Judgment of the Court of Justice of 11 September 2025, Salaparuta (C-341/24). Facts Duca di Salaparuta SpA It owns several trademarks that include the word "Salaparuta" for wines of class 33, among them: Italian trademark no. 511337 SALAPARUTA, registered on July 13, 1989. European Union Trademark No. 001302835 SALAPARUTA, registered on October 25, 2000. These brands are used to market wines that have no connection to the Italian municipality of Salaparuta, located in Sicily. On February 20, 2006, the Italian authorities recognized the Salaparuta Controlled Designation of Origin (DOC Salaparuta) to designate wines made with grapes from vineyards located in that municipality. This national protection was extended to the European Union after the Commission published a list of quality wines produced in specified regions (vcprd), which included the Salaparuta designation. From that moment on, the name, referred to from now on as PDO Salaparuta, became part of the electronic register of protected designations of origin and protected geographical indications, acquiring effects throughout the Union from 1 August 2009. On February 8, 2016, Duca di Salaparuta filed a lawsuit before the Tribunal di Milano requesting the annulment of the DOC Salaparuta and the DOP Salaparuta, alleging that they were misleading designations that interfered with his well-known brand for Salaparuta wines. On February 16, 2021, the court dismissed the claim, considering the rule of the preeminence of the PDO over the trademark applicable, without prejudice to the fact that the owner could continue to use his trademark under certain conditions. This judgment was appealed by Duca di Salaparuta and confirmed by the Court of Appeal of Milan by judgment of 5 May 2023, in which it was established that the matter should be resolved in accordance with Council Regulation No 1493/1999 of 17 May 1999 establishing the common organisation of the wine market, in force in 2006 when the Salaparuta PDO was recognized. This Regulation conferred automatic protection as PDO, within the Union, to the PDOs communicated by the Member States to the Commission and established in its Annex VII, F, point 2, letter b), the primacy of the PDO over trademarks. Duca di Salaparuta appealed again to the Supreme Court of Cassation, arguing that Regulation No. 1493/1999 was not applicable, since, in his opinion, the publication in the European Union's e-Bacchus register in 2009 implied the application of the Regulations in force at that time, namely Regulation No. 479/2008, Regulation No. 1234/2007 or even Regulation No. 1308/2013, which excluded the protection of a PDO when, taking into account the reputation and notoriety of a previous trademark, consumers could be misled about the identity of the wine. In response to this appeal, the Italian Supreme Court referred two preliminary questions to the CJEU: Whether the Salaparuta PDO recognized in 2006 should be considered to have maintained its effects and, therefore, Regulation No 1493/1999 should be applicable, or whether, on the contrary, national protection had been replaced by the Salaparuta PDO throughout the Union, and the Regulations invoked by Duca di Salaparuta should be applied. In the event that the 1999 Regulation was deemed applicable, the question was whether the protection regime provided for in that Regulation was exhaustive in resolving cases of coexistence between names and trademarks, or whether the general principle of prohibition of misleading signs could be applied. Rulings The CJEU confirms that Regulation No. 1493/1999 is applicable, as it was in force when the Salaparuta DOC was recognized in Italy in 2006. The publication in the Official Journal of the European Union in 2009 did not imply a new registration, but simply the automatic extension of national protection to the Community level, as a consequence of Italy's communication to the Commission on the existence of that vcprd. Consequently, the conflict must be examined in accordance with the provisions of Annex VII, F.2, second paragraph of the aforementioned 2009 Regulation, which governs the coexistence regime between PDOs and trademarks. This provision establishes that the holder of a well-known and registered trademark for wines containing words identical to the name of a region may continue to use it if the registration was made at least twenty-five years before the official recognition of the geographical name by the Member State and the trademark has been effectively used without interruption. Furthermore, the Court added that the cancellation of the protection of a wine designation protected under Article 54 of Regulation No 1493/1999 was not possible except at the initiative of the Commission, and only until 31 December 2014, when the conditions laid down in Article 34 of Regulation No 479/2008 were not met. As regards the second question, the Court declared that the general principles could not invalidate the conclusion on the exhaustiveness of the regime established in Annex VII, F.2, second paragraph of Regulation No 1493/1999, which governs conflicts with earlier well-known trademarks registered for wines and containing words identical to a PDO. Commentary The CJEU's decision is of particular importance, as it precisely defines the legal framework applicable to VCPRDs published in the Official Journal of the European Communities pursuant to paragraphs 4 and 5 of Article 54 of Regulation No 1493/1999. The Court clarifies that this publication does not imply the replacement of the pre-existing national protection, but rather constitutes an extension of its recognition to the European Union sphere. This interpretation reinforces the legal certainty of the holders of PDOs recognized under the regime prior to 2009, guaranteeing the primacy and stability of their rights, which cannot be annulled except in truly exceptional situations. Also of great interest is the confirmation, already declared in other judgments such as that of February 27th...Read more

