– The Industrial Design Legal Protection Act (Law No. 20/2003 of July 7, 2003).
– Implementing Regulations were promulgated by Royal Decree 1937 of September 27, 2004.
– “Estatuto sobre Propiedad Industrial” (Industrial Property Act), approved by Royal Decree-Law of July 26, 1929, modified by Royal Decree-Law of March 15, 1930, revised text published by Royal Order of April 30, 1930; with respect to models and designs this legal text was modified by Decree of December 26, 1947, in force for industrial models and designs filed before July 9, 2003.
– Order of April 20, 1967 on application of the International Classification for Industrial Designs.
– The Industrial Property Registry, now called the Spanish Patent and Trademark Office, is regulated by the Law of May 2, 1975, supplemented by the Regulations approved by Royal Decree 1270 of July 24, 1997.
– Royal Decree 441 of March 11, 1994.
– Article 273 of the Criminal Code of November 23, 1995.
– Act 19/2006 of June 2006, expanding measures for enforcement of intellectual and industrial property rights and establishing rules of procedure to enable application of several Community regulations.
– Royal Decree 1431/2008 of August 29, 2008 amending certain regulatory provisions relating to industrial property.
– Law 24/2015 of July 24, 2015 on Patents. Final provision four: Amendment to Law 20/2003 of July 7, 2003 on the Industrial Design Legal Protection.
– Decision of the Director of the Spanish Patent and Trademark Office, of February 6, 2019, approving the Guidelines for Examination of applications for patents, utility models, topographies of semiconductor products and industrial designs of the Spanish Patent and Trademark Office.
Membership in International Conventions
– Convention Establishing the World Intellectual Property Organization (WIPO), since April 26, 1970.
– Paris Convention for the Protection of Industrial Property, Stockholm Act of July 14, 1967, in force since 1974.
– Locarno Agreement Establishing an International Classification for Industrial Designs, in force since November 17, 1973.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since September 25, 1978.
– WTO’s TRIPS Agreement, in force since January 1, 1996.
– Hague Agreement Concerning the International Registration of Industrial Designs, Geneva Act, since December 23, 2003.
Applicant (who may be): the designer or his assignee.
Foreigners: application to register a design may be filed by foreign natural or legal persons who have their usual residence or who have an effective and real industrial or commercial establishment in the territory of Spain or who are entitled to the benefits of the Paris Convention for the Protection of Industrial Property, as well as by nationals of member States of the World Trade Organization and by foreign natural or legal persons not covered by the preceding cases, provided that the laws of the State of which they are nationals in turn allow natural or legal persons of Spanish nationality to register designs under that State’s legislation.
Residents of a member State of the European Union: may act for themselves, but if they do not have an address or business office in the territory of Spain, they must designate a mailing address in Spain for notification purposes, or, alternatively, indicate that all notifications be sent to them by e-mail or another means of communication available at the Spanish Patent and Trademark Office.
Kinds of designs: design means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation. The lexical distinction between industrial models and industrial designs, the former being three-dimensional and the latter being two-dimensional, has ceased to exist.
Not registrable: the following grounds for refusal or revocation of registration are listed: where the content of the design as filed does not satisfy the definition contained in the Act; lack of novelty and/or individual character; where the design comprises features of appearance which are solely dictated by a product’s technical function; where the design is contrary to public policy or to accepted principles of morality; where the applicant is not entitled to register the design and a final judgment to that effect has been issued; where the design is in conflict with a prior design protected in Spain under an application or registration having an earlier filing or priority date which has been made available to the public after the filing or priority date of the subsequent design: where the design constitutes improper use of any of the items listed in Article 6ter of the Paris Convention or of badges, emblems, and escutcheons other than those covered by the said Article 6ter and which are of particular public interest, such as the badges, emblems, and escutcheons of Spain, its Autonomous Communities, municipalities, provinces, or other local entities, unless proper consent has been obtained; where the design includes a trademark or other distinctive sign previously protected in Spain whose proprietor has the right to prohibit use of the sign in the registered design; where the design constitutes unauthorized use of a work protected by copyright in Spain.
Novelty: the novelty of the design will be affected not only by publication, exhibition, sale, or disclosure of the design carried out in the European Union, but also by knowledge of the facts that may be gained within circles operating in the relevant sector of trade in the normal course of business. Nevertheless, in assessing novelty, disclosures made during the twelve months preceding the date of filing of the application or, if priority is claimed, the date of priority, will not be taken into consideration where such disclosure is effected by the author, an assignee, or a third party as a consequence of information released or action taken by the author or assignee or where disclosure is the result of fraudulent acts.
Priorities: as for “trademarks“.
Exceptions to protection: see heading “Not registrable” above.
Series applications: the application may comprise multiple designs up to a maximum of fifty, provided that they refer to products all belonging to the same class of the International Classification for Industrial Designs established under the Locarno Agreement; the constraint of having to belong to the same class does not apply in the case of two-dimensional ornamentation.
Territory covered: the entire Spanish peninsula, Balearic Islands, Canary Islands and the territories of Ceuta and Melilla.
