Proof of use has become established as a determining factor in trademark opposition proceedings in Spain and the European Union. Its introduction into Spanish legislation in 2019 has brought about a significant change in the strategy for defending trademark rights, requiring owners to prove the effective use of their trademarks in certain cases. This mechanism not only affects the outcome of an opposition, but also directly impacts the active management of companies' intangible assets. What is a brand usage test? Proof of use is the right of a trademark applicant to require the opponent to demonstrate that their earlier trademark has been effectively used in the market. Specifically, this requirement applies when the earlier trademark on which the opposition is based has been registered for more than five years at the time of filing the contested application. If the holder of the earlier trademark fails to prove such use, the consequence is direct: the opposition is dismissed. What is meant by effective use of a trademark? The concept of trademark use is not limited to symbolic or residual use. The regulations require actual use, sufficient to fulfill its essential function: identifying the business origin of the products or services. The following are not considered effective use: Merely testimonial use; Isolated actions without real impact on the market; Uses aimed solely at maintaining the registration without real commercial activity. On the contrary, the use must be public, external and market-oriented, linked to the products or services protected by the trademark. https://www.youtube.com/watch?v=XcM1QQD7bj4 Requisitos de la prueba de uso en una oposición de marca Para que la prueba de uso sea válida en un procedimiento de oposición de marca, debe acreditar de forma conjunta cuatro elementos clave: 1. Location It must be shown that the trademark has been used in the territory where it is protected, although it is not necessary to cover the entire territory. 2. Time The use must have occurred within the five years prior to the contested application. 3. Scope The intensity of use is evaluated: sales volume, frequency, duration or market penetration. 4. Nature The trademark must be used in accordance with its registration, without altering its distinctive character. These four factors do not have to be proven in a single document, but they must be proven together. What evidence can be provided? The accreditation of the use of a trademark is based on a set of evidence that, analyzed together, allows demonstrating its actual exploitation in the market. The most common evidence includes: Invoices and delivery notes, Commercial catalogs, Advertising in media and promotional materials, Photographs of products or packaging, Presence at trade fairs or events, Sales reports or market research, Digital evidence (website, social media). A key aspect is that this evidence includes information about dates, territory and method of use, otherwise it may not be taken into account. Consequences of not proving the use of a trademark The lack of proof of use has a direct impact on trademark opposition proceedings. If the opponent: Does not submit evidence within the deadline; Submits insufficient evidence; Or submits evidence that fails to demonstrate effective use; The opposition will be dismissed. This means that a registered trademark can lose its ability to defend itself against new applications if it is not being used properly in the market. Furthermore, and apart from opposition procedures, an earlier trademark that is not in use may be subject to a cancellation action, which could lead to the loss of the registration. Usage testing and rebranding: a critical point Usage testing takes on special relevance in rebranding processes, where brands evolve over time. The use must be maintained in accordance with the registration or, at least, without altering its distinctive character. If the trademark used differs substantially from the registered one, there is a risk that the use will not be considered valid. Therefore, from a prudent perspective: It is advisable to align actual usage with the record. Update records as the brand evolves. Consider registering denominative versions to strengthen protection. Usage testing as a strategic element Usage testing has gone from being a technical issue to becoming a strategic element in brand management. It is not enough to register a sign: it is necessary to use it effectively, consistently and in a documented manner. Otherwise, their ability to defend themselves in opposition proceedings may be compromised. In this context, active brand portfolio management is key. This includes not only registration, but also monitoring the actual use of the trademarks and their suitability for registration, especially in scenarios of evolution or repositioning. In these types of situations, having specialized advice allows you to anticipate risks, properly structure proof of use, and strengthen the brand's position in opposition proceedings, integrating aspects such as brand monitoring and strategic management of the brand portfolio. Lucía Palomino, Lawyer in the Trademark Department at Elzaburu,

A Brazilian company markets granolas, cereals and bars under the name AUSTRALIA: The choice is striking: can a company commercially appropriate the name of a country with which its products do not necessarily share an origin? The short answer is it depends. Registering a country name is not prohibited per se; the problem arises when the consumer may understand that geographical name as information about the products or services and not as an indicator of their business origin. The case of Australia is particularly interesting because it allows us to see how much the same brand strategy can have a very different trajectory in Brazil and in the European Union. AUSTRALIA: from geographical reference to brand identity Hart's Alimentos Naturais is a Brazilian company dedicated to healthy food products such as granolas, cereals and protein bars. The corporate history links the choice of the Australia concept with the experience of one of its founders in the country and with certain values ​​associated with her lifestyle. The company has trademarks in Brazil that incorporate the term, such as HART'S NATURAL GRANOLA AUSTRALIA, GRANOLA AUSTRALIA or CHOCOPOPS AUSTRALIA, and applied in September 2025 for the trademark for products in class 30. The company has also expanded beyond Brazil. In May 2026, he filed a trademark application in Uruguay for products in classes 5 and 30. But would this strategy be equally viable in the European Union? Can a country's name be registered as a trademark in the European Union? The fact that a word is the name of a country, city, or region does not automatically prevent its registration as a