Registering proper names as trademarks is an increasingly common practice when there is a clear public projection or potential future commercial use. Victoria Beckham's trademarking of the names of the Beckham children highlights the tensions between name rights and trademark rights, as well as the legal limits of this type of strategy. Based on this case, we spoke with Cristina Velasco, Senior Associate in the Trademarks area at Elzaburu, about the legal treatment of proper names as trademarks, the scope of trademark protection, and the existing legal avenues in case of conflict. Should a proper name be treated the same as any other trademark? A proper name cannot be equated with a trademark. While a trademark is a distinctive sign intended to identify a company's products or services in the market in contrast to those of its competitors, a name constitutes an attribute of personality, whose function is to identify a natural person in legal transactions and within society. Consequently, a trademark pursues a commercial purpose, unlike a civil name, whose purpose is strictly identification. In the case of the Beckhams, since it is a European Union brand, European regulations apply, as well as the national regulations of the member states. The United Kingdom (the country where the family resides), after its departure from the EU through Brexit, is no longer part of this regulatory framework. Therefore, the eventual protection of a civil name against a European Union trademark would have to be structured through the internal regulations of one or more member states. In the case of Spain, this protection is expressly contemplated in articles 9.1.a) and 9.1.b) of Law 17/2001, of December 7, on Trademarks, which provide for the prohibition of registration of signs that reproduce or imitate the civil name of a person without due authorization. Can the legal owner commercially exploit the trademark without the consent of the child when they reach the age of majority? If the trademark consisting of the child's name has been registered without his express consent and he has not tolerated its use for an uninterrupted period of five years in the European Union, he may validly request its cancellation before the EUIPO, in accordance with Article 60.2(a), in conjunction with Article 60.3, of Regulation (EU) 2017/1001. However, if the son had not given his consent, but had tolerated the use of the trademark for certain products (for example, clothing in class 25) for five consecutive years, then it would be more complicated to request the cancellation for those products since he would have to be able to prove that the filing of the trademark application was done in bad faith. Finally, it should be noted that trademark law is limited by the principle of specialty; therefore, licenses can only be granted for products or services for which the trademark is effectively protected. Consequently, if the trademark is not registered for certain categories of products or services, it would not be possible to license its use in relation to them. Is it preferable to negotiate a transfer or to challenge the registration? Everything will depend on the specific case and, in particular, on whether there was express consent from the son at the time of registration or tacit consent, which could be considered when the trademark has been used continuously for more than five years for certain products, with the son's knowledge and without opposition from him during that period. Indeed, the expiration of the trademark could be requested if more than five years have passed since its registration without it having been used for all or part of the products or services for which it was granted in the relevant territory (in this case the European Union). What is the difference between “protecting” a child’s name and appropriating it as a brand? From the moment a name is registered as a trademark, a commercial interest is presumed, since, as we have indicated, the purpose of the trademark is its use in economic transactions to distinguish the products or services of one company from those of others. If there is no commercial purpose, it is pointless to request trademark protection since, after five years from its registration, the trademark becomes vulnerable due to lack of use and any third party could request its expiration.   This type of case illustrates how the strategic management of intangible assets, such as name, image and brand, requires a prior and rigorous legal analysis, aimed not only at protection against third parties, but also at preventing future conflicts.

