IP in business transactions: Spain overview

A guide to intellectual property law in Spain. The IP in business transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax.

To compare answers across multiple jurisdictions, visit the IP in business transactions: Country Q&A tool.

This Q&A is part of the global guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-guide.

Sönke Lund and Consuelo Álvarez Pastor, Monereo Meyer Marinel-lo Abogados
Contents

Overview of main IPRs

1. What are the main IPRs in your jurisdiction? How are they protected?

Patents

Patents provide protection for technical inventions that:

  • Are new.

  • Involve an inventive activity.

  • Are capable of industrial application.

Depending on the scope of protection sought, patents must be registered and granted by:

  • Spanish Trademark and Patent Office (STPO) (Oficina Española de Patentes y Marcas) (http://www.oepm.es/es/index.html), when seeking protection for within Spain.

  • European Patent Office (EPO) (www.epo.org), when seeking protection for within the contracting states of the European Patent Convention 1973 (EPC).

Patent protection lasts for a non-extendable period of 20 years, to be counted from the day the patent application is filed.

Trade marks

Registered trade marks. Trade mark protection is available for any sign which is capable of graphical representation and is endowed with distinctive character with regard to other goods or services offered in the market. Depending on the scope of protection sought, an application for registration must be filed with the:

The trade mark protection starts on the date of the publication of the grant and is set for ten years, although they can be renewed indefinitely for ten-year periods.

Unregistered trade marks. Trade mark rights can also be acquired by:

  • The use of a sign in the course of a trade if the sign has acquired a secondary meaning as a trade mark with the relevant public.

  • Notoriety within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property 1883 (Paris Convention).

Copyright

Copyright protects literary, scientific and artistic works (including databases and computer programs) which constitute original creations and are expressed in any tangible or intangible form.

Works can be registered at the General Registry of Intellectual Property. Any author of a work can apply for the work to be registered. However, copyright protection does not require registration, since protection arises automatically at the moment the work is created.

Generally, copyright protection lasts for the author's entire life plus 70 years after the author's death.

Design rights

Registered designs. Registered design rights protect the outer appearance of a product, or a part of a product, that results from the lines, contours, colours, shape, texture, materials of the product and its ornamentation. Registered design protection is available for any design which is new and has individual character.

Depending on the scope of protection sought, an application for registration must be filed with the:

Registered design protection lasts for five years from the moment of application and can be renewed for successive periods, up to a maximum period of 25 years.

Unregistered designs. Designs can also be protected as unregistered EU designs when they are new, have individual character and have been made available to the public within the EU.

A design which meets the above-mentioned requirements will be protected as an unregistered EU design for a period of three years as from the date on which it was first made available to the public within the EU.

Trade secrets and confidential information

The protection of trade secrets and confidential information is provided through unfair competition law. The requirements for confidential information are that the information:

  • Is secret.

  • Has certain commercial value or provides a competitive advantage.

  • Has been subject to reasonable steps, under the circumstances, by the person lawfully in control of the information, to keep it secret.

The legal holder of confidential information can bring an action for unauthorised use of the information on the grounds of disclosure, exploitation and acquisition of secrets by means of espionage or an analogous procedure.

Utility models

Utility models provide protection for inventions of a less inventive nature that those protected by patents. However, these inventions must also be new and be capable of industrial application.

Utility models are protected by registration at the STPO for a period of ten years from the presentation of the application. An annual fee must be paid in order to maintain the right.

For further information about the main IPRs, see Patents, trade marks, copyright and designs in Spain.

 

Maintaining IPRs

Search and information facilities

2. What facilities are available to conduct IP searches and obtain IP information on registered IP rights?

Patents

Searches of patents can be conducted through:

It is not recommended to rely solely on the results of these searches. Comprehensive searches should also be conducted by a patent attorney or lawyer.

Trade marks

Searches can be conducted through:

  • The register of the Spanish Trade Mark and Patent Office (STPO), which offers free access to published data and the current legal status of Spanish trade marks (http://www.oepm.es/en/signos_distintivos/index.html). It provides the ability to conduct a simple search, an advanced search and a search by file number.

