Includes typical use of agents and distributors and how to find a good partner, e.g., whether use of an agent or distributor is legally required.
Protecting Your Intellectual Property in Spain
Several general principles are important for effective protection of intellectual property (“IP”) rights in Spain. First, it is important to have an overall strategy to protect your IP. Second, IP may be protected differently in Spain than in the United States. Third, rights must be registered and enforced in Spain under local laws. For example, your United States trademark registrations, design or utility patent titles will not protect you in Spain without further administrative procedures in the corresponding regional (EU) or local levels.
Most copyrighted works created in the United States will be automatically protected in Spain from the moment of creation or publication according to international agreements. However, the extension of protection will vary according to the laws of Spain and of the EU. Protection against unauthorized use will vary depending on the national laws of each country.
Obtaining a utility patent in EU Member States is based on a first-to-file system i.e., the first person or entity to register the patent becomes the title holder. Similarly, most trademark and design rights -similar to a design patent- are based on a first-to-file registration system. So, you should consider how to obtain patent, design, or trademark protection before introducing your products or services into the Spanish market. Better yet, you should consider having an IP strategy for the whole world even before making your intellectual property public in any country, to ensure that you do not lose the right outside the United States.
Further, keep in mind that trademark and design titles can be obtained for the whole of the EU, at the European Union Intellectual Property Office - EUIPO. Individual titles for Spain can also be obtained at the Spanish Patent Office – OEPM. Similarly, a bundle of patent titles can be obtained for various countries through a simplified process at the European Patent Office - EPO. There are also other international registration systems like the Patent Cooperation Treaty for patents or the Madrid Protocol for trademarks, that could be useful to facilitate the protection of your IP in many countries of the world, including Spain.
It is vital that companies understand that intellectual property rights are primarily private rights and that the United States government cannot enforce them for private individuals in the EU. It is the responsibility of the rights holders to register, protect, and enforce their rights where relevant, retaining their own counsel and advisors. Companies may wish to seek advice from local legal counsel or IP consultants who are experts in Spanish and EU law. The U.S. Commercial Service can provide a list of local lawyers upon request.
While the United States government stands ready to assist, there is little that can be done if the rights holders have not taken these fundamental steps necessary to secure and enforce their IP in a timely fashion. Moreover, in many countries rights holders who delay enforcement of their rights may find that their rights have been eroded or abrogated due to legal doctrines such as statutes of limitations, laches, estoppel, or unreasonable delay in prosecuting a lawsuit. In no instance should United States government advice be regarded as a substitute for the responsibility of a rights holder to promptly pursue its case.
It is always advisable to conduct due diligence on potential partners. A good partner is an important ally in protecting IP rights. Consider carefully whether to permit your partner to register IP rights on your behalf. Doing so may create a risk that your partner will list itself as the IP owner and fail to transfer the rights should the partnership end. Keep an eye on your cost structure and reduce the margins and the incentive of would-be bad faith actors. Projects and sales in the EU require constant attention. Work with legal counsel familiar with EU laws to create a solid contract that includes non-compete clauses and confidentiality/non-disclosure provisions.
It is also recommended that small and medium-size companies understand the importance of working together with trade associations and organizations to support efforts to protect IP and stop counterfeiting. There are a number of these organizations, in both the EU and the U.S., including local American Chambers of Commerce.
A wealth of information on protecting IP is freely available to United States rights holders. Some excellent resources for companies regarding intellectual property include the following:
For information about patent, trademark, or copyright issues — including enforcement issues in the United States and other countries — call the STOP! Hotline: 1-866-999-HALT or visit https://www.stopfakes.gov/.
For more information about registering trademarks, obtaining designs or utility patents (both in the United States as well as in foreign countries), contact the U.S. Patent and Trademark Office (USPTO) at: 1-800-786-9199.
For more information about registering copyrighted works in the United States, contact the U.S. Copyright Office at: 1-202-707-3000.
For more information about how to evaluate, protect, and enforce intellectual property rights and how these rights may be important for businesses, please visit the “Resources” section of the STOPfakes website. For information on obtaining and enforcing intellectual property rights and market-specific IP Toolkits visit: STOPfakes IPR Toolkits. The toolkits contain detailed information on protecting and enforcing IP in specific markets and contain contact information for local IPR offices abroad and United States government officials available to assist SMEs.
For more information, please see the webpage on Protecting Intellectual Property.
The Office of the United States Trade Representative (USTR) publishes the Special 301 Report on an annual basis. This report provides a review of IP protection and enforcement for United States trading partners around the world. In the 2022 edition of the Report, USTR highlights the negative market access implications for United States producers due to the EU’s protection of geographical indications (GIs) and third-country markets. The report notes that in 2022 in Spain, the Ministry of Industry, Trade, and Tourism’s Patent and Trademark Office carried out campaigns against IP theft.
Additionally, mandatory requirements to record trademark licenses are in place in Spain. These mandatory requirements frequently impose unnecessary administrative and financial burdens on trademark owners and create difficulty in the enforcement and maintenance of trademark rights. Also, the absence of adequate means for searching trademark applications and registrations, such as by online databases, makes obtaining trademark protection more complicated and unpredictable. The lack of such online systems leads to additional costs, both in terms of initial filing and in relation to docketing and maintenance of multiple registrations. Furthermore, strict use of the Nice Classification or a country’s own sub-classification system that does not reflect the underlying goods or services introduces uncertainty into the registration process.
The U.S. Department of Commerce has positioned IP attachés in key markets around the world. Here is the contact information for the European-based IP attachés:
The U.S. Mission to the European Union (based in Brussels, Belgium): Serving the EU, EFTA, and UK
The U.S. Embassy Ukraine (based in Kyiv, Ukraine): Serving Central Eurasia and the Western Balkans:
World Trade Organization (WTO) and the World Intellectual Property Organization (WIPO) (based in Geneva, Switzerland).
For additional information on other Member States’ protection of property rights, please consult the Commerce Department’s Country Commercial Guides of the 27 EU Member States found at the following website: EU Member States’ Country Commercial Guides.
For additional information concerning protection and enforcement of intellectual property rights, please check the following website: U.S. Department of State website.
Other Key Links
IP in Spain
Spanish Patent and Trademark Office - OEPM (Oficina Española de Patentes y Marcas)
Ministry of Culture and Sport
IP in the EU and international organizations