We often recognize and choose a product by its brand logo, packaging, container, casing, the way functional and dVery often, we recognise and choose a product because of its trademark logo, its wrapping, its packaging, its casing, the way in which utilitarian and decorative elements are arranged or other external details. All of these are industrial designs that require legal protection as they form part of the assets of a company or its creator. In this sense, the register of industrial designs in Spain is a fundamental process for protecting the external appearance of products.
The design of a product submits an aesthetic value that allows it to stand out in the market. As we said, it is often the key factor in the consumer’s purchase decision.
By registering a design with the Spanish Patent and Trademark Office (OEPM), the owner acquires exclusive rights that allow them to prevent unauthorised use by third parties, ensuring a competitive advantage in the market.
Why should you register your industrial design?
Registering industrial designs has multiple strategic benefits for manufacturers and designers:
- When a holder registers a design, they acquire exclusive rights to prevent third parties from using it without their consent. In this way, they avoid both unauthorised reproduction or imitation by competitors and confusion among consumers.
- A well-protected industrial design can make the product more attractive to customers, which in turn can increase sales. Also, by preventing other companies from copying or imitating the design, the right holder strengthens his position in the market, allowing him to capitalise exclusively on the aesthetics of his product and maintain a competitive advantage.
- The commercial value of a registered design can grow exponentially, especially if the product is successful. As the design becomes popular, its prestige and recognition in the market increase.
- Beyond legal protection, the registration of industrial designs allows companies to explore new business opportunities. For example, the rights to a design can be licensed to third parties, allowing additional income to be generated. Licensing is a common strategy for extending the reach of a design into markets where the company does not have a direct presence.
- On the other hand, the registered industrial design is also a barrier against unfair competition. By protecting the visual elements of a product, it is guaranteed that other companies will not be able to appropriate the creative work or take advantage of the innovative efforts of the original company. This favours an environment where each company strives to create unique and attractive products, which in the end benefits the consumer, as they will have access to a greater variety of quality products.
Industrial design or utility model?
By the way, it is important to understand that registering an industrial design does not protect the technical or functional characteristics of products. Although the design may be related to functionality in some cases, it only protects the external appearance, not the mechanism that makes the product work. If the technical characteristics of an object are what you want to protect, the correct route would be to apply for a patent or register a utility model. Both options cover technical inventions.
Let’s say you design a drill: the industrial design will only protect the casing, the shape of the handle or other ornamental details. Not the mechanism for adjusting the drill bit or the speed options, as these relate to the technical functions. In this case, the functional aspect would be protected under the utility model, while the external design would be protected through the industrial design register.
In this regard, we invite you to read our post Patent and utility model: differences between the two titles.
Products that can be protected by registering industrial designs
Specifically, the concept of industrial design covers a wide range of products, both industrial and handcrafted. Three-dimensional products, such as furniture, shoes or packaging, are clear examples of protectable designs.
Two-dimensional elements such as decorations, logos, typefaces and graphics can also be included in this category. This diversity of protectable products is a reflection of the flexibility of industrial design as an intellectual property tool.
Among the most common products that can benefit from protection by industrial design are jewellery, household appliances, electronic devices, packaging, and even architectural designs or web pages. Let’s go a little further: if a container – such as the Anís del Mono bottle – is extremely original, it could be registered as an industrial design and as a three-dimensional trademark, reinforcing its protection.
Who can apply to register an industrial design in Spain?
The registration of industrial designs in Spain is available to individuals and legal entities, both Spanish and foreign, provided that they meet certain requirements:
- For national applicants, the process is straightforward. As for foreigners, those natural or legal persons who habitually reside in Spain can apply to register. They must also be the owners of a commercial or industrial establishment in the country, or benefit from the Paris Convention for the Protection of Industrial Property. Or they must be nationals of a member country of the World Trade Organisation (WTO).
- Furthermore, foreign individuals who do not reside in Spain or are not covered by the conditions described may also apply to register, provided that in their respective countries of origin reciprocal protection is offered to Spaniards. This principle of reciprocity guarantees that both nationals and foreigners have access to the same opportunities to protect their designs.
- Furthermore, all applicants, both national and foreign, can manage the process directly or through an intellectual property agent or authorised representative. However, applicants residing in a country outside the European Union (EU) are required to appoint an agent to represent them. By the way, at ISERN we can help you with these procedures.
- In the case of applicants residing in an EU country who manage the process without a representative, they must ensure that they provide a postal address in Spain or provide an electronic means through which they can receive notifications from the OEPM.
Procedures for registering industrial designs in Spain
Before starting the registration process, it is essential to verify that the design has not been previously registered. You can do this by consulting the INVENES Database of industrial designs, managed by the SPTO. If it is confirmed that the design is unique and not registered, the registration application can be started, which involves a series of procedures that we describe below:
Submission of the application to the SPTO
The first step is to file the application to register with the OEPM. On the form, you must provide your details as the applicant: name, address, etc., and attach proof of payment of the corresponding fees. If you are acting through a representative, you must also include a power of attorney.
Likewise, you can take advantage of the right of priority if you have previously filed an application in another country. You must claim this right at the time of filing with the OEPM. This prerogative allows the design to have priority over applications filed later.
Another option you may consider is to defer publication of the design. This deferral can be useful in business strategies to avoid premature exposure of the design to the public.
However, if you file multiple applications, it is essential that all the designs belong to the same class of Locarno, which is the international classification of industrial designs.
Correction of defects
Once the application has been filed, the SPTO will review the file. If errors or defects are detected in the application, the organisation will notify you so that you can correct them within the stipulated period. This is a critical phase, as uncorrected defects can prevent the design from progressing through the register process.
Publication in the Official Intellectual Property Gazette
Subsequently, if the application is accepted and no defects are filed, or they have been corrected in time, it will be published in the Official Intellectual Property Gazette. From this publication, a period of two months begins during which third parties may file oppositions if they consider that the design violates pre-existing rights, such as a registered trademark.
Transfer of oppositions to the owner
Precisely in the event that oppositions are filed, the SPTO will notify you, as the owner of the design, so that you can respond to them. You will have a period of two months to file your arguments or, if necessary, modify the registered design. In some cases, the opposition may be based on the use of a previously registered trademark. If this is the case, as the owner of the contested design, you can request that the opponent prove the actual use of that trademark.
Resolution: cancellation or maintenance of the design
After receiving the oppositions and the responses from the owner, the SPTO will carry out a substantive examination to determine if the design can be registered. The final decision, whether favourable or unfavourable, will be published again in the Official Intellectual Property Gazette. If the design is cancelled, you have the option of lodging an appeal within one month of the publication of the decision.
At ISERN Patents and Trademarks we take care of registering industrial designs
At ISERN Patents and Trademarks, we have a century of experience in registering and protecting these sensitive assets for companies and individuals. This allows us to offer you the legal advice and support you need to register your industrial design effectively. Based on this, ISERN will help you to manage licences or the transfer of intellectual property rights, always ensuring the best conditions for you. If necessary, we can also provide legal defence to protect your rights.
Don’t hesitate to contact us and visit us at any of our offices located in 12 of Spain’s main cities. Ensure a solid register of industrial designs with us.