  • The database eSearch plus of the Office for Harmonisation in the Internal Market (OHIM), which offers free access to published data and the current legal status of EU trade marks (https://oami.europa.eu/eSearch).

  • The database ROMARIN of WIPO, which allows free access to published data and the current legal status of international registrations, including applications (www.wipo.int/romarin).

  • The TMview database, which allows free access to published data and the current legal status of national trade marks, EU trade marks and international registrations (www.tmdn.org/tmview/welcome).

It is not recommended to rely solely on the results of these searches. Comprehensive searches should also be conducted by a trade mark search specialist.

Copyright

It is not possible to conduct searches for registered copyrights.

Design rights

Searches can be conducted through:

It is not recommended to rely solely on the results of these searches. Design specialists should also be instructed to conduct professional design searches.

Maintenance of main IPRs

 
3. What steps must a business take to maintain the registration and legally protectable status of its main IPRs?

Patents

To maintain a patent registration, renewal fees must be paid each year from the third year of the application. A patent can be renewed for up to 20 years. The renewal fees range from EUR18.66 in the third year up to EUR494.90 for the 20th year.

Trade marks

The trade mark must be put to genuine use in relation to the goods and services for which it is registered within five years of registration. Otherwise, it can be cancelled for non-use, regardless of whether renewal fees have been paid.

To maintain a Spanish registration, renewal fees must be paid before the expiration of the tenth year of registration. The renewal fee is EUR142.28 for the first class of goods and services renewed, and EUR95.52 for the second and each additional class.

Design rights

To maintain a Spanish design registration, renewal fees must be paid every five years from the filing date. The renewal fees range from EUR82.20 to EUR145.05.

Utility models

To maintain a utility model registration, renewal fees must be paid each year from the third year of the application. A utility model can be renewed for up to ten years. The renewal fees range from EUR18.66 in the third year up to EUR218.22 for the tenth year.

Monitoring infringement

4. What steps can a business take to avoid infringing another party's IPRs and to monitor whether another party is infringing its IPRs?

Avoiding infringement

To avoid committing an infringement of third parties' IPRs, it is recommended to conduct professional searches to assess whether there are prior rights (see Question 2).

Monitoring infringement

To monitor infringements of IPRs by third parties, it is recommended to conduct periodic reviews of competitors' products and advertising, and conduct searches in databases of new applications and grants.

 

Exploiting IPRs

5. What are the main steps in conducting an IP audit in your jurisdiction to determine the content of an IP portfolio?

The main steps in an IP audit in Spain to determine the content of an IP portfolio are:

  • Identifying the intellectual property rights owned, licensed or used by the company. This includes all registered and unregistered IPRs as well as applications. It is usually the duty of the seller in a business transaction to provide a complete and detailed list of these IPRs.

  • Checking the particulars of the IPRs by reviewing the documents relating to those IPRs and conducting searches on the registries. This includes:

    • ensuring the ownership of the IPRs;

    • checking the status of the IPRs, including registration number, territory of protection, renewal dates, payments of fees, and so on;

    • reviewing assignments, licences, co-existing agreements and other agreements relating to the IPRs;

    • verifying whether there are any pending or completed proceedings relating to the IPRs.

 

Assignment

Scope of assignment

6. On what basis can the main IPRs be assigned?

Patents

Granted patents, patent applications and inventions can be freely assigned to any third party, in whole or in part, throughout the whole or part of the national territory (both exclusively or non-exclusively). The assignment will only transfer the proprietary rights in the invention. The right to be known as the inventor of an invention is a non-transferable personal right. An inventor who assigns his proprietary right to the invention remains the inventor.

Trade marks

Registered trade marks, applications for trade mark registration and unregistered trade marks with rights conferred by their use or notoriety can be assigned in whole or in part (that is, in respect of some or all of the goods and services for which the trade mark enjoys protection).

Copyright

The exploitation rights in the work can be assigned. The assignment is limited to the right or rights assigned, to the means of exploitation expressly provided for and the time and territorial scope specified.

If the time limit and/or territorial scope for the assignment is not specified, it will be for five years and the territorial scope will be limited to the country in which it is effected.

