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In relation to industrial property, what is meant by counterfeiting and piracy?

In general terms, counterfeiting refers to any act that breaches industrial property rights, and piracy covers all acts that breach intellectual property rights. These illegal activities can include the manufacturing, commercialisation, supply and/or sale, import and export of counterfeit or pirated products or services.

Specifically, community customs law defines the counterfeit market as follows: goods, including their packaging, trademark symbols (logo, labels, leaflet, instruction manual, guarantee document) and packaging materials, including those presented separately, bearing an unauthorised trademark identical to the trademark validly registered for the same type of goods, or which cannot be distinguished in its essential aspects from such a trademark, and which thereby infringe the trademark-holder’s rights. Counterfeit goods are defined as follows: goods which are or contain copies made without the consent of the holder of a copyright or related right or design right over a drawing or model.

How can I combat the distribution of counterfeit products via electronic commerce?

If you have suspicions of the distribution through computer networks of “false” products or services, you can contact the specialised units of the Police and the Civil Guard, which you can find in the section entitled ARE YOU SUFFERING INFRINGEMENT OF YOUR TRADEMARK / DESIGN / PATENT / UTILITY MODEL? of this web page.

To whom can I report possible cases of counterfeiting of products or services protected by industrial property rights?

For reporting offences related to the misappropriation of industrial property rights, remember you can call the National Police (091) or the Municipal Police (092). Similarly, to report this type of crime you can also go to the nearest Civil Guard offices or call them on 062.

You can report the offence either in writing or verbally as a statement, which must include the identity of the person reporting the offence as well as any available details of the case and the circumstances. This information is extremely helpful for focusing and speeding up action taken by the law enforcement and security forces.

You can also lodge a complaint by calling 902 102 112. You will subsequently have to go in person to sign. Giving all the data of the case and providing all the evidence you can gather. You can find further information at www.policia.es

Can I sell in Spain an object or product protected by an industrial property right registered in another country?

 There are two circumstances to look at here:

  • Products protected by a European Economic Area (EEA) member state, which are sold in that country or another country within the judicial sphere of this territory. Through the application of the exhaustion of rights doctrine accepted under European Union Law, you would be able to sell a product in Spain which is protected by an industrial property right and acquired legitimately in the other EEA state through an industrial property right, provided it was sold for the first time in the EEA by the holder of the right or with their consent.

Notwithstanding the above, our Trademark Act (Law 17/2001, of 7 December) safeguards the right of the holder to oppose the subsequent commercialisation of products if there are legitimate reasons to do so, particularly if the products have been modified or altered following their commercialisation.

It should be noted that although the principle of free circulation of goods and exhaustion of industrial property rights exist in the European Community, there may be restrictions on the commercialisation of certain products brought about through the application of other legal regulations outside the industrial property sphere.

  • Products imported from non-EEA countries. It must be borne in mind, first of all, that such a product may be protected by one or more of the forms of industrial property protection: patent, utility model, trade mark or industrial design.

Given that industrial property rights basically give the holder exclusive rights over the manufacturing, supply and sale, import and export and also possession or storage of the protected products for any of the purposes mentioned, which means they have the right to prohibit third parties from practising any of the cited uses without their consent, prior to the commercialisation of a product, you are required to request authorisation from the registered holder of the rights under which the product being imported for subsequent sale in that country are protected.

How do I know if a product is protected by an Industrial Property right?

In order to know whether the product to be marketed is protected by any industrial property right, we inform you that the SPTO has a set of Databases which can be access freely at www.oepm.es:

Trademark and trade name databases

Inventions database

Design databases

File databases

through which users can access both the TRADEMARK LOCATOR, to find out if the product is covered by any trademark rights within the European Union, and the legal status of the files (FILE STATUS) and bibliographical data on Industrial Models, Drawings and Designs and Patents and Utility Models (INVENES) as well as international patents (esp@cenet).

There are also a number of Technological Information Services which, for a fee, provide a variety of reports on all types of industrial property which respond to the different needs for which they are required today. For more information, we advise you contact the Publications Office difusion@oepm.es.

I am planning to sell my product in the European Union. To avoid any problems, should I register the industrial property of the product within the Community?

Although the principle of free circulation of goods exists in the European Economic Area, it is always a good idea, wherever possible, to be the holder of the corresponding industrial property rights at a community level, since, given the regional nature of industrial property rights, in countries where your rights are not recognised you will be unable to prevent third parties from using them.

The European Union Intellectual Property Office, known by its acronym, EUIPO, based in Alicante, is competent for the granting and registration in the European Union of Community trademarks and designs.

Link to their web page EUIPO, with databases where you can search community trademarks and drawings.

To protect your patent or utility model in Europe, go to European Patent.

What is exhaustion of rights?

The exhaustion of rights doctrine has been incorporated into European Union Law, and is gradually being transferred to the legal regime which regulates industrial property in member states.

In Spain this concept is regulated by article 61 of the Patent Act, article 36 of the Trademark Act and article 49 of the Law for the Legal Protection of Industrial Design.

The exhaustion of rights is understood to mean the limit imposed on the holder, who cannot exercise their right against third parties once the product protected by the trademark or the design has become commercially available in the European Economic Area either by said registered holder of the right or with their consent.

Do I have to take action if I become the victim of an industrial property right crime, or is this not necessary as it can be prosecuted ex officio?

  • In the Spanish market: although the crime can be prosecuted ex officio, you are entitled to and it is recommended that you report the crime. Furthermore, the holder's intervention is required to determine whether the products seized are fake or genuine.

For more information on how to report a crime visit the section DEFEND YOURSELF AND REPORT of this web page.

  • At customs borders: without prejudice to the statutory actions of the customs authorities, by virtue of the powers granted to them under prevailing Community regulations, interested parties may also apply for seizure of merchandise which it suspects of infringing industrial property rights. Such applications should be made to the Spanish Subdirectorate General for Customs Management of the Customs and Excise Tax Department. Avenida de Llano Castellano 17. 28071 - Madrid.

You can obtain more information by sending an e-mail to: denunciasvigilanciaaduanera@correo.aeat.es

© Oficina española de Patentes y Marcas, 2019

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