Madrid, November 13, 2025 – ELZABURU, a firm specializing in industrial and intellectual property, has achieved excellent results in the Best Lawyers in Spain awards, a professional recognition based on the consensus opinion of leading lawyers regarding the professional capabilities of their colleagues within the same geographic area and legal practice. With 35 lawyers and technical experts referenced and a total of 43 mentions, ELZABURU consolidates its position as the industrial and intellectual property firm with the most recognized professionals in this edition, thus reinforcing its leading position in the Spanish market. Regarding the individuals referenced in this year's edition, these are the ELZABURU professionals who appear in the ranking: Intellectual Property Law: Colm Ahern, Agustín Alguacil, Mónica Amores, Enrique Armijo, Cristina Arroyo, Luis Baz, Luis Beneyto, Catherine Bonzom, Ignacio Diez de Rivera Elzaburu, Alfonso Diez de Rivera Elzaburu, Cristina Espín, Mercedes García, Irene Gascón, Fernando Ilardia, Mabel Klimt, Xavier Lamíquiz, Miguel Ángel Medina, Carlos Morán, Tránsito Ruiz, Francisco J. Sáez, José Ignacio San Martín, Ruth Sánchez, Ana Sanz, Pedro Saturio, Rosa Torrecillas, Cristina Velasco and Manolo Mínguez. Litigation: Enrique Armijo, Alba Mª López, and Carlos Morán; Information Technology: Ruth Benito; Privacy & Data Protection: Ruth Benito; Technology Law: Ruth Benito; Communications Law: Mabel Klimt; Entertainment Law: Mabel Klimt; Competition: Carlos Morán. Regarding the Ones to Watch distinction, which recognizes lawyers in the early stages of their careers who have already demonstrated outstanding excellence in their legal practice, the recipients were: María Cadarso and Alberto Gallo in Litigation; and Inés de Casas, Sara Navarro, Paloma Querol, and, again, Alberto Gallo, in Intellectual Property. Best Lawyers employs a sophisticated, thorough, rational, and transparent survey process designed to obtain meaningful and substantive assessments of the quality of legal services. According to this organization, “the quality of a peer-review survey is directly related to the quality of the voters.”

