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Introduction

1.1 What is intellectual property?

Intellectual property (IP) guarantees businesses protection of their intangible assets through the legal recognition of exclusive rights in such assets (copyrights in creative works and industrial property rights in industrial assets, such as trademarks, patents, designs etc.). Before launching in a new market, the company must take the necessary steps to ensure that its intangible assets are correctly managed and protected (Table 1).

Table 1

  TRADE SECRETS TRADEMARKS® COPYRIGHT© PATENTS- UTILITY MODELS SPANISH DESIGNS  COMMUNITY DESIGNS
What is protected Information Identifiers

Creations

Inventions

Designs

Designs

Duration

It will depend on the policies of the company regarding know-how and confidential information.

10 years, renewable indefinitely.

70 years from the death of the author.

Patents: 20 years maximum, renewable annually.

Utility models: 10 years maximum, renewable annually.

5 years extendible up to 25 years.

Unregistered: 3 years.

Registered: 5 years, renewable for up to 25 years.

Protection requirements

Secrecy and confidentiality.

Value of the information.

Distinctiveness and use.

Originality.

Novelty, useful and non-obvious subject matter.

Novelty and individual character.

Novelty and individual character.

1.2 What is the registration principle?

In Spain, registration at the relevant industrial property office is a prior requirement in order to obtain protection of intellectual property (as we will see, this principle does not govern copyright).

Spain, unlike the United States for example, follows the “first-to-file” system, which means that the first person to apply for registration will have prior rights. Use does not afford any rights against third parties except in the case of well-known marks.

Registration entails payment of the official fees, whose amount will depend on circumstances such as the specific type of right applied for, the number of classes, territory, etc.1

1.3 What is the territoriality principle?

The principle of territoriality means that the protection conferred by intellectual property rights is only available, in principle, in the country or countries in which registration has been obtained (or in the case of copyright, in the country where protection is sought).

Thus, the registration of a trademark or a patent in the country of origin by the owner does not confer automatic protection in other countries. Consequently, protection must be sought through additional registrations in each relevant country.

1.4 How to overcome the limits of territoriality?

In order to make it easier to protect intellectual property rights in different territories, Spain has ratified the main international conventions in this area.

With rare exceptions, international intellectual property treaties allow non-Spanish nationals to protect their rights in Spain, and Spanish nationals to enjoy protection in most other countries. Spain’s membership of the European Union has also favored Spanish legislation to be in line with that of the rest of EU Member States.

1.5 What are the most important conventions signed by Spain? (Table 2)

Table 2

INTERNATIONAL CONVENTION INTELLECTUAL PROPERTY RIGHTS REGULATED ORGANIZATION
Agreement on Trade-related aspects of intellectual property rights (TRIPS) Intellectual Property World Trade Organization
Paris Convention Industrial Property World Intellectual Property Organization (WIPO)
Patent Cooperation Treaty (PCT) Patents World Intellectual Property Organization
European Patent Convention Patents European Patent Organization
Madrid Agreement Trademarks World Intellectual Property Organization
Madrid Protocol Trademarks World Intellectual Property Organization
Berne Convention for the Protection of Literary and Artistic Works Copyright World Intellectual Property Organization

1.6 Can intellectual property rights be marketed?

Intellectual property rights are assets, and may therefore be assigned, encumbered or transferred by any means provided by Law.

Licenses are the contracts most frequently used in this area, through which a third party is authorized to use the rights granted in exchange for payment.


1     Annex I to this chapter includes a list with links to the official fees corresponding to the different types of rights for 2018.