trademark. The filter is based on whether or not the geographic origin is descriptive. The key, according to European jurisprudence, is to determine whether the consumer perceives "Australia" as an indicator of real origin or as an evocative/fantasy brand. And here's the interesting part: for example, the EUIPO rejected trademark no. 016746414 AUSTRALIA, in classes 12, 25, 28, 35, 37 (R 2207/2017-2), taking into account the size and political and economic weight of the country and considered that, due to its climate and harsh natural conditions, the sign could be perceived as an indicator that the products and services are "built to withstand". And, specifically in the food sector, in the ICELAND case (Grand Chamber, R 1238/2019-G), it was established that country names are perceived differently from other geographical indications, because the consumer tends to presume the national origin of the products. There, the trademark was denied for products in classes 29, 30, 31 and 32, as the country projects a positive image —innovation, sustainability, nature— capable of influencing the purchase. But there is a second front that should not be overlooked. Beyond the descriptive aspect, the fact that the brand is "AUSTRALIA" while the company is Brazilian and the products originate in Brazil could open the door to a ban due to its deceptive nature: a sign that leads the consumer to believe that the products come from Australia when in reality they come from another country can be considered misleading about the geographical origin. And this obstacle is especially delicate, because —unlike descriptiveness— it is not overcome by the distinctiveness acquired through use. In short, registering a trademark with the name of a country is possible, but the more well-known and the better "image" the country has for those products or services, the more difficult it becomes. In food and wellness, a country like Australia (associated with nature, sport and healthy living) has a good chance that the Office will assess descriptiveness or risk of deception regarding origin. And it is worth emphasizing that this problem is not limited to registration: the use of the trademark can also be controversial. The common denominator is the same as in registration —the risk of deception about the geographical origin—, but the difference is that, in use, that risk is channeled not only through Trademark Law (with the possible expiration of the trademark if its use is misleading), but above all through unfair competition, consumption and labeling, with open legitimacy for competitors and authorities. The same brand can have different results depending on the territory. The case also highlights an essential characteristic of trademark law: rights are territorial and a sign that is registrable in one country does not necessarily pass examination in another. In Brazil, Hart's has managed to register several trademarks that incorporate the term AUSTRALIA, taking advantage of the possibility expressly provided for in its legislation. Article 181 of the Industrial Property Law [1] establishes that a geographical name that does not constitute an indication of origin or a designation of origin may serve as a characteristic element of a trademark for a product or service, provided that it does not induce false origin. In other words, the rule does not authorize the registration of the geographical name as such, but its use as one of the elements that characterize and integrate the sign, under the essential condition that it does not generate a misleading association about the true origin of the products or services. In the European Union the analysis is based on a similar logic — to prevent the monopolization of descriptive terms or terms that could lead to error — but the EUIPO's practice has developed a particularly demanding criterion with respect to certain geographical names. Case law (starting with Chiemsee[2]) has established a tiered test that requires: (i) identifying the geographical location designated by the trademark and (ii) assessing the degree of public awareness of that location; (iii) evaluating the suitability of the location as the origin, manufacture, or design of the goods and services; (iv) assessing whether the public currently establishes a link between the location and the goods or services; (v) if no such link exists today, determining whether it is reasonable to assume that one will be established in the future, taking into account the public's familiarity with the name and the characteristics of the goods or services.Read more

The European Union Intellectual Property Office (EUIPO) has rejected the European Union trademark application LUX filed by Rosalía Vila Tobella. The decision is based on the perception that the Romanian-speaking public in the European Union would have of the term, considering that it would not be understood as an indication of business origin, but as a promotional or laudatory reference to luxury, superior quality or select products and services. The case is relevant for any company or creator seeking to protect a name throughout the European Union. The unitary nature of the European trademark means that an obstacle found in one part of the territory may prevent registration for all Member States. What products and services did the LUX brand intend to protect? The European Union Intellectual Property Office has rejected in the first instance the application for European Union trademark no. 019198973 LUX filed by Rosalía Vila Tobella. This application sought to distinguish products and services in classes 9, 25 and 41, which include, among others, musical recordings, downloadable audiovisual content, records, vinyl records, DVDs, glasses, smartphones, cameras, headphones, smartwatches, electronic publications, clothing, footwear and musical entertainment services and live performances. The application therefore covered various lines linked to the musical activity and the commercial exploitation of the artist's image, from recordings and digital publications to technological products, fashion and live performances. The procedure began with an initial objection communicated by the EUIPO on July 10, 2025. The applicant submitted observations on September 11 of that year. After examining them, the Office issued a second communication of reasons for refusal on February 3, 2026, in which it elaborated on its analysis in greater detail. As no new observations were submitted within the allotted time, the EUIPO maintained its objection and rejected the application on July 8, 2026. Why does the EUIPO consider that LUX cannot be registered as a trademark? The Office has considered that the LUX sign is descriptive and lacks distinctiveness for the Romanian-speaking public of the European Union. According to the EUIPO, the public