Design rights

Both registered and unregistered designs, and design applications, can be freely assigned.

Utility models

Utility models can be assigned under the same conditions as patents (see above).

 

Formalities for assignment

7. What formalities are required to assign each of the main IPRs?

Patents

A patent assignment must be in writing to be considered valid. Registration is not mandatory to validate the assignment. However, the assignment must be granted in a public deed before a notary in order to be registered.

Trade marks

The rights conferred by an assignment will only be binding on third parties after registration with the Spanish Trademark and Patent Office.

Copyright

Any assignment must be carried out in writing. Registration is not mandatory in order to validate the assignment.

Design rights

Assignments must be carried out in writing to be valid and can be enforced against third parties who act in good faith only after the assignment is registered in the Spanish Trademark and Patent Office.

Utility models

Utility models can be assigned under the same conditions as patents (see above, Patents).

Main terms for assignments

8. What main terms should be included in an assignment of IPRs?

The terms included in assignments can vary depending on the circumstances of the assignment and the type of IPR. However, the main terms to be considered in an assignment of IPRs include:

  • Name and details of the assignor and assignee.

  • Detailed definition of the IPRs being assigned.

  • Scope of the assignment (in whole or in part).

  • Assignment clause, clearly indicating that the IPRs are being assigned.

  • Warranties and/or indemnities regarding the assigned IPRs.

  • Price, due date, method of payment and costs, such as fees for the registration of the assignment.

  • Specific obligations of the assignor.

  • Effective date.

 

Licensing

Scope of licensing

9. On what basis can the main IPRs be licensed?

Patents

Both the patent and the patent application can be licensed in whole or in part, for the entire national territory or a part of that territory. Licences can be exclusive or non-exclusive. Unless otherwise expressly agreed, the licence is not exclusive and the licensor can grant licences to other persons and work with the invention himself. Exclusive licences will prevent the granting of other licences, and the licensor can only work with the invention if the contract has expressly reserved that right.

Rights conferred by the patent or the patent application can be exercised against a licensee who breaches any of the limits of their licence.

Unless otherwise agreed, the holder of a contractual licence will be entitled to perform all acts comprised in working with the patented invention, in the entire national territory and throughout the duration of the patent.

Unless otherwise agreed, the licensor is obliged to make available to the licensee the expertise necessary to conduct proper exploitation of the invention. The transferee or licensee to whom confidential or privileged information has been communicated will be obliged to take the necessary measures to prevent its disclosure.

Trade marks

Trade mark applications and trade marks can be licensed for all or part of the goods and services for which they are registered and for all or part of the Spanish territory. A licence can be exclusive or non-exclusive. It will be understood, unless otherwise expressly agreed, that the licence is not exclusive and the licensor [can] grant other licences and use the trade mark himself. However, when the licence is exclusive, the licensor can only use the trade mark if the contract has expressly reserved that right.

Unless otherwise agreed, the licensee is entitled to use the trade mark for the entire duration of the registration, including renewals, throughout the national territory and in relation to all the goods or services for which the mark is registered.

Copyright

The exploitation rights in the work can be licensed. The licence is limited to the right or rights licensed, to the means of exploitation expressly provided for and the time and territorial scope specified.

If the time limit and/or territorial scope for the licence is not specified, it will be for five years and the territorial scope will be limited to the country in which it is effected.

Design rights

Design applications and registered designs can be licensed for the whole or part of Spanish territory, in whole or part of the design constituting the exclusive right, for all or part of its possible applications.

Licences can be exclusive or non-exclusive. Unless otherwise expressly agreed, the licence is not exclusive and the licensor can grant other licenses and exploit the design himself.

Exclusive licences will prevent the granting of other licences and the licensor can only work with the design if the contract has expressly reserved that right.

Unless otherwise agreed, the licensee is entitled to exploit the design for the entire duration of the registration, including renewals, throughout the Spanish territory and for all their applications.

The licensee cannot transfer to third parties or sub-licence the design unless otherwise agreed.

Trade secrets and confidential information

Know-how can be freely licensed, exclusively or non-exclusively, with restrictions in terms of territory, duration or content.

