SPAIN Law and Practice Contributed by: Mario Sol Muntañola, Javier Márquez Martín, Ferran Llaquet Ballarín and Ana Padial, Sol Muntañola Abogados
3.7 Copyright Enforcement and Remedies Copyright infringement occurs when a protected work is used without the corresponding authorisation. “Used” is understood as any exercise of the economic rights. The LPI states different remedies such as injunctions, damages and interim measures. The Spanish Crimi- nal Code also establishes criminal liability for certain infringements of intellectual property rights, particu- larly where they are carried out for profit and to the detriment of third parties. Penalties include up to four years imprisonment and fines. 3.8 Infringement Tests and Substantiality The issues of “substantial part” copying and non- literal copying must be assessed on a case-by-case basis. In the first case, determining whether a copy con- stitutes a “substantial part” requires considering the effect of the portion taken in the context of the work as a whole. A single phrase in a song may be a sub- stantial part, whereas five sentences may not be so in a book. In the second case, non-literal copying may gener- ally be acceptable; however, whether it amounts to infringement depends on whether the structure, sequence, or organisation are common elements of the type of work (in which case it would not be consid- ered copying) or, conversely, form part of the original and personal aspects of that particular work. 3.9 Collective Management and Licensing The CMO (chief marketing officer) manages copyright and related rights on behalf of authors and rights hold- ers. Spain has several collecting societies, which have to be authorised by the state. They are heavily regu- lated and must operate with transparency and non- discrimination. Their tariffs are negotiated with users and in the event that they do not reach an agreement it may be sub- mitted to the First Section of the Intellectual Property Commission, which will fix the applicable tariff.
In the event that the users do not pay the correspond- ing tariff, the CMO can start a proceeding before the civil courts. 4. Industrial Designs and Trade Dress 4.1 Legal Framework and Protectable Subject Matter Spanish legislation regulates the protection of designs in Law 20/2003 of 7 July on the Legal Protection of Industrial Designs. The current law is in the process of being amended due to changes that have taken place at the European level. Indeed, Regulation (EU) No 2822/24 on European Union Designs amends and repeals the previous Regulation (EC) No 6/2002, and Directive (EU) No 2823/24 repeals and replaces the former Directive 98/71/EC. This constitutes a far-reaching reform of the European Union’s design protection system. The Regulation entered into force in May 2025, although it will be implemented in two phases: May 2025 and July 2026. And the Directive must be transposed by 9 December 2027, which has necessitated this reform of Spanish law; the public consultation phase for the draft bill was concluded in March 2025, and the bill will be presented shortly. 4.2 Requirements for Protection The protection of a design in the EU requires nov- elty (Article 5, Community Design Regulation (CDR)), individual character assessed according to the overall impression it produces on the informed user (Article 6, CDR), and that its features are not exclusively dic- tated by technical function (Article 8 (1), CDR), in line with the interpretation of the CJEU in PepsiCo / Grupo Promer (C 281/10 P) and Doceram (C 395/16). The unregistered community design arises automatically upon disclosure within the EU (Articles 11–12, CDR), lasts three years, and only protects against deliber- ate copying (Article 19 (2), CDR). In parallel, trade dress may be protected through unfair competition rules (Articles 4–5, Spanish Unfair Competition Act (UCA)) or as a three-dimensional trade mark if it has acquired distinctiveness (Articles 4 and 7 (1)(b) and (e), EU Trade Mark Regulation (TMR)), following the CJEU’s case law in Henkel (C 218/01) and Lindt (C 529/07).
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