would perceive the term as a direct reference to "luxury", "superior quality", "select" or "exceptional", and not as an indication of business origin. Consequently, the Office understands that LUX conveys a promotional or laudatory message applicable to the products and services requested, including musical recordings, audiovisual content, clothing, footwear and entertainment services. In other words, the consumer would not see in LUX a brand that identifies the business origin of those products or services, but an indication that they have a premium, exclusive or high quality character. The distinctive character is precisely what allows a brand to fulfill its essential function, which is none other than to enable the consumer to associate products or services with a specific company and differentiate them from those of other operators. A promotional expression is not automatically excluded from registration, but it must also be able to act as an indication of business origin. According to the EUIPO, this does not happen in the case of LUX. For the relevant audience, the term would simply highlight a positive quality of the products and services, without incorporating any unexpected element, linguistic play or particular construction that forces the consumer to make an interpretive effort. Therefore, the descriptive and laudatory perception would prevail over the distinctive function of a brand. Is the denial based solely on the Romanian public? Yes. Although in its first communication the EUIPO referred to both the English-speaking and Romanian-speaking publics, in its second communication the objection focused solely on the perception of the Romanian-speaking public of the European Union. The final decision refers to the reasons set out in that second communication, which the Office considers an integral part of the resolution. This point is especially relevant because it confirms one of the peculiarities of the European Union trademark, which is that if there is a reason for refusal in one part of the Union, the application can be refused in its entirety. In this case, the EUIPO considered it sufficient that the term LUX was perceived by the Romanian-speaking public as a promotional or laudatory reference to luxury, superior quality, or select products and services. What arguments did the applicant present? The applicant argued that the requested sign was LUX, and not the English term "luxury", so the two signs could not be automatically equated. He also questioned the linguistic sources used by the Office and argued that LUX could be understood with other meanings, in particular as the unit of measurement for illumination or as the Latin term for “light”. Furthermore, it cited the existence of other trademark registrations incorporating the LUX element, both before the EUIPO and the Romanian office, and noted that an equivalent application had been accepted for publication in the United Kingdom. The EUIPO rejected these arguments. In particular, it considered that the fact that LUX could have other meanings did not prevent appreciating its descriptive or laudatory character if, for the relevant public, one of its possible perceptions was that of luxury, superior quality or select character of the products and services requested. The Office also noted that the European Union trademark system is autonomous and is not bound by previous decisions of the EUIPO itself, national offices of Member States or offices of third countries. Although such background information may be taken into consideration, each application must be examined in light of its specific products and services, the relevant public, and the circumstances existing at the time of the examination. Therefore, the prior acceptance of other signs incorporating LUX was not sufficient to alter the Office's conclusion in this case. Is the denial of the LUX trademark final? No. The decision...Read more

What happens when a stadium hosting a World Cup match bears the name of a brand that does not officially sponsor the competition? The controversy surrounding some of the stadiums for the 2026 World Cup reflects this tension well, as many sports venues are typically identified by logos associated with major brands. Behind this situation are the so-called naming rights agreements, through which a company acquires the right to associate its brand with the name of a stadium for a certain period of time in exchange for financial compensation. These contracts constitute an important source of financing for the owners of the venues and, at the same time, a powerful positioning tool for the sponsoring companies, who seek to have the public immediately identify the stadium with their brand. In the recent competition, the event organizers required the omission of the use of such trademarks and the use of neutral names. This sets a playing field in which industrial property, existing naming rights agreements, the 2026 World Cup sponsorship program, and international broadcasts of a global sporting event coexist. Why do some stadiums change their names during the World Cup? The organization requires the stadiums selected to host the matches to change their names to prevent brands that are not sponsors of the event from appearing to be officially associated with the tournament. The World Cup has a sponsorship program based on granting exclusive commercial exploitation rights for certain categories of products and services. This exclusivity is one of the main assets of sports sponsorship, since those who acquire the status of official sponsor not only seek to gain visibility during the event, but also to prevent competitors or third parties from benefiting from its media impact without having assumed the cost of that investment. That's why organizers implement "clean site" policies. Under this criterion, the spaces linked to the competition must be free of distinctive signs and advertising elements unrelated to the official sponsorship program. This requirement can affect indoor advertising, signage, facades, supports visible from the stands, press areas, and, in some cases, the stadium's name itself. The aim is not to permanently eliminate the commercial identity or question the validity of the naming rights agreements, but to temporarily suspend its visibility while the stadium is integrated into the official tournament environment. In this way, the commercial exclusivity agreed with the official sponsors is preserved and third parties are prevented from obtaining an indirect association with the competition. Where is the link with industrial property? The link lies in the coexistence of different trademark rights and in the use of distinctive signs in an event subject to a commercial exclusivity regime. Industrial property protects trademarks, names and distinctive signs that identify