A brand represents one of the most valuable intangible assets for any company, not only because it identifies its products or services, but also because it acts as a reputational vehicle, conveying values ​​and generating loyalty among consumers. But not all brands are the same, and a distinction is made between those considered traditional, such as names and logos, and non-traditional ones, which include shapes, colors, sounds, movement, or even specific positions of the sign on a product. These non-traditional brands present new opportunities for differentiation, but also entail greater legal and strategic demands for their protection. In this guide, we explain what types of trademarks exist, how they are classified, and what you should keep in mind if you want to successfully register a non-traditional trademark. What is a trademark and why is it important to protect it? A trademark is a sign that allows a company's products or services to be distinguished from those of its competitors. More than just a logo or a name, a brand represents a company's commercial identity and becomes a vital asset for its market positioning. For a trademark to be registered, it must meet two fundamental requirements: Distinctiveness: the trademark must be sufficiently unique to identify the origin of the specific goods or services, avoiding being generic, merely descriptive or excessively simple (for example, a period), as well as overly complex (such as a film). Representative capacity: It must be able to be clearly and precisely represented in the registry so that consumers and competitors know exactly the object of protection. The advantage of registering a trademark is that its protection can potentially be indefinite, provided it is renewed periodically (every 10 years in the European Union and Spain), unlike other industrial property titles such as designs, whose protection in our country is 5 years, extendable to a maximum of 25 years. Brand classification: traditional and non-traditional Brands can be divided into two large groups: traditional and non-traditional. Below, we explain each type with illustrative examples.   1. Traditional brands: the most common These are the ones consumers have in mind when they hear the word “brand,” as they represent the most well-known and widely used options by companies. These include: Wordmarks: consisting of words, letters, numbers or combinations of these in standard characters. Example: the name of a company or product. Figurative marks: graphic signs without text. Example: logos without verbal elements. Mixed trademarks: combination of denominative and figurative elements in a single set. 2. Non-traditional trademarks: definition and examples Non-traditional trademarks are used to protect visual, sensory, or presentational elements that do not fit into conventional categories, but which may be capable of fulfilling the distinctive function of a trademark. 2.1 Three-dimensional trademarks Protect the distinctive shape of a product or its packaging, provided that it deviates from the usual configurations and does not respond solely to a technical or functional function. Some examples include iconic perfume bottles, as well as unique shapes of handbags, shoes, or beverages. Among the three-dimensional trademarks is trade dress, which protects the general appearance of an establishment (shelf layout, aisles, color scheme, etc.), when that configuration can identify a commercial origin. 2.2 Position marks Protect the specific location of a sign on a product. Some examples of this type of non-traditional mark are: Red sole of Christian Louboutin shoes Characteristic seams on the pockets of Levi's pants The three stripes of Adidas 2.3 Pattern marks Protect the systematic repetition of a graphic or ornamental motif. As is the case with Louis Vuitton, which has managed to create a very recognizable print through the use of its symbol, or Burberry with its classic check pattern. 2.4 Color Marks They can refer to a single color or to a combination of colors in specific proportions (both in terms of color distribution and the weights each represents). Registering a trademark based on a single color represents a particular challenge, due to the limited availability of shades and the need to avoid monopolies on basic colors. Therefore, only those brands that have achieved a high level of recognition and association in the market are eligible for registration. Some companies that have achieved this are Milka with its traditional purple color, or 3M with the classic yellow color of its Post-its. 2.5 Sound marks Include melodies, sounds or jingles that identify a product or service, for example, Mercadona's sung slogan or MGM's iconic lion's roar. 2.6 Motion Marks Protect visual animations that represent a moving sign, but without sound. 2.7 Multimedia tags Combine image and sound into a single file. An example would be the header of a streaming program or platform. 2.8 Hologram marks Protect three-dimensional visual effects such as brightness, reflections or contrasts that vary depending on the viewing angle. 2.9 Olfactory, gustatory or tactile marks? Although applications have been filed both nationally and within the European Union, these trademarks have not yet been admitted in practice, as they do not meet the requirement of clear, precise, objective, and durable representation. Therefore, currently—and at least until technology exists that allows objective access—it is not possible to record smells, tastes, or tactile sensations as brands. Legal Challenges of Non-Traditional Trademarks Non-traditional trademarks present specific challenges when applying for and examining them before industrial property offices, because their form of expression often deviates from traditional signs and what we have internalized as a brand. These challenges arise from three key aspects: 1. Trademark function The sign must fulfill its function as a trademark, that is, it must have - as we have seen - representative capacity (being able to be registered in a clear and accessible manner) and distinctive capacity (identify the business origin of the product or service). Furthermore, although...Read more

ELZABURU lawyer Cristina Velasco participates in the course organized by the Carlos III University on the world of fashion, showing the perspective of brands. Date: 28.02.2019/25/28 (the complete course runs from the 15th to the 00th) Time: 18:30 p.m. to 3:3 p.m. Place: Carlos III University. Faculty of Social and Legal Sciences, Getafe. More information: http://portal.ucXNUMXm.es/portal/page/portal/dpto_dseip/fashionlaw_dip_y_moda Source: UCXNUMXM-Elzaburu Author(s): Cristina Velasco Vega

Periodic update of the chapter referring to Spain. Accessible at (subscribers only): http://kluweriplaw.com/brownbook Source: Kluwer Manual of Industrial Property – The Brown Book, 2018 ed. Author(s): Fernando Ilardia Lorentzen, Francisco Javier Sáez Granero, Marina Reig Viniegra, Cristina Velasco Vega

The purpose of this commentary is to examine the pronouncements of the ruling of the Provincial Court of Madrid, n. 401/2017 of 15.9.2017/22/2018. It deals with topics of great interest to the fashion sector, which are part of the so-called Fashion Law. Source: Journal of Competition and Distribution Law, no. XNUMX, January-June XNUMX Author(s): Cristina Velasco Vega

The ELZABURU firm has had the pleasure of collaborating with the Thomson-Reuters Aranzadi publishing house on the work Fashion Law, a pioneering treatise in Spain on fashion law. This chapter offers a panoramic view of trademark protection in the world of fashion. Published by Aranzadi Source: Fashion Law, pp. 35-64 Author(s): Fernando Ilardia Lorentzen, Cristina Velasco Vega