Judicial Administration Structure for IP Disputes: Spain
Information provided by:
The Spanish Patent and Trademark Office O.A.
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| High Court of Justice | Specialized Sections of Provincial Courts1 | |||||
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| Ministry of Culture and Sports of the Autonomous Community (administrative instance) |
Spanish Patent and Trademark Office Appeals Unit (administrative instance) |
Commercial Courts2 | Criminal Courts | |||
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| Administrative Jurisdiction Administrative procedural matters of the Copyrights Registry |
Administrative Jurisdiction Registration procedures: grant, title rejection, objections, license registration and other legal affairs before the OEPM |
Civil Jurisdiction Civil infringement, invalidity, and counterclaim for revocation Decisions from the Copyrights Registry on the validity and invalidity of titles: no requirements of Art. 10 of TRLPI EU trademarks and community designs |
Criminal Jurisdiction Crimes against copyrights and industrial property |
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Industrial property
Pursuant to Article 10 of Royal Decree No. 1270/1997 of July 24, 1997 that governs the Spanish Patent and Trademark Office (OEPM), the Appeals Unit manages the examination, processing and proposal of decisions on appeals lodged against any decision of the organization, in accordance with the applicable legal provisions. The proposed appeal decisions are drafted by each reporting attorney of the Appeals Unit and validated by the Head of the Appeals Unit.
The Director of the OEPM is empowered to rule on appeals. However, that power has been delegated to the Head of the Appeals Unit of the Department of Legal Coordination and International Relations, in accordance with the OEPM decision of September 4, 2007, delegating the signing of appellate decisions.
An administrative appeal against an appellate decision may be filed with the Administrative Bench of the High Courts of Justice (HCJs) of autonomous communities (ACs).
Copyright
It should first be highlighted that the composition and organizational structure of the Copyright Registry and of the OEPM differ. Article 144 of Royal Legislative Decree No. 1/1996 of April 12 approving the consolidated text of the Law on Copyright (TRLPI), regularizing, clarifying and harmonizing the applicable statutory provisions, follows the decentralized registration model contained in Article 2 of Royal Decree No. 281/2003 of March 7 approving the Rules of the General Copyright Registry (RRPI), which establishes that "the General Copyright Registry shall be the only such body in the nation and shall be composed of the territorial registries and the central registry. A Registry Coordination Committee shall also exist as a collegiate body for collaboration among the registries".
The central registry forms part of the general State administration and is under the aegis of the Ministry of Education, Culture and Sport. However, it is the territorial registries, which are under the aegis of the ACs, that process and decide on "applications for registration and recordation, as well as, where applicable, cancellation, and the making of relevant entries".
Article 25.1 of the RRPI provides that "the appropriate action may be taken in civil courts, without any prior administrative claim, against agreements of a registration owner that are based on the validity or invalidity of titles, on the capacity of the parties or on the existence or nonexistence of registrable rights, as well as on any other private legal issue, pursuant to Article 145.2 of the TRLPI", which provides that "the Registrar shall consider applications filed and the legality of acts and contracts relating to the registrable rights; he or she shall be empowered to refuse or suspend the making of the corresponding entries. Positive decisions of the Registrar may be challenged directly before the civil courts."
However, Article 25.2 of the RRPI states that "interested parties may file administrative appeals against decisions and procedural acts based on the application of administrative procedural rules" with the Ministry of Culture and Sport of the AC and, subsequently, an administrative appeal with the Administrative Bench of the HCJ of the AC.
Lastly, Article 25.3 of the RRPI provides that "if the refusal or suspension agreed by the registration owner is simultaneously based on reasons provided for in sections 1 and 2, the appropriate avenue of challenge shall be the civil route".
A. Administrative
1. Sole instance
Industrial property
Article 74.1(i) of Organic Law No. 6/1985 of July 1 on the Judiciary (LOPJ) expressly confers on the Administrative Benches of the HCJs of the ACs the jurisdiction to hear in sole instance challenges to acts and decisions of bodies of the general State administration (including the OEPM). The general State administration has nationwide jurisdiction over special properties (including industrial property). The territorial jurisdiction of each HCJ encompasses its AC.
Copyright (procedural matters only)
Article 74.1(a) of the LOPJ expressly confers on the Administrative Benches of the HCJs of the ACs the jurisdiction to hear in sole instance challenges to acts and decisions of local entities and entities of the administrations of the ACs, where such hearings are not assigned to the Administrative Courts (including the territorial copyright registries). The territorial jurisdiction of each HCJ encompasses its AC.
2. Final instance: cassation
Copyright and industrial property
Article 58 of the LOPJ vests the Administrative Bench of the Supreme Court with the jurisdiction to hear in cassation challenges to decisions of the HCJs, provided that the proceedings involve an amount of at least 600,000 Euros or that the decision may be further appealable before the Court of Cassation. Its territorial jurisdiction is nationwide.
