SPAIN Law and Practice Contributed by: Mario Sol Muntañola, Javier Márquez Martín, Ferran Llaquet Ballarín and Ana Padial, Sol Muntañola Abogados
2. Trade Marks 2.1 Legal Framework and Protectable Signs In Spain, trade mark protection is primarily governed by the Spanish Trade Mark Act (Law 17/2001), which was updated in 2018 to implement Directive (EU) 2015/2436. The enforcement of trade mark rights is further supported by the Civil Procedure Act and the Criminal Code, which provide the legal framework for civil and criminal actions against infringement. A wide variety of signs can be protected, provided they meet the necessary requirements. These include words, letters, numbers, three-dimensional shapes, colours, sounds and combinations of these elements. While traditional marks such as word and figurative marks remain the most common, non-traditional marks (such as motion marks, multimedia marks or pattern marks) are increasingly accepted, provided they meet the required representation criteria. Unregistered trade marks do not enjoy full protection in Spain, as rights are primarily acquired through reg- istration. However, well-known or reputed marks may be protected even if not registered, particularly where third-party use may lead to confusion or take unfair advantage of their reputation. 2.2 Requirements for Trade Mark Protection In Spain, the key requirements for trade mark protec- tion are distinctiveness and the ability of the sign to be represented in the Trade Mark Register. A sign must be capable of distinguishing the goods or services of one undertaking from those of others, as this consti- tutes the essential function of a trade mark. Signs that are descriptive, generic or customary in the relevant sector are generally not registrable unless they have acquired distinctiveness through use. Acquired distinctiveness (also known as secondary meaning), arises when a sign that was originally non- distinctive becomes associated by the relevant pub- lic with a specific commercial origin. This is typically demonstrated through evidence such as duration and intensity of use, market share, advertising investments and consumer recognition.
Compulsory licences are available on specified grounds (insufficiency of exploitation, dependence, and public interest), subject to conditions and remu- neration. Courts also apply proportionality; FRAND issues typi- cally arise under general contract and competition law alongside patent rules. 1.6 Patent Enforcement and Remedies Spain conducts civil patent cases before specialised Commercial Courts designated by the General Coun- cil of the Judiciary, with nationwide competence (eg, Madrid, Barcelona, and Valencia). Defendants typi- cally have two months to file the statement of defence and any counterclaim. Validity can be challenged by defence or counterclaim; patents may limit claims dur- ing litigation, and subsequent revocation/limitation decisions have retroactive effect. Post-grant opposi- tions before the Spanish Patent and Trademark Office may run in parallel, and the Office informs the court accordingly. Interim measures are available, including ex parte where urgency or risk of frustration justifies it, under the Spanish Civil Procedure Act and Law 24/2015. Protective letters are possible. Typical first instance timelines vary by forum and case complexity; interim measures can be decided quickly, while merits cases often take many months. Final remedies include prohibitory injunctions and cessation, seizure, recall, removal or destruction of infringing goods, publication of the judgment, disclo- sure of origin and distribution channels, and damages. Damages may be quantified by lost profits or a rea- sonable royalty, supported by evidentiary disclosure tools. Attorneys’ fees and costs are recoverable under the “loser pays” principle, subject to statutory limits and the court’s proportionality assessment.
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