Intellectual and Industrial Property: Trademarks, Patents, Copyright, and Trade Secrets

Intellectual and Industrial Property in Spain: Fundamental Concepts

The protection of intellectual creation and business innovation is a legal área of growing importance in the digital economy. This article provides an overview of the main protection instruments available under Spanish law: trademarks, patents, copyright, and trade secrets, with reference to their regulatory framework and available enforcement actions.

Distinction Between Intellectual and Industrial Property

Under Spanish law, the terminology distinguishes between:

• Intellectual property: Copyright and related rights, regulated by Royal Legislative Decree 1/1996 of April 12 (TRLPI). It protects literary, artistic, and scientific works.
• Industrial property: Trademarks, patents, utility models, and industrial designs, regulated by specific laws. It protects distinctive signs and technical innovations.

Both categories share a common objective: incentivizing creation and innovation by granting exclusive rights to their holders.

Trademarks: Protection of Distinctive Signs

#### Concept and Regulation

The Law 17/2001 of December 7 on Trademarks (LM), reformed by Royal Decree-Law 23/2018 (transposing Directive 2015/2436), regulates trademarks in Spain. A trademark is any sign capable of graphic representation (names, logos, three-dimensional shapes, sounds, colors, patterns) that serves to distinguish the products or services of one company from those of another (Art. 4 LM).

#### Registration with the OEPM

Trademark registration is processed before the Spanish Patent and Trademark Office (OEPM). The process includes:

1. Application: Submission of the application form identifying the sign, description of goods/services according to the Nice Classification, and payment of fees (approximately EUR 145 for the first class, with a supplement of EUR 97 per additional class).

1. Formal examination: The OEPM verifies compliance with formal requirements.

1. Publication and opposition: The application is published in the Official Industrial Property Gazette (BOPI). Third parties have a two-month period to file opposition.

1. Substantive examination: The OEPM examines absolute grounds for refusal (generic, descriptive signs, signs contrary to public order) and, where applicable, the oppositions filed.

1. Grant and publication: If there are no obstacles, the trademark is granted and published.

Duration: The trademark is granted for 10 years from the filing date, renewable indefinitely for successive 10-year periods (Art. 31 LM).

#### Types of Trademarks

• Word mark: Composed exclusively of words or letters.
• Figurative mark: Composed of images, drawings, or logos.
• Combined mark: Combination of word and figurative elements.
• Three-dimensional mark: The shape of the product or its packaging.
• Color mark: A specific color or color combination.
• Sound mark: Melodies, sound sequences.
• Motion mark: Sequence of moving images.

#### European and International Protection

• European Union Trade Mark (EUTM): Registered with the European Union Intellectual Property Office (EUIPO), with effects in all Member States. Base fee: EUR 850 (one class).
• International registration (Madrid System): Managed by WIPO, it allows obtaining protection in multiple countries through a single application based on the national registration.

Patents: Protection of Inventions

#### Concept and Regulation

The Law 24/2015 of July 24 on Patents (LP) regulates the protection of inventions in Spain. Patentable are new inventions that involve inventive step and are susceptible of industrial application (Art. 4 LP).

#### Patentability Requirements

• Novelty (Art. 6 LP): The invention must not be part of the prior art (all information accessible to the public before the filing date).
• Inventive step (Art. 8 LP): The invention must not be obvious to a person skilled in the art.
• Industrial application (Art. 9 LP): The invention must be capable of being manufactured or used in any kind of industry.

#### Patentability Exclusions

The following are not considered patentable inventions (Art. 5 LP):

• Discoveries, scientific theories, and mathematical methods.
• Literary or artistic works (protected by copyright).
• Plans, rules, and methods for intellectual activities, games, or economic-commercial activities.
• Computer programs (as such, though they may be patentable as part of a technical invention).
• Presentations of information.

#### Grant Procedure

Patent registration with the OEPM includes a mandatory substantive examination of novelty and inventive step requirements (since the 2015 reform). The average grant period is 2-4 years.

Duration: 20 years from the filing date, with no possibility of renewal (Art. 58 LP).

Utility models: For inventions with a lower inventive threshold, the LP provides for utility models (Art. 137), lasting 10 years with less stringent requirements.