the business origin of products or services. A World Cup brings together the official brands of the competition, the brands of authorized sponsors, licensing rights and naming rights agreements that commercially identify the stadiums. The conflict arises when a brand outside the group of official sponsors gains visibility within the perimeter of the event. This exhibition acquires special value due to the international dissemination of broadcasts, photographs, and informative and digital content of the tournament, which can generate in the public the perception of a commercial link with the competition. However, this presence does not generally correspond to an illicit use of the brand, but to the legitimate exercise of a naming rights agreement previously signed with the owner or manager of the premises. The difficulty lies in reconciling that contract with the obligations assumed by the venue towards the organizer and with the exclusivity rights granted to the official sponsors. From a branding perspective, naming rights agreements aim to consolidate a stable association between a brand and a sports venue. This continuity helps the public to spontaneously identify the stadium with the sponsoring brand and is one of the main factors justifying the investment made. Therefore, successive name changes or the temporary use of neutral names during major competitions do not weaken the brand in a legal sense nor affect the validity of trademark rights, but they can reduce the effectiveness of the distinctive and advertising function pursued by these agreements, by making it difficult for the consumer to maintain an immediate and stable association between the stadium and the sponsoring brand. The Atlanta case: when removing a brand is not so easy. The Atlanta case shows that “clean site” policies can encounter material limits. The Mercedes-Benz Stadium, home to the Atlanta Falcons and Atlanta United, is one of the most illustrative examples. During the World Cup it has been identified as Atlanta Stadium, following a practice already applied in Euro 2024, when stadiums such as the Allianz Arena were temporarily renamed Munich Football Arena. However, the Mercedes-Benz emblem integrated into the roof of the enclosure poses an added difficulty. Since it forms part of the structural design of the retractable roof, its removal or covering is not comparable to the removal of a conventional advertising support, as it could affect the integrity of the installation or generate disproportionate costs. This scenario highlights that the requirements arising from the clean site policy reach a limit when the brand is an inseparable part of the stadium's infrastructure itself. The response, therefore, has not been the elimination of the distinctive sign, but the adoption of balanced solutions through negotiation between the parties: maintaining the architectural element, limiting its exposure in broadcasts, and avoiding any additional use that could suggest a commercial association with the competition. The digital dimension: brands, campaigns, and social media during the World Cup. Industrial property is not only at stake in the stadium, but also in the digital environment. The use of expressions such as FIFA, World Cup, Copa Mundial or ...Read more

In Jersey, trademark protection is simple and quick, yet until now it could only be obtained by extending a British registration or through the Madrid Protocol designating the United Kingdom. Back in 2024, we announced on our blog that the country's administration was working on the creation of its own independent trademark registry, which was expected to be launched in the near future. Well, that moment will arrive on August 1, 2026, the date announced for the opening of the Jersey Trademark Registry. What changes in trademark protection in Jersey? From 1 August 2026, Jersey may be designated directly and independently to the Jersey office or as a designation through the Madrid System. This will allow brands to be protected in this territory without necessarily depending on the United Kingdom. From then on, the new office will act as the administrator of trademark rights in the country, as the office of origin to extend trademarks through the Madrid System, and as a Contracting Party if designated in an international application. This development is relevant for international trademark holders, as they will be able to include the country as a specific territory within their protection strategy, especially when there is activity directed at this market. Declaration of intent to use in Jersey One of the most notable features of Jersey as a Contracting Party of the Madrid System is that its selection will require a declaration of intent to use and it will therefore be necessary to comply with the formalities that the office decides to require. This requirement should be kept in mind from the beginning, because it is not just a matter of adding a new territory to an international application. The designation of Jersey must be aligned with a realistic forecast of trademark use in the country and with the formal requirements that your office will ultimately establish. What will happen to existing trademark rights in Jersey? Whenever changes of this magnitude occur, the most immediate question, and the one that generates the most concern, is how the new developments fit into the previous status quo. It is presumed that the rights obtained in Jersey prior to the extension of a British trademark will remain unchanged, although it remains to be seen how they articulate the dependence of the validity between the two. I dare to predict that the right will continue independently, maintaining the priority dates of the British trademark. As regards international trademarks that designate the United Kingdom and that are already registered on the effective date, i.e., August 1, 2026, a simple transition is foreseen through a sort of “pseudo-cloning” of the designation in the British parent, in a new daughter in Jersey. Applications pending before 1 August 2026 In applications pending before the effective date, independent protection will be recognized in Jersey once the registration procedure in the United Kingdom is completed; if this is not granted before 1 August, no right will arise in Jersey. However, it should be understood that, from August 1, 2026, a new independent designation may be made in Jersey, which would not be affected by the events that occurred in the United Kingdom. But what will happen to procedures that are in progress on August 1st and that are ultimately rejected in the United Kingdom after August 1st? In my opinion, these will have no effect in Jersey and will necessarily have to be replicated directly in the new jurisdiction. What should companies with international brands review? From a practical point of view, this change suggests reviewing international portfolios before the new system comes into effect. It is advisable to identify which trademarks are currently protected in Jersey by extension of a British right, which UK designations are still pending, and in which cases it may be advisable to apply for a separate Jersey designation from 1 August 2026. The incorporation of Jersey as a proper designation within the Madrid System brings more clarity and flexibility, but also requires at least a review of existing rights to avoid inconveniences. For companies with interests in this territory, anticipating needs will be the best way to avoid doubts about the actual scope of their trademark protection.   Cristina Arroyo, Associate Partner and Director of the international brand area at ELZABURU

