A Spanish court hands down an infringement ruling. The rights holder has a narrow window to enforce it before the defendant transfers key assets. Miss that window, and the practical value of the judgment collapses – even when the legal position is strong.
Spanish courts have adopted a stricter and more structured approach to intellectual property enforcement, tightening procedural requirements for infringement claims and interim relief applications. Companies that registered trademarks or other IP rights under prior practice may find their enforcement position weakened unless they review their documentation and court strategy now. These shifts affect trademark holders, licensees, and any business with commercial exposure in the Spanish market.
This alert covers what has changed in Spanish court practice, which business categories face the greatest exposure, and the five immediate steps international companies should take to protect their IP position in Spain.
What has changed in Spanish IP enforcement practice
Spanish intellectual property legislation has long provided a structured path for rights holders to pursue infringement claims before the specialised commercial courts. In recent periods, however, the Tribunal Supremo (Supreme Court of Spain) and lower appellate courts have issued a series of clarifications that materially alter how those rights are enforced in practice.
Several shifts stand out. First, courts now apply a stricter standard when assessing the distinctiveness of a contested mark. A trademark application that cleared the Oficina Española de Patentes y Marcas (Spanish Patent and Trademark Office, or OEPM) without challenge does not automatically carry a presumption of strong distinctiveness in infringement proceedings. Courts have shown willingness to scrutinise registration on its merits, even when opposition proceedings concluded in the rights holder's favour.
Second, the burden on claimants to demonstrate genuine commercial use has increased. A rights holder who cannot produce clear evidence of market presence within the relevant Nice classification categories risks having an infringement claim narrowed or dismissed. Bare registration is no longer treated as sufficient proof of an enforceable economic interest.
Third, applications for interim injunctions – historically granted with relative readiness in clear-cut copying cases – now face more rigorous fumus boni iuris (appearance of legal right) and periculum in mora (risk from delay) assessments. Claimants must present detailed factual evidence at the outset. Courts are less willing to grant precautionary measures on the basis of documentation that would have sufficed two or three years ago.
These shifts took hold progressively through recent court decisions, with the consolidated practice now well established. Companies that have not reviewed their enforcement posture since registering their rights face real exposure.
Which businesses are affected and what the threshold criteria are
The practical impact falls unevenly across business categories. The following types of company face the highest exposure.
- International businesses that registered trademarks in Spain through the Madrid Protocol without subsequently establishing visible Spanish market activity.
- Technology and software companies whose IP portfolios were filed under broad Nice classification headings without granular use evidence in specific sub-categories.
- Businesses that have licensed Spanish IP rights to local entities – whether a Sociedad Anónima (SA, a Spanish public limited company) or a Sociedad Limitada (SL, a Spanish private limited company) – but have not maintained documentation of how those rights are actively exercised under the licence.
- Rights holders who acquired IP assets through M&A transactions and have not verified that the underlying use evidence and chain of title are court-ready.
- E-commerce operators facing counterfeit goods claims who have not yet built out their Spanish-specific evidence file.
The threshold criterion that courts now apply most consistently is demonstrable commercial use within the specific registered categories. If a business cannot produce contemporaneous evidence – invoices, marketing materials, contracts – showing active use of the mark in Spain, the enforcement position is materially weaker than the registration certificate suggests.
For AI-driven products and platforms, the intersection of IP protection and evolving regulation adds a further layer of complexity. International businesses in this space should also review how their Spanish IP strategy interacts with the regulatory conditions addressed in our analysis of AI law and technology regulation in Spain.
To receive an expert assessment of your IP enforcement position in Spain, contact us at info@ferrazwhitmore.com.
Immediate actions for international companies
Five steps address the most pressing risks arising from these shifts in Spanish court practice.
1. Audit use evidence by registration category. Map each registered trademark or IP right against the specific Nice classification categories where the business is actually active in Spain. Identify gaps between the registered scope and documented commercial activity. Address those gaps before any enforcement action is initiated.
2. Review licence and assignment documentation. Where rights are held by or licensed to a Spanish corporate entity. whether through a Registro Mercantil (Commercial Registry) filing or a private agreement. verify that the chain of title is complete and that licence terms reflect current use. Courts have dismissed infringement claims on the basis of incomplete ownership chains.
3. Prepare an interim injunction file before it is needed. An application for precautionary measures must now arrive in court with a fully developed factual exhibit. Assemble that file now: evidence of the mark's reputation, evidence of the defendant's infringing activity, and a clear argument on the risk of irreparable harm. A Notario (Spanish notary) can notarise and timestamp digital evidence, which carries greater evidentiary weight than unverified screenshots.
4. Assess pending opposition proceedings under the new standards. If the business has an opposition proceeding before the OEPM that has not yet concluded. Review the arguments in light of the stricter distinctiveness standard now applied by the courts. Winning at the OEPM under prior practice does not guarantee that the same position will hold if the matter proceeds to litigation.
5. Engage Spanish IP counsel to map cross-border enforcement exposure. Where a Spanish infringement has knock-on effects in other EU jurisdictions, strategy must account for the interaction between Spanish procedural rules and EU-wide enforcement mechanisms. Our full overview of available legal instruments is set out in our service page on intellectual property law in Spain. For companies with parallel exposure in Portugal, the comparable developments are addressed in our alert on IP enforcement developments in Portugal.
About Ferraz & Whitmore
Ferraz & Whitmore is an international law firm based in Lisbon, advising business clients across 46 jurisdictions. Our intellectual property practice covers trademark registration, IP enforcement, opposition proceedings, and cross-border infringement strategy across European and international markets. As a law firm active in Spain and across the EU, we work with technology companies, international brand owners, and institutional investors who require results-oriented counsel across both civil law and common law systems. The firm's IP team includes practitioners with experience before Spanish commercial courts, the OEPM, and EU-level enforcement bodies, supporting clients in building and protecting their IP assets across 15 practice areas. To discuss your Spanish IP enforcement position, contact us at info@ferrazwhitmore.com.
Disclaimer: This publication is provided for informational purposes only and does not constitute legal advice. The information herein should not be relied upon as a substitute for professional legal counsel tailored to your specific circumstances. Ferraz & Whitmore assumes no liability for actions taken or not taken based on the contents of this material. For advice regarding your particular situation, please contact info@ferrazwhitmore.com.