Utility models

The same principles as for patents apply (see above, Patents).

Formalities for licensing

10. What are the formalities to license each of the main IPRs?

Patents

Licences affecting patent applications or patents already granted will only have effect against third parties in good faith when registered with the Spanish Trademark and Patent Office.

Trade marks

There are no formal requirements for trade mark licences under Spanish trade mark law. However, the registration of licences is necessary for a licence to be effective against third parties.

Copyright

There are generally no formal requirements for copyright licences.

Design rights

There are no formal requirements for design licences under Spanish design law. However, the registration of licences is necessary for a licence to be effective against third parties.

Utility models

The same principles as for patents apply (see above, Patents).

Main terms for licences

11. What main terms should be included in an IP licence?

The terms included in a licence can vary depending on the circumstances of the licence and the type of IPR. However, the main terms to be considered in a licence of IPRs include:

  • Names and details of the licensor and licensee.

  • Detailed definition of the IPRs being licensed.

  • Scope of the licence, in terms of subject matter, term, territory, exclusivity or non-exclusivity, and so on.

  • Right to grant sub-licences; and right to transfer the license.

  • Warranties and indemnities regarding the licensed IPRs.

  • Royalties, including taxes, method of payment and due date.

  • Governing law, jurisdiction provisions and enforcement of the licensed IPRs in the case of infringements by third parties.

  • Maintenance of the IPRs.

  • Effective date.

 

Taking security

12. What are the key issues in taking security over the main IPRs?

The intellectual property portfolio of many companies constitutes an important part of the company's assets. Security can be taken over all types of IPRs. Therefore, banks and other financial institutions lending money to companies try to obtain securities not only over individual selected IPRs, but over whole IP portfolios.

 
13. What are the main security interests taken over IPRs?

In Spain, security interests in IP and related issues are covered by a mixture of national IP law and other national laws. The procedures concerning the creation and granting of security interests in IP are mainly laid down in national IP law, whereas the method for making a security interest effective against third parties, the priority to be given to it and its enforcement are all governed by the Spanish Civil Code.

Security interests in IP can be recorded in an IP-specific register, with the exception of security interests in copyright, which has no register at all. Registration of the security interest in IP makes them effective against third parties. However, such registration does not give priority over other parties.

 

M&A

Due diligence

14. What IPR-related due diligence is commonly carried out in both a share sale or merger and an asset sale?

Share sale or merger

In both share and asset sales, the steps to be taken in an IP-related due diligence will include an assessment of all the IPRs concerned, including patents, industrial designs and drawings, utility models, trade marks, trade names, copyrights, know how and all related agreements and licences.

Research of the different IPRs in the respective databases should be carried out (see Question 2). With regard to unregistered IP rights (such as copyright and unregistered EU trade mark and design rights), the existence of their value should be quantified following enquiries being made of the target.

In addition, the assessment should include obtaining and reviewing copies of all IP-relevant agreements to which the target may be subject. This could include, among other things, IP assignments, licences, co-existence agreements, and dispute settlements.

Asset sale

See above, Share sale or merger.

Warranties/indemnities

15. What IPR-related warranties and/or indemnities are commonly given by the seller to the buyer in both a share sale or merger and an asset sale?

In share sales, mergers and asset sales, the seller should give to the buyer, among other things, the following warranties:

  • Ownership of the IPRs. The seller should give a detailed list containing all the owned IPRs and provide a warranty of its ownership.

  • Payment of fees. The seller should warrant that all fees relating to the IPRs have been paid.

  • Opposition, revocation and invalidity. The seller should warrant, so far as it is aware, whether there are pending or completed oppositions, revocations or invalidity proceedings pending in relation to the IPRs.

  • Infringement, litigation, settlement agreements. The seller should warrant that the business to be transferred does not infringe any third party IPRs, and that no third parties are currently infringing the IPRs of the business. The seller should inform the buyer about any proceedings concerning the IPRs, regardless of whether they are pending or completed.

  • Licences. The seller should warrant whether there are any licences to use the IPRs.