Organizing a papal visit requires complex planning: security, transportation, accreditation, spaces for pilgrims, institutional communication, and coordination between different administrations and entities. But there is another, less visible element that is also part of that preparation: the protection of the distinctive signs that officially identify the event. In these types of events, the logo, slogan, or graphic image is how the public identifies official communication, recognizes authorized products, and distinguishes which uses are truly endorsed by the organization. Therefore, before and during a visit of this nature, trademark protection can become an especially useful tool. It's not just about registering a symbol. The aim is to protect the identity of the event and its exploitation. Trademark registrations for the visit of Pope Leo XIV to Spain. On the occasion of the visit of Pope Leo XIV to Spain, the Spanish Episcopal Conference has requested the protection of the official signs linked to the trip from the Spanish Patent and Trademark Office. Specifically, two national trademark applications have been identified relating to the official logo, one in color and one in black and white, as well as the protection of the slogan “Look Up”. Trademark registrations requested by the Episcopal Conference at the OEPM for the visit of Pope Leo XIV to Spain. The visit generates intense communication activity and a natural demand for commemorative products: t-shirts, mugs, rosaries, publications, posters, souvenirs or promotional materials. Therefore, having registered trademarks allows you to control who can use the logo or slogan, under what conditions, and for what products or services. This movement allows us to clearly see how industrial property operates in events of great public impact. Although it is a religious and institutional event, its identifying symbols can acquire a very relevant economic, reputational and organizational dimension. The protection of symbols linked to papal visits or major religious gatherings is not a new practice. In previous editions, various organizations have protected logos, slogans and names associated with these events. A recent example can be found in the Lisbon 2023 World Youth Day, whose logo and motto were conceived as central elements of the meeting's identity. These symbols served not only to communicate the spiritual message of the event, but also to identify official materials, authorized products, campaigns, accreditations, and communication media. Trademark registration requested by the Fundação JMJ Lisboa 2023 at the EUIPO for the visit of Pope Francis to Lisbon. Slogans or symbols linked to papal visits have also been registered in other countries, precisely to avoid unauthorized commercial uses and preserve the institutional identity of the trip. In Colombia, on the occasion of Pope Francis' visit in September 2017, the Episcopal Conference of Colombia registered the motto "Let's take the first step" for religious services. Trademark registration requested by the Episcopal Conference of Colombia at the EUIPO for the visit of Pope Francis to Colombia (2017) In Chile, the Chilean Episcopal Conference protected the motto "My peace I give you", linked to the pontifical visit of January 2018. Trademark registration requested by the Episcopal Conference of Chile at the EUIPO for the visit of Pope Francis to Chile (2018). And in the United States, the Archdiocese of Philadelphia registered several expressions related to the visit of Pope Francis in 2015, including “Love is Our Mission: The Family Fully Alive” and its Spanish version, “El amor es nuestra misión: la familia llena viva,” although these registrations are no longer in force. The logic is similar to that applied in sports competitions, world expositions, international congresses or large cultural festivals: when an event generates a recognizable identity and associated economic activity, its distinctive signs may need protection. Event branding: a lesson for companies and institutions The Pope's visit is, above all, a religious and institutional event. But it is also an event with a visual identity, an official message, coordinated communication, and associated economic activity. Any event with its own identity can generate intangible assets that should be identified and protected from the beginning. Trade fairs, congresses, corporate anniversaries, festivals, institutional campaigns, international meetings or product launches can create signs with their own value: names, slogans, logos, hashtags, visual identities or specific denominations. Failing to protect them in time can open the door to unauthorized uses, third-party registrations, or conflicts that hinder communication and exploitation of the event. It can also complicate the management of merchandising, sponsorships, collaborations, or official materials. Therefore, brand strategy should be part of the planning from the earliest stages. Before launching a public identity, it is advisable to conduct preliminary searches, assess the registrability of the mark, correctly define the products and services affected, and decide in which territories it is of interest to protect it. Rosa Torrecillas, Associate in the Trademark Department at Elzaburu. Frequently Asked Questions about Trademarks and Events. Can the slogan of an event be registered as a trademark? Yes, provided that the slogan has distinctive capacity and does not incur absolute prohibitions on registration. You must be able to identify a business, institutional, or organizational origin in relation to certain products or services. Why register the logo of a visit or conference? Because it allows you to control its use, authorize it through licenses, and take action against third parties who use it without consent, especially in products or services related to the event. Does registration prevent any use of the mark? Not necessarily. Protection depends on the scope of the registration, the designated products and services, and the type of use made by third parties. Each case must be analyzed individually. What happens to unauthorized merchandise? If you use registered trademarks or create confusion about their official nature, the trademark owner may take action to request cessation, product withdrawal and, where appropriate, compensation. What should companies do before launching an event with a specific identity...Read more