Filing requirements for an application (to be sent to resident agent):
1. An application requesting registration of the design;
2. Identification of the applicant (full name, nationality, and address);
3. A graphic representation of the design suitable for reproduction;
4. An indication of the products to which the design is to be applied;
5. Where appropriate, identification of the agent or representative; and power of attorney;
Optionally, the application may also contain:
1. A description explaining the representation of the design;
2. A request for deferment;
3. Classification of the products to which the design is to be applied;
4. A priority claim, supported by an unlegalized certified copy of the priority document, which may be filed after the filing date of the application (exhibition priority may also be claimed, supported by a certificate which may also be filed after the filing date of the application), however, it shall not be necessary to submit a copy of the earlier application or a translation where the priority claim is not considered relevant for determining the validity of the registered design, or where the earlier application or translation thereof is already in the possession of the Spanish Patent and Trademark Office or is available in a digital library or database;
5. Citation of the designer or of the team of designers or a statement under the applicant’s responsibility that the designer or the team of designers has waived the right to be cited.
Filing without power of attorney: possible, but application is annulled if power is not filed within twenty days from service of notice by the Spanish Patent and Trademark Office.
Filing without some requirements: to obtain a filing date, the following minimum requirements need to be submitted: a statement explicitly or implicitly making application to register the design (for instance, the application form), details identifying the applicant, and a graphic representation suitable for reproduction clearly showing the characteristics of the design applied for; if priority is claimed, the priority document and the country, number and date of the foreign application. The remaining requirements may be satisfied at a later date.
Electronic filing: possible.
Electronic signatures: are accepted.
Amendments/corrections of application: formal or material errors committed while preparing the application may be corrected. If the design is contrary to public order or accepted principles of morality, the applicant may remedy the deficiency by altering the design, provided no substantial change to the design’s identity is made.
Examination: as to admissibility and to form, verifying whether the corresponding fee has been paid, whether the applicant is entitled to apply to register a design, and whether there is compliance with formal requirements, with accordal of a filing date. A subsequent official examination considers only whether the subject matter of the application satisfies the legal definition of a design or is contrary to public order or accepted principles of morality.
Application kept secret: on filing application the applicant may request a deferment of publication of the design for thirty months from the filing date or, where priority is claimed, from the priority date.
Registration: registration of the design takes place after the official examination if there are no irregularities or deficiencies or, if there are, after they have been remedied; the certificate of registration is issued and the notice of grant is published in conjunction with the registered design.
Publication: see headings “Registration” and “Application kept secret” above.
Provisional protection: even before publication of the notice of grant, an application for a registered design confers on the applicant provisional protection against any party who has been notified of the filing and content of the application, in the form of the right to claim reasonable compensation for use of the design where such use would be prohibited after publication of grant.
Copyright: the protection obtained is independent from, compatible with, and complementary to that obtainable under copyright law.
Delivery of document: as for “patents“.
Beginning of protection: from filing date.
Duration – extension: five years, renewable for one or more successive five-year periods to a maximum of twenty-five years.
Renewals – latest term for payment – extension: the request for renewal every five years is to be submitted together with the voucher attesting to payment of the fee within the six months preceding the expiry date. Grace period: six months, with fines of 25% within the first three months, and of 50% within the remaining three months.
Marking of registered goods: (optional) usual text is “Modelo registrado No. … “, “Dibujo registrado No. … ” or “Diseño registrado No. …”.
Opposition: opposition against the grant of the design registration may be brought by any third party within the two months following publication of the registered design, on grounds that the design fails to fulfill any of the requirements for protection. Opposition grounds may include grounds for refusal not examined ex officio by the Spanish Patent and Trademark Office. A power of attorney must be filed when a Spanish patent agent is acting for the opponent.
Working – reworking: no requirement.
Licenses – assignments: design applications and registrations may both be licensed for all or for some of the features of the exclusive right and for all or for some of their possible applications in all or in part of the territory of Spain; the licenses may be exclusive or non-exclusive. Recordal of changes in title to a registered design is effected on request. Changes in title may result from contractual assignment, merger, operation of law, administrative decision, or court judgment.
Modification of Protection after Registration
Right of prior user: as for “patents“.
Opposition to registered designs: see heading “Opposition” in section 5 above. A design may subsequently be revoked by means of: (1) an administrative appeal before the Spanish Patent and Trademark Office itself, followed, where appropriate, by a contentious-administrative appeal in the courts, these appeals being available only to parties who had already intervened in opposition proceedings or in respect of aspects subject to official examination by the Spanish Patent and Trademark Office; (2) nullity actions brought before the ordinary courts.
Annulment of registration: registered designs may be invalidated by final court judgment holding them to be in breach of any of the grounds for refusal of registration (see heading “Not registrable” in section 3 above). Invalidity actions may be brought during the legal lifetime of the registration or within five years of lapse or expiry.
Compulsory licenses: non-existent for designs.
Expropriation: as for patents and trademarks.
Forfeiture: registered designs lapse when: (1) they have not been renewed at the end of any five-year period; (2) they have been surrendered by the owner; (3) the owner no longer meets the conditions for entitlement stipulated in the Act.
Restoration: the legal owner of a registered design who, despite having taken all due care required by the circumstances, has been unable to observe a time limit in any of the proceedings provided for in the Act shall, upon application, have his rights restored if non-observance has the direct consequence of causing the loss of any right. Application shall only be admissible within one year of expiry of the unobserved time limit, not including time limits for claiming priority, opposition to designs, or appealing acts establishing rights.
Infringement: pursuant to the Revised Criminal Code (Organic Act No. 5/2010), the criminal offense of infringement is defined as manufacturing, importing, possessing, using, offering in trade, or introducing into trade the products protected by an industrial or artistic design for industrial or commercial purposes without the consent of the holder.
Penalties: as for “patents“. For issues relating to the criminal liability of legal persons, civil liability, and interlocutory relief, as for “patents”.