Spanish design protection law comes into force

Spain

Act 20/2003 on the Legal Protection of Industrial Designs has come into force. This concludes the reform of the intellectual property legal system carried out since 2001. In that time, the Spanish government has introduced a new Trademarks Act, new procedures for granting national patents, a new Patents Act and incorporation into Spanish law of EU Directive 98/44 on the legal protection of biotechnological inventions.

The new act, which replaces the Statute of Industrial Property of 1929, (i) incorporates EU Directive 98/71 on the legal protection of drawings and models into Spanish law, and (ii) adapts the legal protection of designs to meet current needs. Its main provisions are as follows:

  • It gives a single definition for both models and industrial drawings without distinction: "the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product itself or its ornamentation".

  • To be protectable, a design has to be new and have individual character. Designs whose characteristics are solely dictated by their technical function will not be protected.

  • Registration confers on the owner the exclusive right to use the design, or to prevent others from using it without consent.

  • Registration is granted for a period of five years from the date of application and is renewable for successive periods of five years to a maximum of 25 years.

  • It provides a 12-month grace period during which the designer, its successors in title or third parties may divulge the design without affecting the owner's right to register it.

  • It allows multiple registrations at decreasing rates. Applicants may register up to 50 designs with a single application if the designs apply to products of the same type in the Locarno Classification.

  • Opposition to registration is only possible after registration has been granted. This will reduce the registration processing time by 30% while respecting the rights of third parties to oppose a new design.

  • It allows the postponement of the publication of a design up to a maximum of 30 months after the application date, thus enabling businesses to launch the product on to the market and publish their registration on the same day while securing early protection.

The act does not specifically deal with the legal protection of unregistered designs, which is covered by the Council Regulation on Community Designs. Under that regulation, unregistered designs are protected for a period of three years from the date the design was first made available to the public within the European Union.

Finally, it should be noted that most of Title IV, the whole of Chapter III of Title VII and Annex 5 will not come into force until July 8 2004.

Daniel Vidal, Martí & Associats Abogados y Economistas, Barcelona

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