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.
IP rights must be registered and enforced in Spain as U.S. trademark and patent registrations will not protect you in Spain. Granting or registering patents is generally based on a first-to-file basis. (https://www.trade.gov/knowledge-product/spain-protecting-intellectual-property) Similarly, registering trademarks is also based on a first-to-file basis, so you should consider how to obtain patent and trademark protection before introducing your products or services to the Spanish market. Intellectual property is primarily a private right and the U.S. government cannot enforce rights for private individuals in Spain. 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 attorneys or IP consultants who are experts in Spanish law. The U.S. Commercial Service can provide a list of local lawyers upon request.
Protection against unauthorized use in a particular country depends, basically, on the national laws of that country. However, most countries do offer copyright protection to foreign works under certain conditions, and these conditions have been greatly simplified by international copyright treaties and conventions.
In any foreign market companies should consider several general principles for effective management of their intellectual property For background, link to our article on Protecting Intellectual Property and Stopfakes.gov for more resources. It is always advisable to conduct due diligence on potential partners. A good partner is an important ally in protecting IP rights. Consider carefully, however, whether to permit your partner to register your 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 actors. Projects and sales in Spain require constant attention. Work with legal counsel familiar with Spanish laws to create a solid contract that includes non-compete clauses, and confidentiality/non-disclosure provisions.
Businesses may seek a trademark valid throughout the EU via the Office for Harmonization in the Internal Market (OHIM), headquartered in Alicante, Spain.
Office for Harmonization in the Internal Market (Trade Marks and Designs)
Avenida de Europa, 4
Tel: (34) 96-513-9100
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, both Spain or U.S.-based. These include:
- The U.S. Chamber and local American Chambers of Commerce
- The National Association for the Defense of Trademarks (ANDEMA)
- National Association of Manufacturers (NAM)
- International Intellectual Property Alliance (IIPA)
- International Trademark Association (INTA)
- The Coalition Against Counterfeiting and Piracy
- International Anti-Counterfeiting Coalition (IACC)
- Pharmaceutical Research and Manufacturers of America (PhRMA)
- Biotechnology Industry Organization (BIO)
In any foreign market companies should consider several general principles for effective protection of their intellectual property. For background, please link to our article on Protecting Intellectual Property and Stopfakes.gov for more resources.
IP Attaché Contact for Spain:
Susan F. Wilson
European Union, European Commission and Turkey
U.S. Mission to the European Union
Boulevard du Régent 27
Tel: +32 2-811-5308