  • Confidentiality. The seller should warrant that confidential information has not been disclosed.

Transfer of IPRs

16. How are the main IPRs transferred in both a share sale or merger and an asset sale?

Share sale

A share sale does not affect the ownership of the IPRs. No separate transfer of the IPRs is required as all IPRs owned by the target remain unchanged. However, the parties can optionally agree on change of control clauses.

Asset sale

An asset sale does affect the ownership of the IPRs. Each IPR must therefore be assigned individually on the sale agreement. The agreement should include provisions describing the steps the seller will take to conclude the transfer.

 

Joint ventures

17. Is it common for companies to set up joint ventures in your jurisdiction to develop projects that heavily involve IPRs?

In Spain, joint ventures are often created when two or more entities want to achieve a common goal and agree to make contributions of various kinds to the common business. The contribution can consist of capital, resources or simply know-how. The main aim of creating a joint venture is to join knowledge, skills and resources, while sharing profits and risks.

In order to minimise the risk of potential conflicts when entering into a joint venture, the parties should include the following IP provisions, among other things:

  • Definition of the IPRs created by each partner before the formation of the joint venture and the ownership, licensing and cross-licensing positions in respect of those IPRs.

  • Licence to the joint venture of the existing IPRs.

  • Definition of the IPRs created by each partner in the course of the joint venture and the ownership, cross-licensing positions, exploitation rights and payment of fees in respect of those IPRs.

  • Liability in the case of infringement of third parties' IPRs.

  • Confidentiality and non-compete provisions.

  • Governing law and jurisdiction.

  • Grounds for termination of the joint venture and post-termination provisions.

 

Competition law

Main provisions and common issues

18. What are the main provisions of your national competition law that can affect the exploitation of the main IPRs?

The prohibited practices under Spanish competition law are foreseen in Chapter I of the Title I (Defence of Competition) of the Act 15/2007 on Defence of Competition (DCA) (Ley 15/2007, de 3 de julio, de Defensa de la Competencia). The main provisions of competition law are Articles 1, 2 and 3 of the DCA:

  • Article 1 of the DCA prohibits any agreement, decision or collective recommendation, or any concerted or consciously parallel practice, that produces, or could produce, the effect of preventing, restricting or distorting competition in the markets. This type of behaviour includes, among other things, agreements or arrangements for fixing prices or other trading conditions limiting production or sharing markets.

  • Article 2 of the DCA prohibits any abuse by one or more undertakings of a dominant position within the common market or in a substantial part of it.

  • Article 3 of the DCA enables the National Market and Competition Commission (Comisión Nacional de los Mercados y de la Competencia) to punish acts of unfair competition, such as defamation of competitors, which distort free competition and affect the public interest.

 
19. What are the most common national competition law issues that arise in the exploitation of the main IPRs?

There are many competition law issues that can arise on the exploitation of IPRs, in particular in agreements dealing with IPRs. Some of the most common issues include:

  • Licence and know-how agreements, which could include clauses involving market-sharing, price fixing or barriers to entry.

  • Patent settlement agreements.

  • Trade mark co-existence agreements, which could involve market sharing or any anti-competitive restriction.

  • Refusal to licence patents by owners of standard/essential patents.

Exclusions/exemptions

20. What exclusions or exemptions are available for national competition law issues involving the exploitation of the main IPRs?

Under Article 6 of the DCA, whenever required by the public interest, the National Market and Competition Commission can declare ex officio that the prohibition under Article 1 of the DCA (see Question 18) is not applicable to an agreement decision or practice when:

  • The conditions in Article 1 are not met (that is, it does not constitute a concerted or consciously parallel practice that produces, or could produce, the effect of preventing, restricting or distorting competition in the market).

  • The practices, agreements, decisions or recommendations contribute on improving the production, marketing and distribution of goods and services or promoting technical or economic progress, provided that they do all of the following:

    • permit the consumers or users to participate in an adequate form of their advantages;

    • do not impose on the undertakings concerned unnecessary restrictions in attaining their objectives;

    • do not afford such undertakings the possibility to eliminate competition in respect of a substantial part of the products in question.