B. Civil matters
1. First instance
Copyright and national industrial property titles
For cases relating to substantive copyright matters and national industrial property titles granted by the OEPM, Article 86ter.2(a) of the LOPJ considers the commercial courts competent to hear any civil matters regarding remedies relating to industrial property and copyright. The territorial jurisdiction of each commercial court encompasses its province.
European Union trademarks and Community designs
However, Article 86bis.4 of the LOPJ stipulates that Commercial Courts 1 and 2 of Alicante shall also have exclusive jurisdiction to hear disputes concerning European Union (EU) trademarks and Community designs granted by the European Union Intellectual Property Office (EUIPO) at first instance. The jurisdiction of said courts is nationwide in this case and for this sole purpose, they shall be designated as EU Trademark Courts.
The EU Trademark Courts have exclusive jurisdiction over civil cases when proceedings concerning EU trademarks or Community designs and proceedings concerning identical or similar national or international trademarks or designs are instituted cumulatively, or if there is any other connection between the claims and at least one of them is based on a Community title registration or application.
2. Second instance
Copyright and national industrial property titles
Article 82.2.2 of the LOPJ stipulates that for cases relating to national industrial property titles granted by the OEPM, the specialized commercial affairs division of the provincial courts shall hear applications for remedies provided for in the law against first-instance decisions of commercial courts. Each provincial court has territorial jurisdiction over its province.
European Union trademarks and Community designs
However, Article 82.2.3 of the LOPJ stipulates that for disputes relating to EU trademarks and Community designs granted by EUIPO, the specialized commercial affairs division of the Provincial Court of Alicante (Eighth Division) shall also have exclusive jurisdiction in second instance in appeals against decisions of Community Trademark Courts. The territorial jurisdiction of these courts is nationwide and, for this sole purpose, they shall be designated EU Trademark Tribunals.
3. Final instance: cassation
Copyright and industrial property
Article 56 of the LOPJ confers on the Civil Bench of the Supreme Court the jurisdiction to hear in cassation challenges to decisions of Civil Benches of provincial courts, provided that the proceedings involve an amount of at least 600,000 Euros or that the decision may be further appealable before a court of cassation. Its territorial jurisdiction is nationwide.
C. Criminal matters
1. First instance
Copyright and industrial property
Courts of first instance and investigative courts may investigate crimes relating to copyright and industrial property and criminal courts may hear cases relating to copyright and industrial property crimes at first instance. In both cases, territorial jurisdiction encompasses their judicial district.
2. Second instance
Copyright and industrial property
Article 82.1.2 of the LOPJ stipulates that the provincial courts shall try under criminal law appeals provided for by law against decisions of provincial investigative and criminal courts. Their territorial jurisdiction encompasses their province.
3. Final instance: cassation
Copyright and industrial property
Article 57 of the LOPJ empowers the Criminal Bench of the Supreme Court to hear in cassation challenges to decisions of Criminal Benches of provincial courts, provided that the proceedings involve an amount of at least 600,000 Euros or that the decision may be further appealable before a court of cassation. Its territorial jurisdiction is nationwide.
Without prejudice to the above, in Spain, Article 118.2 of Law No. 24/2015 of July 7 on Patents establishes that judges of the commercial court of the city wherein are located the HCJ of those ACs to which the General Council of the Judiciary has exclusively assigned patent matters have objective jurisdiction to hear patent disputes.
On July 18, 2018, pursuant to Article 118.3 of Law No. 24/2015 of July 7 on Patents, Law No. 17/2001 of December 7 on Trademarks and Law No. 20/2003 of July 7 on the Legal Protection of Industrial Designs, the Standing Committee of the General Council of the Judiciary assigned to specific specialized commercial courts the hearing of industrial property matters and cases (for more information, see: https://www.boe.es/boe/dias/2018/11/14/pdfs/BOE-A-2018-15544.pdf).
This jurisdiction is understood as being without prejudice to the jurisdiction of the EU Trademark Courts and the EU Trademark Tribunals mentioned above and to the previously explained jurisdictional structure.
The webpage of the General Council of the Judiciary publishes statistics concerning the various judicial bodies, including those mentioned in previous sections.
http://www6.poderjudicial.es/PXWeb/pxweb/es/
However, these statistics do not provide a breakdown of the number and type of industrial property cases, but give aggregate figures for each judicial body, which also include matters other than industrial property.
Even in the case of bodies specialized in commercial matters, the figures do not offer a true view of the number of industrial property cases, since they are aggregate figures that also include other commercial matters such as corporate law or competition law disputes.
Regarding EU Trademark Courts and EU Trademark Tribunals, the following approximate figures are provided as an informal indication only:
| Reference year | Number of cases settled by EU Trademark Courts in the reference year | Average duration (days) between the claim filing date and that on which the EU Trademark Court issued the ruling |
| 2018 | 152 | 6-9 months |
| Reference year | Number of cases settled by EU Trademark Tribunals in the reference year | Average duration (days) between the appeal filing date and that on which the EU Trademark Tribunal issued the ruling |
| 2018 | 540 | Approximately 1 year |