Copyright: Protection of Intellectual Creation

#### Legal Framework

The Consolidated Text of the Intellectual Property Act (TRLPI) protects original literary, artistic, or scientific creations. Unlike trademarks and patents, copyright does not require registration to exist; it arises with the creation of the work.

#### Content of the Right

Copyright comprises:

Moral rights (Art. 14 TRLPI):

• Right of disclosure.
• Right of attribution (authorship).
• Right of integrity (opposition to modifications that harm the author's reputation).
• Right of withdrawal from commerce.
• These are inalienable and non-waivable.

Economic rights (Arts. 17-25 TRLPI):

• Right of reproduction.
• Right of distribution.
• Right of public communication.
• Right of transformation (adaptations, translations).
• These are transferable inter vivos and mortis causa.

#### Duration

Economic rights last the author's lifetime and 70 years after death (Art. 26 TRLPI). Moral rights are perpetual regarding attribution and integrity of the work.

#### Registration

Though not mandatory, the Intellectual Property Registry (under the Ministry of Culture) offers a presumption of ownership that facilitates defense of rights in court.

Trade Secrets

#### Trade Secrets Law 1/2019

Law 1/2019 of February 20 on Trade Secrets (LSE) transposed Directive (EU) 2016/943 and established a complete legal framework for the protection of confidential business information.

#### Trade Secret Concept (Art. 1 LSE)

For information to be considered a trade secret, it must meet three requirements:

1. Be secret: Not generally known or easily accessible to persons within circles that normally deal with such information.
2. Have business value due to its secret nature.
3. Have been the subject of reasonable measures by its holder to keep it secret (confidentiality agreements, access protocols, encryption).

#### Enforcement Actions

The LSE establishes specific actions:

• Cessation action for the unlawful obtaining, use, or disclosure.
• Damages action for compensation.
• Interim measures: Provisional injunction, seizure of infringing products, obligation to provide guarantees.
• Publication measures for the judgment.

Common Enforcement Actions

Holders of intellectual and industrial property rights have civil, criminal, and administrative actions available.

#### Civil Route

• Cessation action before the Commercial Courts (industrial property) or Courts of First Instance (intellectual property).
• Damages action: Direct damages, lost profits, and in cases of willful infringement, a reasonable royalty as an alternative calculation method (Art. 43 LP, Art. 140 TRLPI).
• Interim measures: Particularly relevant are the preliminary proceedings under Art. 256.1.7 LEC for identifying the infringer.

#### Criminal Route

Crimes against intellectual property (Arts. 270-272 CP) and industrial property (Arts. 273-277 CP) are punishable by imprisonment from six months to four years, fines, and disqualification. Prosecution is at the instance of the injured party (criminal complaint), unless it affects general interests.

Lexiel and Intellectual Property

Lexiel AI enables lawyers specializing in intellectual and industrial property to search Supreme Court and Provincial Court case law on trademark, patent, and copyright infringements, as well as access updated regulations (TRLPI, LM, LP, LSE) and locate judgments by type of infringement, sector, or compensation amount.

Frequently Asked Questions

How much does it cost to register a trademark with the OEPM?

The basic fee is approximately EUR 145 for one Nice Classification class, with a supplement of EUR 97 per additional class. Electronic filing offers a discount.

Can I protect an idea without patenting it?

An idea as such cannot be protected. Patents protect specific inventions, not abstract ideas. However, if the idea has business value and is kept confidential, it may be protected as a trade secret under Law 1/2019.

Does copyright protect software?

Yes, computer programs are protected as literary works under the TRLPI (Art. 96). However, the functionality of software is not protected by copyright (only the specific expression of the code is).

How long does a patent last in Spain?

20 years from the filing date (Art. 58 LP), with no possibility of renewal. Utility models last 10 years.

What happens if someone uses my trademark without authorization?

You can file a cessation action and a damages action before the Commercial Courts. If the infringement is willful and for profit, it can also be prosecuted criminally (Art. 274 CP).

Do I need to register my copyright?

No, copyright arises automatically with the creation of the work. However, registration with the Intellectual Property Registry facilitates proof of ownership and creation date in case of litigation.