In addition, the main EU block exemptions which will apply include:

  • Regulation (EU) 316/2014 on the application of Article 101(3) of the TFEU to categories of technology transfer agreements (Technology Transfer Block Exemption Regulation).

  • Regulation (EU) 330/2010 on the application of Article 101(3) of the TFEU to categories of vertical agreements and concerted practices (Vertical Restraints Block Exemption).

  • Regulation (EU) 1217/2010 on the application of Article 101(3) of the TFEU to categories of research and development agreements (Research and Development Block Exemption).

 

Advertising

21. To what extent do advertising laws impact on the use of third party trade marks?

The General Advertising Act (Ley 34/1988, de 11 de noviembre, General de Publicidad) provides that any misleading, unfair and aggressive advertising will be considered to be both illegal advertising and an act of unfair competition under the provisions of the Spanish Unfair competition Act (UCA) (Ley 3/1991, de 10 de enero, de Competencia Desleal).

The UCA allows for comparative advertising provided that the advertisement satisfies all of the following conditions:

  • The goods or services compared must be of the same kind and/or quality and/or intended for the same purpose.

  • It objectively compares one or more material, relevant, verifiable and representative features of those goods and services (which can include price).

  • It does not discredit or denigrate the trade marks, trade names, other distinguishing marks, goods, services, activities, or circumstances of a competitor.

  • For products with designation of origin, it relates in each case to products with the same designation.

  • It does not take unfair advantage of the reputation of a trade mark, trade name or other distinguishing marks of a competitor or of the designation of origin of competing products.

  • It does not present goods or services as imitations or replicas of goods or services bearing a protected trade mark or trade name.

  • It does not create confusion among traders, between the advertiser and a competitor or between the advertiser's trade marks, trade names, other distinguishing marks, goods or services and those of a competitor.

  • It is not misleading.

 

Employees and consultants

22. Who owns each of the main IPRs created by an employee in the course of his employment? Must compensation be paid to the employee? What main steps can an employer take to ensure it owns each of the main IPRs?

Patents

Ownership. As a general rule, an invention created in the workplace by an employee who has been hired by a company to carry out an inventive activity belongs to the owner of the company unless there is an agreement to the contrary.

Compensation. Only in the case in which the worker's contribution to the invention clearly exceeds their contract or working relationship will the worker have the right to supplementary remuneration.

If the worker has not been hired to do research but creates an invention thanks to resources or knowledge acquired in the company, the business owner can decide whether to obtain the ownership or reserve the right to use the invention. In both cases, the worker should be financially compensated.

Main steps. In order to ensure the employer owns each of the main patent rights an assignment of IPRs clause in the employment contract is recommended.

Copyright

Ownership. The ownership of the exploitation rights over a work created by an employee in a workplace will depend on what was agreed in the written employment contract. If there is no written agreement, is will be presumed that the exploitation rights have been granted exclusively to the employer.

Compensation. The author is entitled to a fair and proportional sharing of the income resulting from the exploitation of the work.

Main steps. In order to ensure the employer owns each of the main copyright rights an assignment of IPRs clause in the employment contract is recommended.

Design rights

Ownership. Unless otherwise specified in the contract, the employer or party who commissions a design under a contract is entitled to register the designs developed by an employee in the execution of his duties or following instructions given by his employer, or as a result of a commission in the context of a contract for services.

Compensation. The employer does not have to pay compensation unless otherwise agreed with the employee. However, the employee has the right to be mentioned in the registration as the designer of the work.

Main steps. In order to ensure the employer owns each of the main design rights an assignment of IPRs clause in the employment contract is recommended.

 
23. Who owns each of the main IPRs created by an external consultant? What main steps can a business take to ensure it owns each of the main IPRs?

Ownership

Unless otherwise agreed in the contract, external consultants own the IPRs of what they create.

Main steps

To ensure that the business owns the IPRs, contracts with consultants should contain provisions for the assignment of the rights resulting from the consultant's contractual work to the business.

