SPAIN Law and Practice Contributed by: Mario Sol Muntañola, Javier Márquez Martín, Ferran Llaquet Ballarín and Ana Padial, Sol Muntañola Abogados
2.6 Trade Mark Enforcement and Remedies Trade mark infringement occurs where a third party uses, without consent, an identical or similar sign in the course of trade for identical or similar goods or services, giving rise to a likelihood of confusion. In addition, infringement may arise where use of a sign takes unfair advantage of, or is detrimental to, the distinctive character or reputation of a reputed mark. Although “passing off” is not recognised as such under Spanish law, similar situations are addressed through unfair competition rules. Trade mark disputes are heard by specialised com- mercial courts. In Spain, jurisdiction is attributed to specialised sections of the commercial courts in Ali- cante. The trade mark owner may bring infringement actions seeking, among others, cessation of use, removal from the market, destruction of infringing goods and damages. Injunctions, including prelimi- nary measures, are also available to prevent ongoing or imminent infringement. Criminal actions are available in cases of counterfeit- ing and serious infringement. In addition, customs authorities may intervene to detain suspected infring- ing goods at the border as part of anti-counterfeiting measures. 3. Copyright 3.1 Legal Framework and Copyrightable Works Copyright in Spain is governed primarily by the Span- ish Intellectual Property Act ( Texto Refundido de la Ley de Propiedad Intelectual , LPI), approved by Royal Legislative Decree No 1/1996 of 12 April and amend- ed by Royal Decree-Law No 6/2022 of 29 March. The scope of its protection covers all original literary, artistic or scientific creations expressed by any means or medium, whether tangible or intangible, currently known or that which may be invented in the future. These include, among others, books, articles, music compositions, audiovisual works, choreographies, paintings, photography, software, databases, and architectural works.
Industrial designs are generally protected under design law but may also receive copyright protection, if they meet the requirements. 3.2 Requirements for Copyright Protection The requirements for copyright protection are origi- nality and expression. That is, the work must be the author’s own intellectual creation reflecting its free and creative choices. Although it does not require regis- tration and its protection arises automatically upon creation, the work has to be expressed, by any means. Ideas alone are not protected, only their expression is. The Court of Justice of the European Union (CJEU) has been working intensively to unify and harmo- nise the basic elements and concepts of the field, with perhaps the most significant development being the establishment of a uniform and autonomous interpretation of the term “protected work” within the context of copyright law. Thus, the well-known cases “ Infopaq ” of 2009, C-5/08;“ Painer ” of 2011, C-145/10;“ Renckhoff ” of 2018, C-161/17;“ Levola ” of 2018, C-310/17; and “ Cofemel ” of 2019, C-638/17, have established that the concept of a work requires the fulfilment of two cumulative requirements: on the one hand, the existence of an original object, in the sense that it constitutes an intellectual creation spe- cific to its author, reflecting their personality through free and creative decisions; on the other hand, the existence of an object that can be identified with suf- ficient precision and objectivity, so that the scope of protection can be clearly determined, an interpretation recently reaffirmed in the “ Cantemir ” case of 2026, C-649/23. Registration is not required, however, its highly rec- ommended as it creates a presumption of ownership and facilitates and provides proof of authorship and date of creation. 3.3 Authorship and Ownership Authorship is defined as the natural person that cre- ates a literary, artistic or scientific work. Legal entities can be recognised as authors only in specific cases, although they may acquire rights by means of an assignment.
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