Dine out in a registered setting- MADE IN SPAIN

February 26, 2019

“Industrial designs provide efficient protection of a restaurant’s aesthetics and atmosphere”

When opening a restaurant nowadays, it is important to not only offer cuisine that is gastronomically fashionable, but also to create an environment that impacts customers. This is due to the current transformation in the restaurant business that the experience of eating now also includes entertainment, sensations and emotions.

If the atmosphere of the restaurant can make the customer feel relaxed and joyful it will, without a doubt, influence their perception of the restaurant and dictate behavior when it comes to how they order.

Therefore, when thinking of the design of a restaurant, try to imagine that you are in any restaurant in the world, enter the building and sit down.   Think about it from the customer’s perspective and see if you feel an inclination to stay at this restaurant.

This was the recent thought process of Spanish franchise TABERNA VOLAPIE in an effort to think of a way to provide added value to their restaurants. Their special decoration with traditional Spanish motifs and lamps made from antique water bottles is protected by the Spanish national design No. 0526169 “Taberna Volapié”.

As well as the restaurant setting, it is also important to think about product design. As is often the case with Spanish products, it is common practice for olive oil producers to make their bottles stand out by using attractive designs. We have to remember that Spain and Italy are known worldwide for the quality of their oils and for how they defend their designs against third parties.

As these examples show, a wide range of designs can be essential to a business’s brand, identity and success. How then, can those designs be protected in Spain?

How can I defend my industrial designs in Spain?

The Spanish legal system provides several possible actions for an industrial design holder to defend their rights, including both civil and criminal proceedings.

You can file a civil suit: demanding the cessation of infringement of your rights; to gain compensation for damages; to obtain the measures necessary to prevent the infringing activity from continuing; for destruction or transfer of the infringing products to the holder of the right; as well as the publication of the judgement decision at the expense of the offender.

Bear in mind, these civil proceedings are affected by a statute of limitations and an action can only be brought within 5 years from the day on which the offending action occurred.

According to Art. 55, manufacturers or importers of products that incorporate industrial designs without authorization are obligated to provide compensation for damages. Furthermore, those that carry out other unauthorized acts of exploitation shall be responsible for compensation, starting from when they are notified of the existence of the design right.

Designs can also be protected by copyright laws, in addition to industrial design protection .  Art. 3 of the Royal Legislative Decree 1/1996 of 12 April (Consolidated text of the intellectual property law) states that the author’s rights in copyright are compatible with any industrial property rights that may exist in relation to the work.

Finally, the industrial design may be used as a financial asset in legal transactions: it can be assigned or licensed, it can be the object of a guarantee, of seizure, or of a purchasing option, among other things. 

Invalidity and expiration of the industrial design

A registered design can be declared invalid if a court determines that any of the causes of invalidity apply.

Any person, or any group representing manufacturers, dealers or consumers may request a design be deemed invalid if they are negatively affected by the industrial design right. The owners of prior rights in similar designs can also bring invalidity actions.

If invalidity is established, the design right is deemed to have never been valid. Nevertheless this retroactive effect shall not affect contracts made before the determination of the invalidity(Law 20/2003 of 7 July on legal protection of industrial design). 

On the other hand, a validly-registered industrial design will expire if it has not been renewed within the period of 5 years, the rights have been waived by the owner, or because the owner of the design right no longer meets the conditions for their right to be registered.

Evaluation of EU legislation on design protection – Spain’s position

The European Commission recently opened a public consultation procedure, the aim of which is to collect sufficient data and opinions of interested parties to use them for support in the evaluation of the Directive 98/71/EC of the European Parliament and of the Council, of 13 October 1998 on legal protection of designs and models (“Directive on designs and models”) and Regulation (EC) No. 6/2002 of the Council, of 12 December 2001, on community designs and models (“Regulation on community designs and models”) with the aim of determining to what extent these legislative actions will work as intended and to what extent they can continue to be considered suitable to their aims.  This consultation will most likely conclude with a reform, if deemed necessary, of the aforementioned Regulation with a large impact on the national legislation of industrial designs. Due to Spain’s importance in the field of industrial designs – it is the country with the third highest number of designs, behind Germany and Italy – we must make sure we continue to support, defend and provide protection for design owners in Spain.