Intellectual Property in Spain

Any business seeking a certain level of exclusivity lays the foundation for success using intellectual property (IP) rights, as it is essential to protect, maintain and defend any rights related to the products or services on offer. Our national and international clientele includes creators and merchants ranging from start-ups to multinationals, operating in numerous commercial sectors.

Our advice is comprehensive and highly personalised. It includes assistance in the registration, processing, management and maintenance of intangible assets such as distinctive signs, inventions, designs, domain names and other exclusive rights.

Corporate Advice Related to Intellectual Property

We can assist you in the planning and execution of the best strategy for your business depending on the geographical, commercial and legal situation applicable in each case. For this purpose, our Corporate and M&A Department offers efficient and effective advice in order for you to be able to carry out your business as securely as possible.

Why Register Patents, Trademarks and Designs

Registration affords the owner (and, if applicable, the registered licensee) the right to exclusive use as well as the right to prevent others from commercially using the invention or distinctive sign registered without prior consent. This greatly reduces uncertainty, risk and competition by imitators and, subsequently, the consequential financial losses for owners.

Registration is, thus, essential in order to consolidate an exclusive market position and a competitive advantage. Indeed, registration frequently opens up new markets by affording appropriate territorial protection, while at the same time helping to recover expenses and gain higher returns on R&D&I investments.

In the case of patents, as their granting is contingent on their novelty and inventive step with respect to state of the art (our team will always verify patentability as an initial step), patent registration facilitates the negotiation of cross-licencing agreements in order to use technology owned by third parties. In addition, patent ownership or licencing can increase the possibilities of obtaining the necessary capital to launch a product.

Registration can even provide market prestige: companies frequently publicise their patents in advertisements to promote an innovative, unique public image.

Protection and Defence of Intellectual Property Rights

Our services include the audit of each company’s or professional’s intangible assets, a preliminary analysis of freedom to operate (FTO) and registration of any new rights, as well as the application process, prosecution, obtaining and monitoring of any resulting IP rights vis-à-vis any and all competent national, international and European registries. We also offer advice and assistance in negotiations in the event of disputes, as well as assistance with oppositions and appeals.

We collaborate with a multidisciplinary and experienced team of professionals including IP attorneys certified by the Spanish Patent Office and European patent attorneys, which allows us to offer each and every one of our clients advice suited perfectly to the sector(s) in question. This highly specialised, expert advice covers sectors including mechanics, electricity, telecommunications, software, medical technology, architecture, energy, environmental, chemical, biotech, physics and nanotechnology.

Our services to protect the technology or trademarks used by companies or innovators to differentiate themselves from competitors include:

• Preparation of patent technology reports to determine whether there are already other solutions in the market that could conflict with the technology to be patented;
• Registration, processing and maintenance of IP rights (patents, trademarks, trade names and designs), in Spain and worldwide;
• Advice on disputes and oppositions in trademark and patent proceedings;
• Drafting of guidelines to protect trade secrets;
• Valuation of intangible assets;
• Obtaining CE marking;
• Guidance in defining IP strategies to be adopted by entrepreneurs, spin-offs, SMEs or large corporations;
• Assistance in obtaining subsidies from the EUIPO and the Spanish Patent and Trademark Office for trademark and patent applications, respectively, in Spain and abroad;
• IP-related advice on the drafting of research proposals or innovation projects to apply for public R&D&I funding programs;
• Assistance in obtaining the Spanish seal as a PYME INNOVADORA (innovative SME);
• Drafting and review of consortium agreements and/or transfers of technology from Spanish public research bodies (PRBs) to spin-offs;
• Drafting and examination of confidentiality agreements; and
• In-house training on intellectual property matters.

We handle the negotiation and drafting of all types of agreements, especially those involving patent and trademark licenses, transfers of technology and know-how, valuations of intangible assets, protection of trade secrets, non-disclosure agreements, coexistence of trademarks, distribution, franchising and assignment of copyrights. We also have extensive experience preparing legal reports and opinions and handling cease-and-desist letters or any other issues if conflicts arise.

Our Intellectual Property team also applies for domain names and enforces trademark owners’ rights in cases of "cybersquatting" when domain names contain registered trademarks.

Litigation in Intellectual Property Matters

Our Dispute Resolution Department has a highly experienced team of lawyers who provide advice and representation in civil, commercial, contentious-administrative and even criminal litigation matters. Our priority is to reach an out-of-court settlement; however, we also seek settlements after a lawsuit has been filed and, if necessary, fiercely defend our client’s interests with the help of experienced experts. For this purpose, we collaborate with prestigious Spanish and international law firms that complement our services as well as with seasoned experts well versed in all technical and commercial branches of intellectual property.

We handle litigation concerning patents, trademarks, domain names, competition, advertising, trade secrets, copyright and related rights. More specifically, we participate in legal actions involving infringement, cancellation, misappropriation of legal rights (jactancia), preliminary injunctions, pre-trial proceedings to collect evidence, preventive writs as well as any and all resulting appeals in the Spanish provincial courts, National High Court, Supreme Court, Constitutional Court and the Court of Justice of the European Union. We also defend our clients’ rights to honour, privacy and one’s own image.

Starting 14 January 2023, the Spanish Patent and Trademark Office will be in charge of trademark cancellations, which, up to now, have been the job of commercial courts. In a break from tradition, the SPTO will admit a wide range of evidence, in particular documents, but the new legislation also allows for oral hearings in which parties, witnesses and experts can be questioned. Furthermore, the Office has the discretion to allow multiple replies and rejoinders. Consequently, expectations are mixed: On the one hand, with this new “court-like” role, the SPTO may be in over its head, on the other hand, claimants could get their rulings much more cost-efficiently. This report explains the details of the new system and what to expect now when initiating trademark invalidity or revocation proceedings in Spain. To download, please click on the image.