The digital environment has strained one of the classic principles of trademark law: territoriality. In a context where any website is potentially accessible from multiple countries, a key question arises for companies and rights holders: under what circumstances is an online activity considered to be directed at the public of the European Union (EU) and, consequently, likely to constitute a trademark infringement in that territory? The Judgment of the Provincial Court of Alicante of September 15, 2025 provides relevant criteria in this regard, when analyzing whether the activity of the website camelstore.com constituted an infringement of the Spanish and EU trademarks CAMEL. The CAMEL case: context and conflict The litigation pitted Japan Tobacco Inc., owner of several CAMEL brands, against two companies that marketed products (footwear, clothing and accessories) using signs identical or very similar to said brand, both in name and graphics. The activity was carried out via the internet, mainly through the website camelstore.com. Initially, the lawsuit was dismissed. The court understood that it had not been sufficiently proven that the activity was directed at the EU public, even though the website was accessible from this territory. Among the elements considered were the use of English, the currency in dollars, and the absence of explicit references to the EU. However, the Provincial Court reviews this approach and offers an interpretation more in line with the reality of electronic commerce. Accessibility vs. Targeted activity: the key in trademark law One of the central points of the ruling is the confirmation of a consolidated criterion in European trademark law: the mere accessibility of a website from the EU is not enough to establish an infringement. For there to be an infringement, it is necessary to prove that the use of the sign occurs in the economic traffic of the EU. This involves analyzing whether the activity is effectively directed at consumers in this territory, in accordance with the doctrine of the Court of Justice of the European Union. This approach avoids an automatic and excessive application of trademark law on the internet, but also requires a more rigorous evidentiary analysis. The evidence that demonstrates the orientation towards the EU market Unlike the court of first instance, the Provincial Court considers that there were sufficient elements to prove that the activity of camelstore.com was directed to the EU public. Actual sales in the EU One of the most decisive factors was the existence of effective sales to consumers located in Spain, France, the Netherlands and Portugal. This demonstrates that the activity was not merely potential, but was materializing in the EU market. Continuous commercial operations in the EU The documentation provided reflected hundreds of operations destined for EU countries, which showed a stable and not occasional commercial activity in this territory. Specific shipping conditions to the EU The website included detailed information on shipping to 23 EU countries, including delivery times, costs and conditions. This element reinforces the intention to target European consumers in a clear and organized manner. Language and currency: not determining factors The Court rules out that the use of English or dollars excludes orientation towards the EU. English is common in international trade and automatic currency conversion removes real barriers for the consumer. Use of additional platforms In addition to the website, the products were marketed in the EU through platforms such as AliExpress, which reinforced the existence of a sales strategy in the EU market. Trademark infringement: use in the EU economic trade Once the orientation to the EU market has been proven, the Court analyzes whether there is a trademark infringement. The court concludes that it does, based on several elements: Identity or high similarity between the signs used and the CAMEL trademarks; Use for identical or related products; Renown of the earlier trademark; Existence of a link in the consumer's mind. In this context, it finds an unfair advantage of the distinctive character and renown of the trademark, which constitutes an infringement under Spanish and EU trademark law. Legal consequences of the ruling The Provincial Court revokes the first instance decision and upholds the claim. Among the main measures agreed upon are: Cessation of the use of the CAMEL mark and the domain camelstore.com Removal and destruction of infringing products Compensation for damages (calculated, among other criteria, on the volume of business) Daily coercive fine in case of non-compliance Practical keys of the case for trademark law This ruling confirms that, in the field of trademark law, infringement on the internet cannot be analyzed from a single isolated element. Neither the accessibility of a website from the EU is sufficient, nor are factors such as language, currency or domain name sufficient to exclude the existence of an infringement. The analysis must begin with a joint assessment of the available evidence. The determining factor is being able to place the use of the sign in the economic traffic of the EU. In this case, the existence of actual sales, shipping conditions to multiple EU countries, and continuous commercial operations proved key to demonstrating that the activity was directed towards the EU market. From a broader perspective, the case reflects one of the main current challenges of trademark law: balancing the global nature of the internet with the principle of territoriality. The resolution shows that the possibility of access or occasional sales is not enough, but a contextual and evidentiary analysis is necessary to determine the true orientation of the commercial activity. For companies, this criterion has direct implications both for the defense of their brands and for their digital strategies. Monitoring, evidence gathering, and analysis of how online marketing operates are essential for identifying risks and acting with legal certainty in an environment...Read more

