Intellectual and industrial property is, in many sectors, a company's most valuable asset — and yet one of the most frequently unprotected due to a lack of structured strategy. A business that fails to adequately protect its trademarks, technological developments, software or confidential information risks losing competitive advantages built over years, seeing competitors copy its products with impunity, or facing costly litigation in jurisdictions where it failed to register rights in time.
Mapping Corporate Intellectual Property
A corporate IP strategy starts with an inventory: identifying what intellectual and industrial property assets the company holds, which are formally protected and which rely solely on factual measures.
The main categories are:
Distinctive signs: word, figurative or combined trademarks, trade names, certification marks. They protect the identity of the company and its products in the marketplace.
Technical creations: patents, utility models, semiconductor topographies. They protect technical innovations during an exclusivity period that allows recovery of R&D investment.
Aesthetic creations: industrial designs, protecting the appearance of products or their parts.
Intellectual creations: copyright over software, databases, literary and artistic works, website content, training materials and technical documentation.
Confidential information: trade secrets — formulas, customer lists, business strategies, production processes — protected under Law 1/2019.
Trademark Registration: OEPM, EUIPO and Madrid Strategy
Registering a trademark is not a bureaucratic formality but the foundation of the company’s brand identity protection strategy. Without registration, protection depends on prior use — difficult and expensive to prove in litigation — and is geographically limited to the area of demonstrated use.
OEPM (Spain): protection in Spanish territory. Reduced fees (150 euros for one class). Appropriate for exclusively Spanish activity or as a first layer of protection.
EUIPO (EU): protection across all 27 EU member states through a single registration (1,000 euros for one class). The EU trade mark has unitary effect: one grant protects across the EU, but a ground of invalidity in a single country can affect the entire registration. The term is ten years, indefinitely renewable.
Madrid System (WIPO): enables protection to be extended to over 130 countries from a national or European base application, through centralised filing. Indispensable for businesses with global operations or expansion plans.
A prior rights search before launching a trademark — verifying there is no identical or confusingly similar mark already registered — is an essential step that many companies skip, with costly consequences: a brand built on an existing registered mark may be subject to opposition or invalidity at any time.
Patents and Utility Models: When to Protect Innovation
Protecting technical innovation requires acting before any public disclosure: a conference presentation, a demonstration to a potential customer or the publication of any information about the invention destroys novelty and makes subsequent registration impossible.
Patent Act 24/2015 requires novelty, inventive step and industrial applicability. The OEPM grant procedure includes a prior art search, substantive examination and third-party opposition. The maximum patent term is twenty years.
The utility model — with a lower inventive step threshold — is appropriate for practical and functional improvements to existing objects, with a faster and more economical procedure and a term of ten years.
Trade Secrets: Law 1/2019
Spain’s Trade Secrets Act 1/2019 grants protection to commercially valuable confidential information without requiring registration, but in exchange for adopting “reasonable measures” of protection. The requirement is key: a company that does not document its confidentiality policies, does not train employees, does not control information access and does not sign NDAs with collaborators may not be in a position to invoke the law when a leak occurs.
Standard reasonable measures include: information classification by confidentiality level, technical and organisational access controls, regular staff training, NDAs with key employees (including post-employment confidentiality clauses) and NDAs with clients, suppliers and partners before any exchange of sensitive information.
Software Copyright: Ownership and Assignment
Software is one of the most frequently mismanaged IP assets in Spanish companies. The most common problem involves software developed by contractors or freelancers: if the contract does not include an express assignment clause covering all exploitation rights in favour of the commissioning company, the developer retains ownership. The company may have paid in full for the development and still not be the owner of the resulting code.
The assignment must be express, in writing, specifically identify the rights assigned — reproduction, distribution, transformation, public communication — and the territorial and temporal scope. For business-critical software, it is advisable to include the assignment of rights over future versions and updates made during the contractual relationship.
For software developed by employees in the course of their employment, rights vest automatically in the employer (Art. 97.4 TRLPI), but specific contract clauses are advisable to avoid ambiguity about the scope of the assignment.
NDAs: The First IP Protection Instrument
A confidentiality agreement (NDA) is the first IP protection instrument in any business relationship involving the exchange of sensitive information: pre-contractual negotiations, M&A processes, relationships with technology suppliers, conversations with investors or strategic partners.
A well-drafted NDA precisely defines what information is confidential, for what purposes the recipient may use it, for how long the obligation continues and what the consequences of breach are. Provisions for urgent interim measures — essential when disclosure of confidential information could cause irreversible harm — and the choice of governing law and jurisdiction are aspects frequently overlooked in standard NDAs.
Enforcement: Actions Against IP Infringers
IP ownership has no value if the company is unwilling to exercise it. The main enforcement routes are: urgent interim measures before the commercial courts (juzgados de lo mercantil); an infringement action with damages, injunction and judgment publication; opposition and invalidity proceedings before OEPM/EUIPO for registered trademarks and designs; and criminal proceedings for the most serious infringements.
At the European level, the Trade Secrets Directive (2016/943) and the IP Enforcement Directive (2004/48) have harmonised enforcement tools, including the right to information on the origin and distribution networks of infringing products.
IP in M&A and Due Diligence
In any M&A transaction, IP is among the first assets the buyer scrutinises. Poorly documented IP — lapsed registrations, uncertain software ownership, trade secrets without protection measures, undocumented licences — can significantly depress the perceived value of the company or generate conditions precedent in the sale agreement that delay or frustrate the transaction.
An IP due diligence should be conducted before starting any M&A negotiation, to identify and remedy ownership and registration issues with sufficient lead time. A well-structured and documented IP portfolio is, conversely, a negotiating asset that strengthens the company’s value proposition for potential investors or buyers.
The Patent Box regime under Art. 23 of the Corporate Income Tax Act can additionally reduce the effective rate on income from qualifying IP assets to 10%, making IP protection strategy also a dimension of tax optimisation worth planning from the outset when designing the ownership structure.
