Industrial Design Registration in Spain
Industrial Design Registration in Spain. Spanish design registrations are ruled by the Spanish Patent and Trademark Office (OEPM) based in Madrid, Spain. The whole examination process can take just one month until it is registered and published. Spanish designs are commonly registered on a first-to-file basis. The application fees shall be paid at the time the design is filed. Registration is granted for an initial period of five years from the filing date, renewable for subsequent periods of five years up to a maximum of twenty five years. Once the design has been granted, the owner is entitled to use it and to obtain relief should any third party use it without the holder’s consent, after its grant has been published.
Why Spain? Considering it is among the first European and global economies, its geostrategic location, population and fiscal incentives, registering your designs for the products you trade in the Spanish market can be relevant for your ROI, no matter what the size of your company is or industrial sector in which you are doing business. See more
National Office. National design registrations in Spain are ruled by the Spanish Patent and Trademark Office (OEPM) based in Madrid, Spain.
Main points of Spanish Designs.
What Can Be Registered? The external visual appearance, ornamental or aesthetic aspect of any product or industrial or handicraft item including packaging, graphic symbols and typefaces can be protected. These can consist of any three-dimensional product or two-dimensional patterns, lines or combination of colours, as long as it is new and has individual character. Complex products or parts of products that can be taken apart and reassembled can also be protected as a Spanish design.
Multiple Design Applications. A Spanish design allows multiple designs or variations in a single application (up to 50) taking advantage of a bulk discount, provided that all belong to the same Locarno class although they do not need to be classified in the same subclass, except ornamentations which have a precise class, and their nature is clearly specified. The manner in which a product is specified or its Locarno class would not affect nor determine the scope of protection of the registered Spanish design.
Grace Period. The grace period will allow applying for registration of an industrial design after it has been disclosed or commercialized, without destroying the novelty of the industrial design, provided it will be applied for in Spain within a period of one year from the date of that first disclosure or use,before the Spanish Patent and Trade Mark Office (OEPM).
Registered and Unregistered Designs. Both registered and unregistered designs would confer protection to its owner against any illegal action, such as for putting the product on the market, offering, manufacturing, importing or exporting the product, without the consent of its proprietor. However, there are some important particulars and differences to consider before you take the choice: 1. Registered Designs. The validity of a registered designin Spain or in the European Union is of five years from the date of filing and can be renewed in blocks of five years up to a maximum of 25 years, providing a quite long term protection. Once your design is registered you can then use the ® symbol on your product or packaging, coming to confirm it is registered and act as a warning to any unfair competitors seeking to commercialize your design. The enforceable protection not only confers the right to prevent others from marketing identical copies of a product marketed but also against confusing imitations of the product or object covered by the design. 2. Unregistered Designs. An unregistered design would be protected for a maximum term of three years in Spain and in the EU from the date on which the design was first disclosed within any country of the European Union. When you are not sure if it will be profitable, you may be able to commercialize it directly and if it is likely successful, then you may apply for registration before one year from that first disclosure, the so-called “grace period”. However, if it has not been registered before said one-year grace period, the unregistered design protection will expire after three years, without being possible to extend this right. Therefore, it is preferable to register your design, because without registration it can be very difficult to prove your rights originating from that first disclosure in the marketplace and to prevent others from using the same or a similar design of your product. Furthermore, it will be significantly easier to bring legal action against third party’s infringements or unfair competition acts based on your registered design. The enforceable protection for an unregistered design is limited as it will only confer the right to prevent others from marketing identical copies of that product. Nevertheless, the protection period of three years conferred to unregistered designs (without the need for registration) is very helpful for those industrial and commercial sectors that are engaged in producing large numbers of designs for products that have a short life in the market, in particular for the fashion industry, being a practical, adequate and a reasonable term of protection.
Who May Apply? All natural persons and legal entities, regardless of their citizenship or residence.
Designer. You may indicate the name of the designer(s) or creator(s) in the Spanish design application, however it is not mandatory and you may waive the right to be cited.