 

Tax

24. What are the main taxes payable by a licensor on the licensing of the main IPRs?

The main taxes payable by a licensor on the licensing of the main IPRs are:

  • Value added tax on royalty payments (Article 11.2.4, Value Added Tax Act (Ley 37/1992, de 28 de diciembre, del Impuesto sobre el Valor Añadido)).

  • Withholding tax on royalty payments (Article 25.4.a, Withholding Tax Act (Ley 35/2006, de 28 de noviembre, del Impuesto sobre la Renta de las Personas Físicas y de modificación parcial de las leyes de los Impuestos sobre Sociedades, sobre la Renta de no Residentes y sobre el Patrimonio)).

  • Tax on patrimonial transmissions and documented legal acts (for documented legal acts related to intellectual property) (Article 31.2, Tax on Patrimonial Transmissions and Documented Legal Acts Act (Real Decreto Legislativo 1/1993, de 24 de septiembre, por el que se aprueba el Texto refundido de la Ley del Impuesto sobre Transmisiones Patrimoniales y Actos Jurídicos Documentados)).

 
25. What are the main taxes payable by a seller on the sale of the main IPRs?

The main taxes payable by a seller on the sale of the main IPRs are:

  • Withholding tax on royalty payments (Article 25.4.a, Withholding Tax Act (Ley 35/2006, de 28 de noviembre, del Impuesto sobre la Renta de las Personas Físicas y de modificación parcial de las leyes de los Impuestos sobre Sociedades, sobre la Renta de no Residentes y sobre el Patrimonio)).

  • Tax on patrimonial transmissions and documented legal acts (for documented legal acts related to intelectual property) (Article 31.2, Tax on Patrimonial Transmissions and Documented Legal Acts Act (Real Decreto Legislativo 1/1993, de 24 de septiembre, por el que se aprueba el Texto refundido de la Ley del Impuesto sobre Transmisiones Patrimoniales y Actos Jurídicos Documentados)).

 

Cross-border issues

26. What international IP treaties is your jurisdiction party to?

Patents and utility models

At a European level, Spain is a party to:

  • European Patent Convention of 11 December 1953.

  • European Patent Convention of 5 October 1973 (EPC).

  • Special Agreement between the European Patent Organisation and the Government of the Kingdom of Spain on co-operation in matters relating to the Patent Cooperation Treaty Patent, made in Munich and Madrid on 2 July and 18 December 2008.

At an international level, Spain is a party to:

  • Patent Cooperation Treaty of 19 June 1970 (PCT).

  • Agreement between the Spanish Patent and Trademark Office (SPTO) and the International Bureau of the World Intellectual Property Organisation (WIPO), in connection with the performance of the SPTO as the international search and international preliminary examination under the Patent Cooperation Treaty December 2007.

  • Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure of 28 April 1977.

  • Strasbourg Agreement Concerning the International Patent Classification of 24 March 1971.

Trade marks and trade names

Spain is a party to:

  • WIPO Madrid Agreement Concerning the International Registration of Marks of 14 April 1891 (Madrid Agreement).

  • Protocol Relating to the Madrid Agreement of 27 June 1989.

  • Common Regulations under the Madrid Agreement concerning the International Registration of Marks and the Protocol relating to that Agreement as in force on 1 January 2013.

  • WIPO Trademark Law Treaty of 27 October 1994.

  • Singapore Treaty on the Law of Trademarks of 27 March 2006.

  • WIPO Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957.

  • WIPO Madrid Agreement for the Repression of False or Deceptive Indications of Source of Goods of 14 April 1891.

Copyright

Spain is a party to:

  • WIPO Berne Convention for the Protection of Literary and Artistic Works of 9 September 1886 (Berne Convention).

  • WIPO Convention for the Protection of Producers of Phonograms Against Unauthorised Duplication of Their Phonograms of 29 October 1971.

  • Universal Convention on Copyright, revised in Paris of 24 July 1971 and Protocols 1 and 2.

  • Agreement Establishing the World Trade Organization and the Government Procurement Agreement, Marrakesh of 15 April 1994.

  • WIPO Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations of 26 October 1961.

  • WIPO Convention Establishing the World Intellectual Property Organisation of 14 July 1967.

