Several general principles are important for effective management of intellectual property rights in Spain. First, it is important to have an overall strategy to protect IPR. Second, IPR is protected differently in Spain than in the U.S. Third, rights must be registered and enforced in Spain, under local laws.Companies may wish to seek advice from local attorneys or IP consultants. The U.S. Commercial Service can provide a list of local lawyers upon request.
It is vital that companies understand that intellectual property is primarily a private right and that the U.S. government generally 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. While the U.S. Government is willing to assist, there is little it can do if the rights holders have not taken these fundamental steps necessary to securing and enforcing their IPR in a timely fashion. Moreover, in many countries, rights holders who delay enforcing their rights on a mistaken belief that the USG can provide a political resolution to a legal problem may find that their rights have been eroded or abrogated due to doctrines such as statutes of limitations, latches, estoppels, or unreasonable delay in prosecuting a law suit. In no instance should USG advice be seen as a substitute for the obligation of a rights holder to promptly pursue its case.
It is always advisable to conduct due diligence on partners. Negotiate from the position of your partner and give your partner clear incentives to honor the contract. A good partner is an important ally in protecting IP rights. 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 Spain laws to create a solid contract that includes non-competitive clauses, and confidentiality/nondisclosure provisions.
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 IPR and stop counterfeiting. There are a number of these organizations, both Spain or U.S.-based. These include:
- The U.S. Chamber and the American Chamber of Commerce in Spain
- 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)
IPR Climate in Spain
Spanish IPR legislation is consistent with EU directives and main international treaties. Basic legislation is included in Law 19/2006 of June 5 and Law 23/2006 of July 7 that modifies the refunded text of the Legislative Royal Decree 1/1996 of April 12. This legislation specifies that intellectual property is subject to protection, and the owner may seek protection either under civil or criminal codes.
Spanish and European legislation on intellectual property protection (IPR) is very strict on the ownership and circulation of personal data. Law 15/1999 on data protection applies to personal data, but not to data concerning legal entities or corporations. It is important for U.S. firms to be aware of the EU protections on personal data before engaging in any type of transfer or purchase of personal data on EU citizens or residents.
The EU’s legislative framework for copyright protection consists of a series of directives covering areas such as the legal protection of computer programs, the duration of protection of authors’ rights and neighboring rights, and the legal protection of databases. Almost all member states have fully implemented the rules into national law; and the European Commission is now focusing on ensuring that the framework is enforced accurately and consistently across the EU.
The On-Line Copyright Directive (2001/29/EC) addresses the problem of protecting rights holders in the online environment while protecting the interests of users, ISPs and hardware manufacturers. It guarantees authors’ exclusive reproduction rights with a single mandatory exception for technical copies (to allow caching), and an exhaustive list of other exceptions that individual member states can select and include in national legislation. This list is meant to reflect different cultural and legal traditions, and includes private copying "on condition right holders receive fair compensation."
EU countries have a "first to file" approach to patent applications, as compared to the "first to invent" system followed in the United States. This makes early filing a top priority for innovative companies. Unfortunately it is not yet possible to file for a single EU-wide patent that would be administered and enforced like the Community Trademark (CTM). For the moment, the most effective way for a company to secure a patent across a range of EU national markets is to use the services of the European Patent Office (EPO) in Munich. It offers a one-stop-shop that enables rights holders to get a bundle of national patents using a single application. However, national patents must be validated, maintained and litigated separately in each member state.
The EU-wide Community Trademark (CTM) can be obtained via a single-language application to the Office of Harmonization in the Internal Market (OHIM) in Alicante, Spain. It lasts 10 years and is renewable indefinitely. For companies looking to protect trademarks in three or more EU countries, the CTM is a more cost-effective option than registering separate national trademarks. On October 1, 2004, the European Commission acceded to the World Intellectual Property Organization (WIPO) Madrid Protocol. The accession of the European Commission to the Madrid Protocol establishes a link between the Madrid Protocol system, administered by WIPO, and the Community Trademark system, administered by OHIM. As of October 1, 2004, Community Trademark applicants and holders are allowed to apply for international protection of their trademarks through the filing of an international application under the Madrid Protocol. Equally, holders of international registrations under the Madrid Protocol will be entitled to apply for protection of their trademarks under the Community Trademark system.
The EU adopted a regulation introducing a single system, known as Community design, for protection of designs in December 2001. The regulation provides for two types of design protection, directly applicable in each EU member state: the registered Community design and the unregistered EU design. Under the registered Community design system, holders of eligible designs can use an inexpensive procedure to register them with the EU’s Office for Harmonization in the Internal Market (OHIM), in Alicante, Spain. Exclusive rights to use the designs anywhere in the EU will then be granted for up to 25 years. Unregistered Community designs that meet the regulation’s requirements are automatically protected for three years from the date of disclosure of the design to the public.
Within the EU, rights conferred on trademark holders are subject to the principle of "exhaustion." Exhaustion means that once trademark holders have placed their product on the market in one member state, they may not prevent the resale of that product in another EU country. This has led to an increase in the practice of “parallel importing," whereby goods bought in one member state are sold in another by third parties unaffiliated to the manufacturer. Parallel trade is particularly problematic for the research-based pharmaceutical industry, where drug prices vary from country to country due to national price regulation. Community-wide exhaustion is spelled out in the Directive on Harmonizing Trademark Laws. In a paper published in 2003, the European Commission indicated that it had no plans to propose changes to existing legal provisions.