2026 marks 30 years since the government of Andorra launched its Trademark Registry. Since then, and especially after the opening of the Office of Trademarks and Patents of the Principality of Andorra (OMPA) in December 1996, the country has been gaining ground as a very attractive jurisdiction for companies, both national and international, interested in protecting their intangible assets. Over these three decades, Andorra has experienced remarkable international projection and significant economic evolution. In parallel, its trademark system and registry have transitioned from a traditional administration to a modern, digitized body.  This anniversary coincides with a particularly significant moment for many rights holders who applied for their trademarks between 1996 and 1997, now close to their renewal. Trademark registration in Andorra: the beginnings of OMPA At 9 a.m. on December 5, 1996, the facilities that would receive the first trademark applications processed by the Office of Trademarks and Patents of the Principality of Andorra (hereinafter, OMPA) opened their doors in the old B&B Club building. The first applications came mainly from Andorran public bodies and international companies particularly sensitive to the protection of their industrial property. The speed of those initial procedures already foreshadowed one of the features that would eventually characterize the Andorran system: streamlined procedures and simple and efficient registration management. Andorran legislation was also born aligned with international standards, even though it has not adhered to the Madrid Protocol for the registration of trademarks nor is it a member of the European Union. However, the Nice Classification applies (with nuances) and is valid for ten years from the date of application, renewable indefinitely for successive periods of ten years. From its inception, the Andorran system was well received by international holders, especially companies with interests in Spain and France. The procedure was set up in Catalan, the country's official language, and with the euro as the currency for paying fees, even though Andorra is not part of the European Union. In recent decades, the Principality has established itself as an idyllic environment for business, finance, tourism and trade, which has also resulted in an increase in brand deposits in the country, with an annual increase of over 25%. What were the first trademarks registered in Andorra? The first trademarks registered in Andorra had a distinctly institutional character. Thus, applications number 1 and 2 corresponded to the Govern d'Andorra, Departament de Turisme, including the well-known brand "Andorra, el país dels Pirineus" and its logo, one of the country's longest-standing slogans, an element of tourism promotion of its nature, mountain sports and exclusive commerce. Trademark number 1 «Andorra, the country of the Pyrenees», applied for on December 5, 1996 at 09:06. Trademark number 2 applied for on the same day at 09:18. The third trademark registered in Andorra corresponded to the Institut Nacional Andorrà de Finances, filed on December 5, 1996 at 09:34. Following the aforementioned public entities, and probably out of deference and because of the symbolic nature of the day, private and foreign companies did not arrive until positions 4, 5 and 7. Anheuser-Busch, LLC was careful to submit its trademarks at 10:47, 10:56 and 11:35, respectively, delivering the corresponding forms to the office for its emblematic brands: BUD BUDWEISER. Already with number 15, the Spanish hotel group Meliá, requests its flagship brand GRAN MELIÁ, one of the first brands in the tourism sector, a sign of the importance of this sector for the economy of the area. How Andorran trademark legislation has evolved The evolution of the Andorran trademark system did not stop after the opening of the OMPA and the subsequent creation of the Servei de Signes d'Estat, attached to the OMPA, in 1998. As a result of the modernization and technological development efforts of the last decade, the integration of the Electronic Office and the Transparency Portal are particularly noteworthy, allowing some procedures to be carried out online. In parallel, during these years, ELZABURU has managed more than 4.000 trademarks in the Principality and has actively participated in leading international publications on industrial property and Andorran trademark law. Brand renewal in Andorra: why 2026 and 2027 will be key years? Thirty years after those first applications, many of the trademarks registered between 1996 and 1997 are still valid and will have to face a new renewal cycle between 2026 and 2027. This aspect has practical importance in terms of the volume of actions. Well, during the first years of operation of the OMPA, very high numbers of applications were recorded, concentrating one of the largest volumes in its entire history. Consequently, it is possible to anticipate that during the remainder of 2026 and throughout 2027, there will be a significant increase in renewal procedures, especially for holders with extensive portfolios. Therefore, it is advisable to review in advance the status of trademarks that expire within the next 18 months and plan renewals appropriately to ensure the continuity of rights.   Cristina Arroyo, Associate Partner and Director of the Foreign Brands Area at Elzaburu.

Judgment of the Court of Justice of 11 January 2024, Inditex (C-361/22) Facts The Spanish Supreme Court submits a request for a preliminary ruling concerning the interpretation of Article 6(1)(c) of Directive 89/104/EEC. The request is filed within the framework of a lawsuit between Industria de Diseño Textil, SA (hereinafter, “Inditex”) and Myalert, SA (hereinafter, “Buongiorno”) for an alleged infringement of the rights conferred by a national trademark owned by Inditex for the use made by Buongiorno of a sign identical to that trademark without the consent of Inditex. The dispute arose from an advertising campaign launched by Buongiorno, in which potential customers were encouraged to participate in a raffle, one of the prizes being a ZARA gift card worth 1.000 euros. Buongiorno is a provider of information services via the Internet and mobile telephony, which in 2010, the date on which the events that gave rise to the Judgment occurred, launched an advertising campaign for the subscription of a paid service, consisting of the sending of multimedia content via SMS, for whose growth among the public it included a series of promotional activities, such as participation in the contest described above. Inditex considered that Buongiorno's use of the Spanish national brand ZARA infringed its exclusive rights, and filed a lawsuit before the Commercial Court No. 2 of Madrid, exercising an action for trademark violation. Inditex based the action on the existence of a risk of confusion, the exploitation of the brand's reputation and the damage caused to said reputation. Buongiorno denied the infringement of such rights, arguing that the use made of the ZARA brand had been a one-off use, not made as a trademark, with