Design rights

Spain is a party to:

  • Hague Agreement concerning the International Registration of Industrial Designs of 6 November 1925.

  • Hague Agreement concerning the International Deposit of Industrial Designs (London Act) of 2 June 1934.

  • Hague Agreement concerning the International Deposit of Industrial Designs (Additional Act of Monaco) of 18 November 1961.

  • Geneva Act regarding International Registration of Industrial Designs of 2 July 1999.

  • Locarno Agreement Establishing a Classification for Industrial Designs of 8 October 1968.

A detailed list of treaties can be found at www.wipo.int/wipolex/en/profile.jsp?code=ES.

 
27. Are foreign IPRs recognised in your jurisdiction?

IPRs are territorial in nature, and therefore foreign IPRs cannot usually be enforced in Spain. Therefore, foreign IPRs are only recognised in Spain to the extent established in international IP treaties (see Question 26).

Patents

Only Spanish patents or Spanish designations of EU patents can be enforced in Spain.

Trade marks

Spanish trade marks, registered and unregistered EU trade marks and any international trade mark registration under the Madrid Protocol designating Spain or the EU can be enforced in Spain.

Copyright

Any work entitled to copyright protection under Spanish legislation can be enforced in Spain.

Design rights

Spanish industrial designs, registered and unregistered EU designs and any international trade mark registration under the Madrid Protocol designating Spain or the EU can be enforced in Spain.

 

Reform

28. Are there any proposals for reform?

A new Patent Act was approved on 10 June.2015 (BOCG. Congreso de los Diputados, serie A, no 122-4, de 16/06/2015). It should replace the existing Patent Act in the near future. The proposal considers, among other things:

  • Introducing fee reductions for entrepreneurs and SMEs in the application and patent search.

  • Reducing the administrative charges and accelerating the procedures.

  • Establishing only one preliminary examination to assess novelty and inventive step and changes within the STPO.

 

Online resources

Official Spanish Gazette (Boletín Oficial del Estado)

W http://www.boe.es/legislacion/

Description. The website contains a comprehesive list of all the laws passed in the parliament, the provisions adopted by the Spanish Government and the general provisions of the Autonomous Communities.

Spanish Trademark and Patent Office (Oficina Española de Patentes y Marcas)

W http://www.oepm.es/en/propiedad_industrial/Normativa/index.html

Description. The website contains a comprehensive list of national, community and international regulations regarding intellectual property.

Ministry of Justice of the Government of Spain (Ministerio de Justicia del Gobierno de España)

W http://www.mjusticia.gob.es/cs/Satellite/Portal/es/servicios-ciudadano/documentacion-publicaciones/publicaciones/traducciones-derecho-espanol?param1=1288775993122

Description. The website contains English-language translations of Spanish legislative texts.



Contributor profiles

Sönke Lund, Partner

Monereo Meyer Marinel-lo Abogados

T + 34 934 875 894
F + 34 934 873 844
E slund@mmmm.es
W www.mmmm.es

Professional qualifications. Rechtsanwalt and Abogado.

Areas of practice. International commerce; intellectual property; competition; licences; litigation.

Languages. German, Spanish, English, Catalan

Professional associations/memberships

  • Barcelona Bar.
  • Hamburg Bar.
  • German Bar Association.
  • International Bar Association (IBA).
  • Senior Vice-Chair International Sales Committee.
  • International Intellectual Property Committee.
  • International Environmental Law Committee.
  • Association Littéraire et Artistique Internationale/ Asociación Literaria y Artística para la Defensa del Derecho de Autor (ALAI/ALADDA).
  • American Bar Association (ABA).

Consuelo Álvarez Pastor, Abogada

Monereo Meyer Marinel-lo Abogados

T + 34 934 875 894
F + 34 934 873 844
E calvarez@mmmm.es
W www.mmmm.es

Professional qualifications. Abogada; LLM; Gewerblicher Rechtsschutz, Heinrich Heine Universität Düsseldorf.

Areas of practice. Intellectual and industrial property; competition; unfair competition.

Languages. German, Spanish, English, Catalan

Professional associations/memberships. Barcelona Bar.


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