SPAIN Law and Practice Contributed by: Marina Gómez, Arochi & Lindner
Both the rights conferred on the proprietor of a trade mark and the exploitation copyright are transferable via mortis causa. 6.2 Licensing Requirements or Restrictions Generally, trade mark licences are classified as contractual (exclusive, non-exclusive), full or compulsory. Both the trade mark application and the trade mark registration may be licensed for: • all (full licence) or part (partial licence) of the goods and services for which it is registered; and • all (full licence) or part (limited licence) of the Spanish territory. The law does not expressly require that it be granted in writing, but the SPTO requires a valid licence document to be provided in order to reg - ister the licence. Unless otherwise agreed, the holder of a licence is entitled to use the mark for the entire duration of the registration, including renewals (Article 48.4 of the TM Act). 6.3 Registration or Recording of an Assignment or Licence The licence or assignment of a trade mark may only be opposed against bona fide third parties once it has been entered in the SPTO’s Register of Trade Marks. Once entered in the Register, no other trade mark of the same or an earlier date which is opposed or incompatible with it may be entered in the Register of Trade Marks (Article 48.3 of the TM Act). If only the application for registration has been noted down, no other right or encumbrance of the aforementioned kind may
be registered until the resolution thereof (Article 48.4 of the TM Act). The application for registration that first reaches the competent body will have priority over those that come later, and the corresponding registra - tion operations will be carried out according to the order of presentation. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits Civil actions arising from trade mark and copy - right infringement are time-barred after five years from the day on which they could have been brought (Article 45 of the TM Act). 7.2 Legal Claims for Infringement Lawsuits and Their Standards The proprietor of a trade mark may bring the following actions: • the cessation of acts infringing their rights; • compensation for damages suffered; • the adoption of the measures necessary to prevent the infringement from continuing and (in particular) the removal from the course of trade of the goods, packaging, wrapping, advertising material, labels or other documents on which the infringement of the trade mark right has materialised, as well as the seizure or destruction of the means principally intended for the commission of the infringement; • the destruction or disposal for humanitarian purposes (if possible), at the option of the plaintiff, of the goods unlawfully identified with the trade mark which are in the posses - sion of the infringer;
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