
    The invalidity of a registered design before civil courts can be requested on the basis:

    • that what is requested as a design does not conform to what is defined as such by law;
    • that he design does not comply with any of the legal requirements for protection;
    • that it has been declared by a final judicial decision that the design holder does not have the right to obtain the design registration;
    • that the registered design is incompatible with a design protected in Spain by virtue of a request or registration with a prior date of presentation or priority, but which has only been made accessible to the public after the date of presentation or priority of the later design;
    • that the registered design implies an improper use of any of the elements listed in Article 6 ter of the Paris Convention or of distinctive emblems and emblems other than those referred to in Article 6 ter which are of public interest such as the emblem, flag and other emblems of Spain, its autonomous communities, Its municipalities, provinces or other local entities, unless it has the proper authorization;
    • that the registered design incorporates a trademark or other distinctive sign previously protected in Spain whose owner is entitled, by virtue of such protection, to prohibit the use of the sign in the registered design;
    • that the registered design implies an unauthorized use of a work protected in Spain by copyright.

    COPYRIGHT:
    Third parties might challenge a registered copyright before the civil courts. Moreover, in the course of a copyright infringement case, defendant can argue that the claimant’s work is not copyrightable (i.e. on the grounds of lack of originality).

  30. Are there any other methods to remove or limit the effect of any of the intellectual property rights described in questions 1-3, for example, declaratory relief or licences of right?

    Negatory action:
    Any interested party may bring an action against the owner of an IP right, so that the competent judge declares that a particular action does not constitute an infringement of that IP right.

    The interested party, prior to the filing of the claim, shall reliably require the owner of the IP right to pronounce himself on the possible infringement. After one month from the date of the request without the owner of the IP right had pronounced or when the applicant is not satisfied with the response, may exercise the negatory action.

    The claim must be notified to all persons holding rights duly registered in the corresponding Register, in order for them to be able to appear and intervene in the process. However, contractual licensees shall not be able to appear on the court when their license agreement so provides.

    Preventive writs:
    The person who foresees the filing of an application for precautionary measures without a prior hearing against him, may appear in legal form before the judicial body or bodies that he considers competent to hear of such possible measures and justify his position by means of a preventive writ.

    Prior use:
    The patent owner is not entitled to prevent a third party in good faith from continuing or commencing working the patent or from making preparations in the same manner as before in such a way as to meet the reasonable needs of their business if the said third party, before the patent's priority date, had exploited the patented invention in Spain or had made serious and specific preparation to exploit the said invention.

  31. What remedies (both interim and final) are available for infringement of each of the intellectual property rights described in questions 1-3?

    PATENTS & UTILITY MODELS:
    The patentee has legal actions to enforce the exclusive rights granted under patent. Before the civil jurisdiction, the owner whose patent rights have been infringed may seek:

    • cessation of the acts that infringe his/her rights;
    • compensation for damages;
    • seizure of the objects produced or imported in infringement of the patent, and of all means exclusively used for such production or for carrying out the patented process;
    • if feasible, forfeiture of the seized objects and means;
    • the adoption of those measures needed to prevent continued infringement of the patent, in particular, the transformation of the objects or means seized or their destruction when this is necessary to prevent infringement of the patent;
    • publication of the judgment at the infringer's expense and notification to concerned third parties.

    It is important to note that the Spanish legislation allows the parties to seek provisional enforcement of non-final civil judgments (patent invalidation judgments are excluded). This can be made by the initiation of expedited enforcement proceedings.

    PATENTS, TRADEMARKS, DESIGNS & COPYRIGHTS:
    Precautionary measures:
    The IP right holder is entitled to request interim precautionary measures to ensure the effectiveness of the judgment adopted in the main action.
    Three criteria must be satisfied to obtain an interim injunction:

    • fumus boni iuris (ie, a prima facie case);
    • periculum in mora (ie, urgency); and
    • the provision of a bond to guarantee potential damages to the defendant.

    An interim injunction may be issued either ex parte or following a contradictory hearing.
    There are no legal time limits for the pursuit of interim relief. However, as one of the criteria to be satisfied in order to obtain an interim injunction is urgency, the corresponding request should be filed as soon as possible after becoming aware of the infringing acts.
    Precautionary measures may consist of:

    • cessation of acts that could infringe the right of the petitioner or its prohibition, when there are rational indications to imply the imminence of such acts.
    • retention and deposit of goods allegedly infringing the IP right of the owner as well as of the means exclusively destined to the infringement.
    • securing of a compensation for damages.
    • relevant registry entries.

    Final remedies:
    The IP right holder may seek the following remedies:

    • cessation of the infringing acts;
    • compensation for damages;
    • delivery or destruction of the infringing goods at the infringer’s expense;
    • delivery or destruction of the means principally used to commit the infringement at the infringer’s expense;
    • transfer of ownership of the infringing goods and the means intended to commit the infringement; and
    • publication of the judgment at the infringer’s expense.
  32. What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?

    The legal costs shall be imposed on the party that has been rejected all its claims, unless the court appreciates, and reasons, that the case presented serious doubts of fact or law.

    If the estimate or rejection of the claims is partial, each party shall pay the costs incurred at its instance and the common costs in half, unless there are merits to impose on one of them for having litigated with recklessness.

    The legal costs are calculated according to the tables and criteria fixed by the relevant Bar Association.

    To recover damages and legal costs, it is necessary to formally request in written the initiation of the enforcement procedure (before the same Court that issued the judgement of first instance).