Trademarks and patents in Spain: how to protect what your company creates

Industrial property is the set of exclusive rights that the law confers over creations of industrial application: inventions, distinctive signs and designs. Those rights arise only with registration. A company that innovates but does not register competes without a safety net: anyone may imitate its product, reproduce its name or copy its design without incurring legal liability. This guide sets out the regime of the two main titles —trademarks and patents— and the landscape opened up by the European Unitary Patent.

The trademark: what it protects and what it does not

A trademark is any sign that, by its own characteristics, distinguishes the goods or services of one company from those of its competitors and that is capable of graphic representation. In Spain, registration is governed by the Trademarks Act (Law 17/2001 of 7 December) (with its subsequent amendments). Words, names, slogans, logos, shapes, colours and combinations of these may be registered, provided they meet two conditions:

• Distinctive character: the sign must distinguish commercial origin (Article 4 of Law 17/2001). The generic names of the product —a wine seeking to be called simply "red"— lack it.
• Absence of grounds for refusal: neither absolute (Article 5, which excludes descriptive, misleading or public-policy-infringing signs) nor relative (Article 6, which protects against earlier confusable trademarks).

A trademark registered with the Spanish Patent and Trademark Office (OEPM) provides protection in Spain for a period of ten renewable years (Article 31). After five years from registration without the proprietor having put it to genuine and effective use for the goods or services for which it was registered, any third party may apply for its revocation for non-use (Article 39). This ground for revocation is frequently applied in inter partes proceedings before the OEPM, and the Court of Justice of the European Union has interpreted it with increasing rigour.

The European Union trademark (EUTM)

Where a company operates in several EU countries, registration with the European Union Intellectual Property Office (EUIPO), based in Alicante, provides a single trademark with effect in the twenty-seven member states. The regime is governed by Regulation (EU) 2017/1001. The basic fee, the single procedure and the broad coverage make the EUTM the first choice for companies with a European reach. Protection is likewise ten renewable years, with the same risk of revocation if the trademark is not used in a substantial part of the EU territory over five years.

Opposition and invalidity: defensive rights

The proprietor of an earlier trademark may oppose a conflicting application within three months of its publication (Article 20 of Law 17/2001 and Article 46 of the EUTM Regulation). Opposition is not reserved for the large operator: any company with a registered sign may exercise it, and it is the most efficient mechanism for preventing a competitor from occupying a phonetic or conceptual space close to its own in the market.

The patent: an exclusive right over the invention

A patent confers on its holder the exclusive right to exploit the invention —preventing third parties from manufacturing, selling, importing or using it for industrial purposes without authorisation— for twenty years from the filing date (Article 50 of the Patents Act, Law 24/2015 of 24 July, in force since 1 April 2017). After that period, the invention passes into the public domain.

To be patentable, an invention must meet three requirements (Article 4 of Law 24/2015):

• Novelty: it must not form part of the state of the art —that is, it must not have been disclosed anywhere in the world before the filing date. This requirement is what makes demonstrations or publications before filing a frequent mistake.
• Inventive step: the result must not be obvious to a person skilled in the art; it must represent a non-obvious advance.
• Industrial application: the invention must be capable of being manufactured or used in any kind of industry.

Among others, scientific discoveries, literary and artistic works, methods of medical treatment and computer programs considered in the abstract are not patentable (Article 5), although protection may reach them indirectly when they are integrated into a technical product or process.

The utility model: protection for minor inventions

Law 24/2015 also governs the utility model (Articles 137 et seq.), a more accessible instrument than the patent —it does not require an equivalent level of inventive step— with ten years' protection. It is the appropriate title for specific technical improvements to existing products that do not reach the inventive threshold of a patent.

The European Unitary Patent: the most significant change since 2023

On 1 June 2023, the European Unitary Patent system entered into force, with the opening of the Unified Patent Court (UPC). This system, governed by Regulation (EU) 1257/2012, allows a patent granted by the European Patent Office (EPO) to have unitary effect in the participating states —seventeen at present, with further accessions— through a single request for unitary effect filed with the EPO.

The practical consequences are significant:

• A single application, a single validation procedure and substantially reduced annual renewal fees replace the previous system of country-by-country validation.
• The UPC has jurisdiction over infringement and invalidity actions with effect in all participating states. A single set of proceedings can stop an infringement on a European scale.
• Classic European patents (those validated country by country under the European Patent Convention) coexist with unitary patents during a transitional period, during which their holders may ask the UPC not to have jurisdiction over them (opt-out).

For companies present in several European markets, analysing whether to seek unitary effect or to validate individually in each state is already part of the protection strategy.

Industrial designs: aesthetics as an exclusive right

Alongside the patent and the trademark, the industrial design —governed by the Industrial Design Legal Protection Act (Law 20/2003 of 7 July)— protects the external appearance of a product or part of it: lines, contours, colours, shapes, textures. Its maximum duration is twenty-five years (five renewable five-year periods). The unregistered Community design grants three years' protection from first disclosure without the need for registration, although with more limited scope.

What happens when someone uses your trademark or patent without authorisation

Faced with an infringement, the holder may bring:

• An action to cease the infringing acts.
• Damages for the harm suffered or for the unlawful profit obtained (Articles 40 to 42 of Law 17/2001; Articles 71 et seq. of Law 24/2015).
• Publication of the judgment at the infringer's expense.
• Urgent interim measures: seizure of goods, provisional prohibition of marketing, lodging of a guarantee.

Proceedings may be brought before the Commercial Courts, the OEPM or the EUIPO, depending on the title and the scope of the protection sought. Revocation for non-use, invalidity applications and oppositions before the administrative bodies are equally effective tools —and faster than the court route— in many cases.

How we support you at RCM Legal

The main vulnerability we observe in the companies we assist is the one that results from postponing registration: when the company decides to act, there is often already a third party that has taken a position in the register or in the market. Prior registration —even before launch— is a low-cost investment compared with what it costs to fight a later dispute. Trademark watching —the periodic monitoring of new confusable applications— and the active management of the rights portfolio are the two pillars of an efficient industrial property strategy.

We advise on selecting the titles appropriate to each case, on national and European registration strategy, on defending rights against third parties and on negotiating licences and assignments. If you wish to protect your trademark, your invention or your design —or if you believe someone is infringing your rights— tell us about your case.