Classification of Designs. A design or multiple designs in one application must be correctly classified indicating the nature and purpose of the product according to the Locarno Classification.
Validity. The Spanish design is granted for an initial period of five years which can be renewed for further periods of five years on payment of renewal feesup to a maximum of twenty five years. All rights in a Spanish design date back to the filing date or when it was first disclosed and not when the design is granted.
Priority Claim. Spain is member of both the World Trade Organization and of the Paris Convention ensuring Spanish nationals certain protection of their rights in all other signatory countries; The applicant of a Spanish design application may claim priority within a non-extendable six-month period of filing as support for an international filing of the design registration abroad. Also, any person or entity who has filed a design application in one of the signatory countries of the Paris Convention has a right to claim that filing date within the non-extendable priority period of six months for design registrationin Spain.
Deferment of Publication. The publication of a design may be delayed for a maximum period of 30 months at the applicant’s request.
Courts for Design Infringement. Legal actions involving design infringement or unfair competition in Spain are to be taken before the competent Commercial Court located in the city of the Higher Court of Justice within the autonomous community where the defendant is domiciled, or alternatively where the infringement has taken place or had effect. When the claimant is invoking a registered community design RCD, this is to be held by the Commercial Court of Alicante, Spain. Appeals lodged against decisions made by the Commercial Court of Alicante are revised by the Provincial Court of Appeal of Alicante.
How Abecsa Can Help You. The value-added services we provide for Spanish design registrations can be summarized as follows:
Plan Your IP Strategy. We can help you plan your IP protection strategy in the related territories, according to your needs and budget, but always with the aim to get the widest protection as possible by also avoiding common filing mistakes that could suppose a threat to the validity of your IP rights in the future.
Free Search. We will conduct a free basic search by owner or designer in all Registers with effect in Spain (EUIPO, WIPO, OEPM) to help you finding if your product is not registered by a certain owner or cited designer and it is likely available before we apply for a Spanish design. If you wish, we could also carry out an accurate and comprehensive search (currently, no accurate search retrieving designs based on similarity can be done inexpensively) along with our written search report and a risk assessment, by using tools and databases that are not publicly available. This is a highly skilled work that should be conducted by a specialized IP professional.
Filing. We would file the Spanish design application on your behalf, foreseeing the relevant aspects and the correct manner it should be applied for, depending on the kind of product to be registered, thetype and number of views; up to 7, best representing each design or variation (plain, in elevation, cross-sectional, in perspective, exploded), colours to be used if pertinent, etc. We have fixed fees for filings as well as for design prosecution in this national Office so you can foresee the estimated costs for your design protection in Spain.
Prosecution and Management. We will monitor the process of your design until its registration is finally published and duly inform you of every official communication we receive from this Office, along with our preliminary advice on the step to take, if needed, as well as by sending you the publications and informing you of all deadlines to have in mind, including reminders and next renewal due notices, well before the given time limit, in order to avoid extra charges or any resulting loss of rights.
Defense. – Office Actions. If your design application is objected by the Spanish Office (OEPM), based on the formalities check, a design application must go through, or if it is opposed by a third party after grant (post-grant opposition), we can study the cited grounds for refusal or the relevance and differences of the earlier right on which the opposition has been based and file the Office action response in defense of your rights within the given time limit, by designing the adequate strategy so we likely ensure success and obtain the desired registration of your design, and hence a solid enforceable registered design protection. – Litigation. In enforcement, we can represent and assist either the claimant or the defendant in design rights infringement proceedings both with the Spanish and European Courts.
Other Actions. We can handle any associated matter on Spanish designs such us the recordal of licenses, change of names and ownership transfers.
Representation Before the Office. All persons or legal entities outside of the EU and those from the EU without a domicile in Spain, or EU members without a Spanish domicile for notifications are required to be represented by a local representative. Non-EU members always need to be represented by a registered Official IP Agent (not only a representative). We would be glad to be your agent! You can enquire us about the representation of our attorney and included associated services.
Spanish DesignRegistration Procedure and Time Taken. The entire process can take less than one month.
