SPAIN Law and Practice Contributed by: Mario Sol Muntañola, Javier Márquez Martín, Ferran Llaquet Ballarín and Ana Padial, Sol Muntañola Abogados
8.4 Trade Marks, Trade Dress and Industrial Designs The shape of a product or its packaging can, in fact, be protected simultaneously through word marks, three-dimensional marks or trade dress, and industrial designs. The trade mark will protect the logo and/or isotype and/or imagotype, or, as it is better known, the name identifying a product, its graphic configuration or a combination of both. However, if the wrapping or packaging is distinctive, it may also be registered as trade dress, which protects the three-dimensional shape of the packaging. And none of the above pre- vents the packaging from also being protected as an industrial design if it is genuinely novel in the sense that it has not been disclosed prior to registration and possesses a unique character, meaning that it pro- duces a distinct impression on an informed user. In this way, it would accumulate three distinct forms of protection. 8.5 Copyright and Trade Marks There are many circumstances in which logos, artistic elements or brands may be protected by both sys- tems simultaneously. The most typical case in which copyright and trade mark protection may overlap is that of a character who becomes famous; as their aes- thetic development – originally an intellectual creation intended for an animated production – is enhanced by new attributes resulting from their goodwill, such as distinctiveness. It is entirely possible that a character from a children’s series may end up serving to distin- guish one product from another through the applica- tion of character merchandising via licensing, making it essential to protect that character as a trade mark. When this occurs, there will undoubtedly be limita- tions on the scope and strength of the protection or on the application of restrictions, such as geographical or temporal ones, which will need to be resolved on a case-by-case basis. 8.6 Enforcement and Remedies Across Multiple IP Rights Under Spanish law, it is possible to bring claims based on different intellectual property rights in the same proceedings, provided that the facts underlying each of the claims are not exactly the same. For example, in a case of infringement of an audiovisual work, if both intellectual property rights and registered distinctive
benefit from copyright protection. The possibility of this dual protection is very important in the field of design. This was provided for in Article 96 (2) of Regu- lation (EC) No 6/2002; Article 9 of Directive 2001/29/ EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights; and Article 17 of the aforementioned Directive 98/71/EC. Benefiting from virtually universal and much longer protection without formal requirements is not some- thing to be taken lightly. That is why it has also been the subject of many CJEU rulings which have clarified in which cases such accumulation is possible and in which it is not. (See, among others, the “ Brompton ” case, 2020, 833/18; or, more recently, the judgment of the Court of Justice of the European Union (First Chamber) of 4 December 2025 (which jointly ruled on the joined cases “ Mio ” C 580/23 and “ USM ” C 795/23).) In Spain, cases such as the one handled by the firm that the authors work for, have applied the doctrine of the CJEU. In 2018, the Barcelona Court of Appeal ruled that the designs of four chairs created by four leading Spanish designers (Mariscal, Pensi, Tusquets and Cortés) were also works protected by copyright. 8.3 Patents and Trade Secrets The principle underlying the grant of a monopoly or an exclusive right as powerful as that conferred by a patent is precisely that, in exchange, the patented information must be disclosed so that, once the term of protection has expired, it may be used by others. Confidential know-how or technical information may be considered a trade secret prior to, or even during, the patent application process. However, if the con- tent of the secret is incorporated into the patent, it is disclosed upon publication and consequently ceases to be secret. There are inventions that are classified as being in the interest of national defence. In such cases, their publication and prosecution are restricted in order to prevent the disclosure of information considered sen- sitive or strategically important for national defence.
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