the purpose of indicating what one of the gifts offered to the winners of the draw consisted of. Buongiorno considered that this use was referential and fell within the lawful uses of other people's distinctive signs. After the Court of First Instance dismissed Inditex's claim, the company filed an appeal with the Provincial Court of Madrid, which in turn dismissed the appeal, considering that the use made by Buongiorno did not damage the reputation of the ZARA brand and that there was no undue exploitation of its reputation. Inditex lodged an appeal with the Supreme Court, which, as the referring court, posed the following question: “Should Article 6.1(c) of Directive [89/104] be interpreted as implicitly including within the scope of trademark law the more general conduct now referred to in Article 14.1(c) of Directive [2015/2436]: use of the trademark to designate goods or services as belonging to the proprietor of that trademark or to refer to them?” The referring court considered that Buongiorno’s use of the ZARA trademark fell within the scope defined by Article 37(1)(c) of the Trademark Act, in its initial version, which was applicable ratione temporis to the dispute that was the subject of the appeal, and which was equivalent to that of Article 6(1)(c) of Directive 89/104. The Spanish Supreme Court considered that Buongiorno's conduct might fit better under Article 14(1)(c) of Directive 2015/2436 than under Article 6(1)(c) of Directive 2008/95. Rulings The Court of Justice concludes that the scope of Article 6(1)(c) of Directive 2008/95 is more limited than that of Article 14(1)(c) of Directive 2015/2436, insofar as Article 6(1)(c) refers only to the use in the course of trade of the mark where it is necessary to indicate the purpose of a product or service. This interpretation is corroborated by the genesis of the Directive. The Court recalls that the purpose of Article 6(1)(c), which consists of limiting the effects of trademark law, is none other than to reconcile the fundamental interests of the protection of trademark rights and the free movement of goods and the free provision of services in the internal market. In this respect, the Court considers that the scope of application of this provision is not limited to situations in which it is necessary to use a trademark to indicate the destination of a product "as an accessory or spare parts". The situations included within the scope of the aforementioned provision must be limited to those that correspond to the objective of the limitation, to the extent that it was foreseen, so that suppliers of complementary products or services of a product may use said trademark to inform the public in a comprehensible and complete manner of the destination of the product they market or the service they offer, understood as the functional link between their products or services and those of the trademark holder.   During the drafting of Directive 2015/2436, the aim was to extend the scope of the limitation previously set out in Article 6(1)(c) of Directive 2008/95 to allow the owner of a trademark to prevent the fair and honest use of the trademark to designate products or services as his own, or to refer to them. Therefore, the scope of the limitation provided for in the earlier version of the Directive article concerning the limitation of rights conferred by the trademark (i.e., Article 6.1(c) of Directive 2008/95) is narrower than that of the later version of the same (i.e., the wording of Article 14(1)(c) of Directive 2015/2436). Therefore, it answers that Article 6(1)(c) of the Directive must be interpreted as referring to...Read more

In Qatar, as in other countries where Sharia law prevails, the prohibition of alcohol applies to both citizens and tourists, and therefore it is not possible to sell alcoholic beverages without a special permit. It is possible to consume alcoholic beverages in specific establishments, in hotels and restaurants that have obtained a license, or, if the purchase is for personal consumption, only under certain conditions that affect even the method of transport of the product or the quantity that can be purchased. To respect the country's customs, obviously, it is also not possible to drink alcohol in the street or to be found in a state of intoxication. Qatar 2022 World Cup As a curious anecdote, in an environment like the Qatar 2022 World Cup, the first world championship organized in the Middle East and which presupposed a certain break with certain stereotypes, prejudices and clichés, the sale of alcohol also had its moment of media prominence. According to international press reports, this was the subject of last-minute negotiations between FIFA and Qatari authorities who initially agreed to the sale of beer in restricted areas, but then reversed this decision just days before the tournament's opening. Change in trademark practice in Qatar in February 2026 Well, the country has announced at the beginning of this year 2026 a relevant change in its trademark practice that directly affects the alcoholic beverage sector. Until now, the aforementioned legal limitations surrounding the sale and consumption of alcohol have, in practice, prevented the registration of trademarks for this type of product. Adoption of the 13th edition of the Nice Classification The adoption of the 13th edition of the Nice Classification marks a turning point, by allowing for the first time access to registration in all classes of products and services, from 1 to 45, thus including products in classes 32 and 33 which include alcoholic beverages. Class 32: Beers Class 33: Wines, spirits and alcoholic beverages Opportunity for Spanish and European companies For Spanish and European companies, this represents an opportunity to anticipate the protection of their brands, regardless of other legal, regulatory and social considerations that will determine what can be eaten and drunk in Qatar and that will have to continue to be complied with. Alignment with other Gulf Cooperation Council countries This decision also aligns Qatar's position with that of other Gulf Cooperation Council countries, eliminating administrative barriers, opening a strategic window of opportunity for global brands, and avoiding the need to twist strategies to obtain some protection. Special impact for the Spanish wine and beer sector. Given that our country has one of the largest vineyard areas, is one of the world's largest wine producers, and the beer industry is also an agri-food pillar of our economy, and some of our brands have a presence in international markets, this news will surely generate interest. And not only to protect trademark rights in advance, but also to establish monitoring measures against third-party requests.   Cristina Arroyo, Director of the Foreign Brands Area at ELZABURU