Scope of preliminary draft law
Article 1: modification of Trademark Law
Article 2: modification of Design Law
Article 3: modification of Patent Law



In October 2021, the Council of Ministers of the Spanish government authorised the text drawn up by the Spanish Patent and Trademark Office (SPTO) of the preliminary draft law for the modification of the following laws to start being processed as a draft law in Parliament:

  • Law 17/2001 of 7 December 2001 on trademarks (the Trademark Law);
  • Law 20/2003 of 7 July 2003 on the legal protection of industrial designs (the Design Law); and
  • Law 24/2015 of 24 July 2015 on patents (the Patent Law).

Prior to the start of the parliamentary process, in accordance with the legal provisions (article 26.6 of Law 50/1997 of 27 November 1997 on the government), the SPTO published the text of the preliminary draft on its website to notify those affected. Suggestions on the draft could be submitted before 19 November 2021.

Scope of preliminary draft law

The proposed text sets out, in its explanatory memorandum, that the purpose of the modification is to update certain aspects relating to IP rights so as to offer greater legal certainty and clarify some confusing aspects.

However, the Ministry of Industry Department's report, which accompanies the preliminary draft and analyses the impact of the law, acknowledges that there are some important issues still to be resolved because they require a modification to the Organic Law of the Judiciary Power – for example, which jurisdiction will be competent to know about SPTO resolutions in different areas.

It should be noted that this issue, together with the fact that the declaration of invalidity and the revocation of trademark actions could be a shared competence between the SPTO and the specialised civil courts – at least in certain cases – is of great concern to professionals in this field and to the General Council of the Judiciary. While they have been left out of the preliminary draft, they could be raised in Parliament at a later date if necessary.

However, regardless of the fate of those contributions and all of the affected parties, as well as any later possible amendments in Parliament, the preliminary draft as published by the SPTO is now being analysed.

The proposed modification is divided into three articles, one for each of the laws to be modified. The main changes included in each article are set out below.

Article 1: modification of Trademark Law

The main amendments to the Trademark Law are as follows:

  • New exceptions have been introduced to the revocation of a trademark on the grounds of a lack of renewal where there are registered seizures, a claim action or bankruptcy proceedings underway.
  • In invalidity and revocation proceedings in which the owner of the invalid or revoked trademark has acted in bad faith, the action for compensation for damages must be filed before the civil court.
  • The articles referring to causes of denial of collective and warranty trademarks will now be applied to international trademarks.
  • In the transformation of EU trademarks, the requirements for signs will be brought into line with those established for applications of national trademarks.
  • Regarding trade names, the requirement for graphic representation has been eliminated.

Article 2: modification of Design Law

The main amendments to the Design Law are as follows:

  • The possibility to request proof of the use of a trademark that is used in the opposition of the use of a sign in the registered design has been introduced.
  • During ex officio examination, the improper use of elements that identify both EU member states and international intergovernmental organisations has been prohibited, as has the use of elements that identify Spain and its different territorial entities (eg, emblems, flags and other types of distinctive sign).
  • In infringement proceedings, the "right of intervention" has been introduced. This means that the owner of a trademark or design shall not be entitled to prohibit the use of a later registered design when that later design would not be declared invalid in accordance with the law.
  • Regarding the calculation of compensation for damages in proceedings for infringement of a registered design, the total amount that may be set must now be at least the hypothetical royalty amount.
  • The free advertising licence is now regulated.
  • New exceptions have been introduced to the revocation of a design on the grounds of a lack of renewal where there are registered seizures, a claim action or bankruptcy proceedings underway.

Article 3: modification of Patent Law

The main amendments to the Patent Law are as follows:

  • A new patentability exception has been introduced to exclude animals or plants obtained by means of essentially biological procedures.
  • The patent processing procedure will be suspended:
    • if all interested parties in an opposition procedure file a joint request;
    • in cases of seizure, bankruptcy or insolvency proceedings; and
    • when such suspension is decreed judicially.
  • Provisional patent applications have been introduced.
  • The period of two months to answer claims, counterclaims or limitation applications has been changed to 60 calendar days.
  • The possibility of suspending judicial proceedings has been introduced if the resolution of the proceedings requires a decision on issues that are the object of an opposition, limitation or revocation procedure before the SPTO or the European Patent Office.
  • The scope of utility models has been extended to cover pharmaceutical substances and compositions.
  • Derived utility models have been introduced.
  • The possibility to transform a revoked European Patent into a utility model has been introduced.


According to the provisions of the SPTO, this law, which will modify the three basic Spanish IP laws, will be approved before the end of 2022.

For further information on this topic please contact Dalia Ferrando at Grau & Angulo by telephone (+34 93 202 34 56) or email ([email protected]). The Grau & Angulo website can be accessed at