Introduction to intellectual and industrial property

In Spain, both Spanish legislation on intellectual and industrial property and the ratification of the main international conventions guarantee the protection of rights in this area both in our country and in those with which Spain has signed agreements. #IntellectualProperty #IndustrialProperty

Table of contents:

1. What is industrial and intellectual property?

2. What is the principle of registration?

3. What is the territoriality principle?

4. How to overcome the limits of territoriality?

5. Can industrial and intellectual property rights be commercialised?

6. What changes are envisaged in Spanish industrial property legislation?

What is industrial and intellectual property?

Industrial and intellectual property guarantees a company the protection of its intangible assets through the legal recognition of exclusive rights over them (intellectual property rights over creative works and industrial property rights over assets of an industrial nature, such as trademarks, patents, designs, etc.). Before entering a new market, the company must adopt measures to ensure the proper management and protection of its intangible assets.

Industrial property rights are of a proprietary nature and can therefore be assigned or encumbered, being transferable by any means permitted by law. One of the most common contracts in this area is the licensing contract.

Intellectual property rights may be of an economic or "moral" nature. Rights of an economic nature may be subject to exploitation.

What is the principle of registration?

In Spain, the protection of industrial property requires, as a prerequisite, registration with the corresponding industrial property office. (This principle does not apply, as we shall see, to intellectual property or trade secrets).

Unlike other countries such as the United States, Spain operates a first-to-file system, so that priority rights correspond to the first to apply for registration. Use does not give any rights against third parties, except in the case of well-known trademarks.

To apply for registration it is necessary to pay the official fees, the amount of which will depend on the type of right in question and on circumstances such as the number of classes of goods or services for which a trademark is applied for, territory, etc. The fees do not include the fees of the professionals who, where applicable, advise on the processing of the application.

What is the principle of territoriality?

The principle of territoriality determines that the protection conferred by industrial and intellectual property rights is, in principle, limited to the territory of the country or countries in which they have been registered (or in the case of intellectual property, to the territory of the country where protection is sought).

Thus, the registration of a trademark or patent in the country of origin of the owner does not automatically grant protection in other countries, and additional registrations in those territories will be necessary in order to enjoy protection.

How to overcome the limits of territoriality?

In order to facilitate the protection of intellectual property rights in different territories, Spain has ratified the main international conventions in this area.

With rare exceptions, international treaties on intellectual and industrial property allow non-Spanish nationals to obtain protection of their rights in Spain, and Spanish nationals are protected in most other countries. Spain's accession to the European Union also means that our legislation is in line with that of the other EU countries.

Can industrial and intellectual property rights be traded?

Industrial and intellectual property rights are of a proprietary nature and can therefore be assigned or encumbered and are transferable by any means permitted by law.

One of the most common contracts in this area is the licensing contract, which authorises a third party to use the rights granted in exchange for a consideration.

What changes are planned in Spanish industrial property legislation?

Last October, the Draft Bill was announced to amend the three main industrial property laws: Law 17/2001, of 7 December, on Trademarks, Law 20/2003, of 7 July, on the Legal Protection of Industrial Design and Law 24/2015, of 24 July, on Patents.

The joint reform of these laws by means of a single legal text has the triple objective of adapting these laws to the current reality, making them more coherent and precise and providing greater legal security for users of the industrial property system.

Furthermore, the aim is to adapt the content of the aforementioned laws to the regulatory and interpretative changes that have taken place at international level and, in particular, in the countries around us.

If the Preliminary Draft goes ahead, it should be approved by the Council of Ministers by means of a final Draft in the coming months.

Finally, as a result of the entry into force of section 2 of the First Additional Provision of the Trademark Act, the Spanish Patent and Trademark Office (SPTO) will be competent to declare the invalidity or revocation of a trademark as of 14 January 2023.

Lawyers specialising in industrial and intellectual property

In this blog, we have dealt with key issues related to intellectual and industrial property. If you have any questions or need help with any aspect related to these areas, please do not hesitate to contact our team of IP lawyers. We will be happy to help you protect your IP rights - thanks for reading!