- Filing of the Design Application in Spain. The application must be filed including the identification of the proprietor and of the designer, a representation ofup to 7 views for each design, the Locarno class along with a definition of the product covered by the design and the application fees for each design paid. The filing date of a Spanish design will confer a temporary right for this design while it is being examined and follows the mandatory proceedings.
- Formalities Check. Once the design application in Spain is filed, its formalities will be examined to make sure the classification and indication of the product is correct, the representation of the views are clear enough, the fees cover all the designs applied for or if the applicant is required to be represented by an attorney. If an objection or deficiency is found, the design will be suspended by the examiner and the Spanish Patent and Trade Mark Office (OEPM) will notify the applicant of the absence of formal requirements or deficiencies, having one month for remedying the aroused objection or for filing his own observations in reply. Novelty Check: The Spanish Office will not check earlier design rights nor the novelty or individual character of your design application during the proceedings. This means that only third parties can challenge your design registration by filing an opposition after the design is registered, never during the examination procedure.
- Registration and Publication. If no official objections arise or, if there were but by the decision of the OEPM these were successfully defended or found remedied and overcome, the design will proceed to registration in Spain for an initial period of five years from its application date. Registration shall be published in the Official IP Bulletin and the OEPM will issue the certificate of registration. This decision may be challenged within two months from the publication of registration.
- Post-grant Opposition Period. The opposition needs to be formally filed within two months after the publication of registration. The Spanish Office would give a single opportunity to exchange observations between the opponent (opposition) and applicant (counterstatement) who will be given a two-month period from the publication of the provisional refusal to defend the design by filing his observations in reply or modifying the design if he considers appropriate. Both the opposition and the defense of the challenged design require to be properly argued. The result of a final decision can turn into a partial or entire rejection of the Spanish design or the registration may be upheld.
- Refusal. The design can be denied entirely or in part if it was successfully opposed or objected by the OEPM. This decision can be appealed within one month from the publication of the rejection.
International Designs Protecting Spain. International designs that elect Spain (pursuant tothe Hague Agreement) will have the same legal effect as a Spanish design and as if it was filed directly in Spain, which must follow a comparable process and comply with the same requirements.
Information and Requirements to File a Spanish Design Application:
- The full name and address of the applicant(s)-holder(s).
- The nationality or country of establishment of the applicant(s)-holder(s).
- VAT Number (NIF/NIE), only if the applicant is Spanish or established in a country of the EU.
- Name and nationality of the designer(s).
- Full details of the design and if appropriate, and a good representation of all the needed views of the design in JPG or similar.
- Short description of the product(s) or design(s) to be registered.
- The details of the application on which Convention Priority is to be claimed, if appropriate, within 6 months from first application date, along with the Certificate of Priority.
- First disclosure of the product(s) or design(s) in Spain or in a specific country of the European Union and place, if any.
- Your instructions on how we should proceed and approval of the likely costs.
- Your immediate payment by bank transfer from invoice issue.
- A POA signed by the applicant (no legalization) is required by this Office.
Please do contact us via our contact form if you need advice or our fees on any design issues such as:
- Registering your design in Spain or an International Design Registration designating our country.
- Seeking our Attorney’s representation and appointment in your design registration.
- Opposing or declaring invalid a Spanish design registration applied for by others.
- Defending your challenged Spanish design or International Design Registration designating Spain, from an opposition, official objection or an appeal.
- Taking legal action against infringement of your registered or unregistered design right in Spain or in Europe being used by another person or company.
- Renewing your Spanish design for an additional five-year-period.
- Licensing the use of your designs or selling them ensuring the recordal of assignment of the designs to others.
Confidentiality. If this is the first filing of your design, it is convenient that you do not disclose the aesthetic characteristics until you have applied for design protection, this may mean that, in certain cases, you might not be able to protect it, or your design may be declared invalid by anyone who proves this preceding disclosure (lack of novelty). However, you can safely discuss it with us, because as registered patent attorneys and lawyers, any information you disclose to us is legally privileged and confidential, using it strictly for the purpose or needed service we are instructed to handle in your name.