Licensing in Spain:

ELZABURU Partner Javier Fernández-Lasquetty together with lawyers Alba López and Martín Bello answer the key questions of concern to corporations and their counsel when dealing with licensing laws in Spain. Areas covered include: kinds of licences, law affecting international licensing, intellectual property issues, software licensing, royalties and other payments, currency conversion and taxes, competition law issues, indemnification, disclaimers of liability, damages and limitation of damages, termination of licensing agreements, bankruptcy, governing law and dispute resolution.

Spanish chapter

Reproduced with permission from Law Business Research Ltd. Getting the Deal Through: Licensing 2017, (published in February 2017; contributing editor: Bruno Floriani, Lapointe Rosenstein Marchand Melançon LLP) For further information please visit https://gettingthedealthrough.com/area/19/licensing/

Confirmed! The holders of licenses in Community designs may also bring claims themselves even though the license has not been entered in the register

Only some months after having given a ruling (case C-163/15)  to the effect that the holders of licenses in Community trademarks (or, rather, “European Union trademarks”, as they now are)  were entitled to bring actions for infringement against third parties even though their licenses had not been entered in the register, the Court of Justice of the European Union was asked to give a preliminary ruling on whether the holders of licenses in Community designs (as they are still called) in turn had that right.

The CJEU has given its judgment in case C-419/15 which stemmed from a request for a preliminary ruling made by the Oberlandesgericht Düsseldorf (the German court of appeal) in connection with a dispute between two German companies. The first of the two, the plaintiff, was the holder of an exclusive unrecorded license in a Community design. The defendant was the distributor of a product which allegedly infringed that design.

In these circumstances the German court referred the following questions to the CJEU: 

• May a licensee who has not been entered in the register bring claims for infringement of the rights in a registered Community design? 

• In the affirmative, may the exclusive licensee also bring an action claiming damages on its own, or may it only intervene in an action brought by the rightholder itself?