Cross-border IP contracting in Iberia means one deal, two legal systems and at least two registers. A licence or assignment signed between Spanish and Portuguese companies binds the parties from signature, but in each country it can only be relied on against third parties once it is recorded: at the OEPM (Spanish Patent and Trademark Office) for Spanish rights and at the INPI (Portugal’s National Institute of Industrial Property) for Portuguese ones. This guide is for companies licensing, selling or buying trade marks, patents and designs across the peninsula.
Key takeaways
- Both countries require the contract in writing and make it effective against third parties only after recordal: Spain under its Trade Marks and Patents Acts, Portugal under Article 29 of its Industrial Property Code.
- The default rules are not identical: in Spain, an exclusive licensor may only use the right if it reserved that possibility; in Portugal, it may use it unless the contract says otherwise.
- EU trade marks and international registrations covering both countries are recorded once, at the EUIPO or WIPO, not at the national offices.
- The parties can choose the law governing the contract under the Rome I Regulation, but the formalities and effects of recordal follow each country’s own law.
What does cross-border IP contracting in Iberia involve?
An Iberian portfolio usually mixes four kinds of rights, and each is recorded in a different place:
| Right | Where the assignment or licence is recorded | Main rule |
|---|---|---|
| Spanish trade mark, patent or design | OEPM | Ley 17/2001 de Marcas; Ley 24/2015 de Patentes |
| Portuguese trade mark, patent or design | INPI Portugal | Código da Propriedade Industrial (Decree-Law 110/2018) |
| EU trade mark | EUIPO | Regulation (EU) 2017/1001, Articles 20, 25 and 27 |
| International registration designating Spain, Portugal or the EU | WIPO International Register | Madrid Protocol, Article 9 |
The practical consequence: a single contract can cover all of them, but the recordal plan must list each right by number and office.
Spain and Portugal side by side: assignments and licences
These are the rules in the Spanish Trade Marks Act and Patents Act, and in the Portuguese Industrial Property Code:
| Point | Spain | Portugal |
|---|---|---|
| Form | Patent assignments and licences must be in writing to be valid (LP, Art. 82(2)) | Assignments are proved by a written document; licences must be in writing (CPI, Arts. 30(4) and 31(3)) |
| Effect against third parties | Trade marks: only against third parties in good faith once registered (LM, Art. 46(3)); patents: from registration (LP, Art. 79(2)) | Only after the recordal (“averbamento”); unrecorded acts still bind the parties (CPI, Art. 29(2) and (3)) |
| Presumed scope of a licence | Non-exclusive (LM, Art. 48(5); LP, Art. 83(5)) | Non-exclusive (CPI, Art. 31(5)) |
| Licensor’s own use under an exclusive licence | Only if expressly reserved (LM, Art. 48(6); LP, Art. 83(6)) | Allowed unless the contract excludes it (CPI, Art. 31(7)) |
| Sublicences and transfer of the licence | Not allowed unless agreed (LM, Art. 48(3); LP, Art. 83(3)) | Only with the holder’s written consent or authorisation (CPI, Arts. 31(8) and (9)) |
| Partial transfer | Trade marks for some goods or services (LM, Art. 46(2)); patents are indivisible (LP, Art. 82(3)) | Trade marks and designs may be partial; patents and utility models only in full (CPI, Art. 30(1)) |
| Documents for recordal | Authenticated copy or copy with legalised signatures, a certified extract, or a transfer certificate signed by both parties (LM, Art. 49(2)) | Supporting documents; if the assignor requests it, the assignee must also sign or declare its acceptance (CPI, Arts. 29(4) and 30(4)) |
The exclusive-licence row is where Iberian contracts most often go wrong. A template drafted under Spanish law and silent on the licensor’s own use means one thing in Spain and the opposite in Portugal.
Which law governs an IP licence between Spain and Portugal?
Under Article 3 of the Rome I Regulation (EC) No 593/2008, the contract is governed by the law chosen by the parties, expressly or clearly from the terms. Without a choice, licences are not among the contracts listed in Article 4(1), so the default is the law of the habitual residence of the party that performs the characteristic performance (Article 4(2)), unless the contract is manifestly more closely connected with another country (Article 4(3)). Identifying that party in a licence is not always obvious, which is one more reason to choose the law expressly.
The chosen law governs the obligations between the parties. It does not change what each register demands: the formalities and third-party effects of recordal at the OEPM and the INPI follow the Spanish and Portuguese provisions in the table above.
Clauses that matter in an Iberian licence or assignment
- Rights listed by number, office and owner of record, including EU trade marks and international registrations.
- Territory: Spain, Portugal or both, stated for each right.
