SPAIN Law and Practice Contributed by: Mario Sol Muntañola, Javier Márquez Martín, Ferran Llaquet Ballarín and Ana Padial, Sol Muntañola Abogados
4.3 Registration and Term Registration of an industrial design can be carried out before the Spanish Patent and Trademark Office (OEPM) or before the EUIPO for a Registered Commu- nity Design, through a fast administrative procedure based on a purely formal examination and relatively low fees (in Spain, EUR66.27 for a single design, and at EU level, EUR350 for the first design with reduced rates for multiple applications); once granted, pro- tection lasts for an initial five-year term and may be renewed in successive five-year periods up to a maxi- mum of 25 years, while the Unregistered Community Design arises automatically upon disclosure in the EU, requires no formalities and provides a non-renewable three-year protection period. 4.4 Enforcement and Remedies Infringement of an industrial design or trade dress occurs when a third party uses an appearance that reproduces the protected design or does not produce a different overall impression on the informed user, or when it imitates the commercial presentation of a product in a way that creates a likelihood of asso- ciation or unfair advantage. For a registered com- munity design, infringement covers any unauthorised use (manufacturing, offering, marketing, importing or stocking), while for an unregistered community design only deliberate copying is prohibited. In the case of trade dress, infringement arises from copying the dis- tinctive appearance of a product or its packaging when this leads to confusion or parasitic exploitation under unfair competition rules. Available remedies include interim injunctions to immediately stop manufacture or marketing, fact-finding measures, withdrawal and destruction of infringing goods, damages, publication of the judgment, and, at the border, customs inter- vention and detention of suspected goods through applications for border enforcement under Regulation (EU) 608/2013. 4.5 Functionality and Technical Features Courts assess whether a feature is “dictated by function” by applying Article 8 (1) of the Community Design Regulation and the interpretation of the CJEU in DOCERAM (C 395/16), which rejects the former “multiplicity of forms” test and requires an exami- nation of all objective circumstances (nature of the product, technical function, existence of industry
standards, the designer’s behaviour, technical docu- mentation, etc) to determine whether the sole reason for the shape is to enable the product to function. If the technical function is the exclusive cause, the fea- ture is excluded from protection. Partial designs are protected in the EU provided that the claimed part is visible during normal use of the product and meets the requirements of novelty and individual character; the functionality exclusion applies to each part in the same way, so a partial design cannot monopolise an element whose shape is technically necessary. A design may be refused or invalidated on grounds of “technical necessity” when the relevant features fall under Article 8 (1) (exclusive technical function) or Arti- cle 8 (2) (must fit interconnections, except modular systems) of the CDR. In such cases, the consequence is total or partial invalidity, because design law cannot grant a monopoly over technical solutions that must remain available to competitors. Law 3/1991 of 10 January on Unfair Competition regu- lated unfair competition in Spain for the first time. Prior to this, only isolated references could be found in the Trademark Law and the Advertising Law. Its purpose was to regulate acts carried out in the market for com- petitive purposes, protecting commercial good faith, businesses, and consumers. It is based on a clear principle: the imitation of third parties’ business ini- tiatives and products is, in principle, free, unless they are protected by an exclusive right recognised by law. The Unfair Competition Act generally prohibits acts that are contrary to the requirements of good faith, as well as misleading acts, acts of confusion, mislead- ing omissions, aggressive practices, acts that darken reputation, imitation, exploitation of another’s reputa- tion, and inducement to breach of contract, among others, considering these to be practices that must be prevented. 5. Trade Secrets 5.1 Legal Framework and Protectable Information Law 29/2009 of 30 December, which amended the legal framework on unfair competition and advertising in order to enhance consumer protection, reformed
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