- Exclusivity, and whether the licensor keeps the right to use (state it expressly, given the different defaults).
- Sublicensing within the licensee’s group and to manufacturers.
- Quality control and approval of packaging and advertising.
- Recordal: who files at each office, who pays and a duty to sign the documents the other office requires.
- Enforcement: who monitors, who sues and who bears the cost. In Spain, a trade mark licensee needs the owner’s consent to sue, although an exclusive licensee may act if the owner fails to do so after a formal request (LM, Art. 48(7)).
- Know-how and warranties: in Spain, the transferor of a patent must, unless otherwise agreed, provide the technical knowledge needed to exploit it (LP, Art. 84) and is liable if it lacked title (LP, Art. 85).
- Governing law, jurisdiction and the language of the contract and its translations.
- Termination and the cancellation of the recordal when the licence ends.
What this means for your business
- Map the rights: which are Spanish, Portuguese, EU or international, and who is the owner of record of each.
- Draft one contract with country-specific clauses where the defaults differ.
- Prepare recordal documents in the form each office accepts before signing, so that both parties sign them at closing.
- File the recordals promptly at the OEPM, the INPI, the EUIPO or WIPO, as applicable, and calendar renewals in the new owner’s name.
- Keep evidence of the licensee’s use; under EU and Spanish law it counts as the owner’s use when consent can be proved.
For deals that also involve Latin American or African rights, our cross-border IP contracting and strategy team can structure the Iberian part as the first step of a wider plan.
Where companies get Iberian IP contracts wrong
- Signing and never recording. The licensee or buyer cannot rely on the deal against third parties in that country, and an unrecorded owner faces obstacles when it sues.
- Copying a Spanish template into Portugal without checking the exclusive-licence and sublicence defaults.
- Recording at the national office a right that is actually an EU trade mark, or forgetting the international registration.
- Missing signatures: Portugal may require the assignee’s signature or acceptance, and Spain specific forms of document.
- Leaving enforcement unaddressed until an infringer appears.
Most of these errors come from treating the contract and the recordal as separate jobs handled by different advisers. A single team that drafts, signs and records keeps both aligned.
Frequently asked questions
Do I have to record a trade mark licence in Spain and Portugal?
The licence binds the parties without recordal, but in both countries it only takes effect against third parties once recorded: in Spain against third parties in good faith (Trade Marks Act, Article 46(3)) and in Portugal after the averbamento (Industrial Property Code, Article 29(2)). If the licensee may need to rely on it, record it at both offices.
Can one contract cover rights in both Spain and Portugal?
Yes, and it is usually the most efficient approach. The contract can be governed by a single law chosen under the Rome I Regulation, but each right still has to be recorded at its own office with the documents that office accepts, and clauses on exclusivity and sublicensing should reflect the different default rules.
What changes if the right is an EU trade mark?
An EU trade mark is a single right for the whole Union, so the assignment or licence is recorded once at the EUIPO, not at the OEPM or the INPI. Under Regulation (EU) 2017/1001, a transfer must be in writing and signed by both parties, and the transferee cannot invoke the mark until the transfer is entered in the register.
Can IP Global Guard handle Iberian IP contracts and their recordal?
Yes. We draft and negotiate assignments and licences and prepare and coordinate the recordals before the OEPM, the EUIPO and WIPO, directly where our professionals are entitled and otherwise through qualified representatives, and before the INPI in Portugal through local correspondents. You keep one point of contact for both countries.
How IP Global Guard can help with your Iberian deal
An Iberian licence or acquisition is only as strong as its weakest recordal. IP Global Guard, the IP services line of META Channel Corporation Limited, handles IP contracts, recordals and the enforcement that follows with one strategy and one billing relationship across more than 25 jurisdictions; see our coverage across Europe, Latin America and Africa and our work on IP licensing, assignments and disputes.
Share the deal timeline, the list of rights and the draft contract if you have one. We will check the title in each register, flag the clauses where Spanish and Portuguese defaults differ and plan the recordals. Talk to our team about your Iberian deal.
This article is general information, not legal advice, and does not replace a review of your specific contract.
Sources
- BOE, Ley 17/2001 de Marcas (consolidated text, last updated 28 July 2022)
- BOE, Ley 24/2015 de Patentes (consolidated text, last updated 4 July 2018)
- WIPO Lex, Portuguese Industrial Property Code, Decree-Law 110/2018 (consolidated version of 29 January 2021)
- Regulation (EC) No 593/2008 (Rome I), Official Journal of the EU, 4 July 2008 (BOE edition)
- WIPO Lex, Regulation (EU) 2017/1001 on the European Union trade mark (14 June 2017)
- WIPO Lex, Madrid Protocol (as amended on 12 November 2007)
