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

Judgment of the Court of Justice of 18 January 2024, Hewlett Packard (C-367/21) Facts The present judgment arises from a request for a preliminary ruling submitted by the Polish courts to the CJEU concerning the interpretation and scope of art. 13.1 of Regulation (EC) no. 207/2009 on the Community trademark (current art. 15.1 of Regulation 2017/1001 on the EU M (“EURM”)) in relation to arts. Articles 34 and 36 TFEU. The facts of the case were as follows: Hewlett Packard Development Company LP (“Hewlett Packard”) is the holder of two MUEs on the HP trademark. Hewlett Packard markets computer equipment products under these brands through authorized representatives who agree not to sell them, except to end users, to persons outside their distribution network. Furthermore, these authorized representatives are required to purchase these products exclusively from other authorized representatives or from Hewlett Packard itself. HP products do not include any marking system that, by itself, allows determining whether or not a copy is intended for the European Economic Area (EEA) market. Senetic, SA (“Senetic”) engages in the distribution of computer equipment. Senetic introduced products designated with the HP MUEs in Poland. He purchased these products from vendors established in the EEA territory, other than the official distributors of Hewlett Packard products, after receiving assurance from these vendors that the marketing of such products in the EEA did not infringe the exclusive rights of this company. In addition, Senetic unsuccessfully requested confirmation from Hewlett Packard's authorized representatives that these products could be marketed in the EEA without infringing on Hewlett Packard's exclusive rights. Hewlett Packard filed a trademark infringement action against Senetic in Polish courts to stop the company's sales of HP products. In its defense, Senetic invokes the exhaustion of the rights conferred by the plaintiff's EUMs, alleging that the HP products were previously marketed in the EEA by Hewlett Packard or with its consent. The Polish Court of First Instance decided to suspend the proceedings and refer two preliminary questions to the CJEU concerning the interpretation of art. 15.1 of the RMUE. Rulings The CJEU only examines the second preliminary question in the judgment. This raises the question for the CJEU of whether, in circumstances such as those of the main proceedings, the burden of proof of exhaustion of the rights conferred by the MUEs can fall exclusively on the defendant. In its response, the CJEU points out, as a starting point, that neither the EU Trademark Regulation nor Directive 2004/48 regulate the issue of the burden of proof of exhaustion conferred by the trademark. It is a matter that, in principle, is governed by national law. However, the CJEU adds that national methods of administering and assessing proof of exhaustion of trademark rights must respect the requirements arising from the principle of free movement of goods and, therefore, must be modified where they may allow the trademark holder to compartmentalize national markets. This leads the CJEU to conclude that, in circumstances such as those in this case, it will be possible to modify the rules of evidence. That is, when, on the one hand, the parallel products: do not bear any marking that allows third parties to identify the market in which they are intended to be marketed; are distributed through a selective distribution network whose members can only resell them to other members of that network or to end users; and have been acquired by the defendant in the EU/EEA after having obtained from the sellers the guarantee that they could be legally marketed in that area, AND, on the other hand, the trademark holder has refused to carry out the verification of the legality of the products in question at the request of the acquirer (the defendant), and the defendant's suppliers were not willing to reveal their own sources of supply. Specifically, in these circumstances, the burden of proof shall be distributed so that: it is up to the trademark holder to prove that he or she carried out or authorized the first placing of the copies of the products in question outside the EU/EEA; and if this is proven, it is up to the defendant to prove that those same copies were subsequently imported into the EEA by the trademark holder or with his or her consent. Commentary The judgment in question is relevant because it modifies the current rules on evidence (see Van Doren + Q (C-244/00) case) to balance the interests of trademark holders and legitimate parallel importers. However, the modification of this regime is not total since the reversal of the burden of proof proposed by the CJ is only intended to operate with regard to the proof of the non-community origin of the product from parallel production (which under the new doctrine would correspond to the trademark holder); but only within the framework of the factual circumstances described above (see sections). 61 and 67 of the judgment). Enrique Armijo, Partner in the Legal Department of ELZABURU.

Supreme Court Judgment of June 30, 2025, Ron Barceló (ECLI:ES:TS:2025:3307) 1. Facts: Several beverage distribution companies filed a lawsuit against Barceló Comercial Internacional, SA and Importaciones y Exportaciones de Varma, SA, requesting that it be declared that they had acted unlawfully by using their rights over the Ron Barceló trademark to prohibit the marketing of products with said trademark within the European Economic Area (EEA), incurring in acts of unfair competition and infringing European competition defense rules. The plaintiffs sought a declaration that the acquisition of Ron Barceló from EEA suppliers at prices lower than those set by Spanish distributors was lawful since, as the goods originated in the EEA, the rights to the Ron Barceló trademark had been exhausted. The defendants opposed the claim, alleging that there was no exhaustion of rights, and filed a counterclaim exercising the action for infringement of the Ron Barceló trademarks in relation to the plaintiffs' sales of products with said trademark without their authorization. In the first instance, the European Union Trademark Court No. 1 of Alicante issued a judgment dismissing the claim in its entirety and upholding the counterclaim. In the second instance, the 8th Section of the Provincial Court of Alicante (European Union Trademark Court) essentially confirmed the first instance ruling, with some modifications to the content of the judgment. The Provincial Court considered that, although the lawsuit did not name it as such, what was being exercised in it was a negative action of infringement of the Ron Barceló trademark. Although this action is not regulated in the Trademark Law, it is contemplated in article 121.1 of the Patent Law, which the Court considers applicable by reference provided in the first additional provision of the Trademark Law. However, it dismisses the action because it considers that the necessary circumstances for the exhaustion of the trademark right were not present in the case. The plaintiffs filed an extraordinary appeal for procedural violation and cassation against the appeal judgment, which were entirely dismissed by the judgment under comment. 2. Rulings In their appeal, the plaintiffs raised several grounds for cassation regarding the issue of the trademark owner's consent to the marketing of products with the same in the EEA and the burden of proof regarding the existence of the exhaustion of the trademark right. The Supreme Court, relying on the copious jurisprudence of the Court of Justice of the European Union on exhaustion, begins by recalling that, as a general rule, the CJU understands that the trademark holder has given his consent to market his products within the EEA when he has been able to control the marketing of the products by third parties, since this control allows safeguarding the essential function of the sign of identifying the commercial origin of the product. Furthermore, the Supreme Court acknowledges that consent can be tacit, but emphasizes that the Court of Justice has indicated that, in order to appreciate the existence of such tacit consent, certain prior, concomitant or subsequent elements and circumstances must be present that reveal with certainty the waiver of the trademark holder to oppose his exclusive right. And, in this case, the Supreme Court agrees with the Provincial Court that such certainty does not occur. Regarding the burden of proof, the appellants invoked the case law of the CJEU which establishes the reversal of the burden of proof in those cases in which imposing that burden on the alleged infringer allows the trademark holder to compartmentalize national markets, as may occur in cases where it markets its products in the EEA through an exclusive or selective distribution system. The Supreme Court reviews the CJEU's rulings on this issue and points out that the burden of proof for exhaustion varies depending on knowledge of the place of first marketing of the product: if it is unknown and there is a risk of market compartmentalization, the burden of proof will fall on the trademark holder and not on the parallel importer; however, if it is known from the outset that the product was first marketed outside the EEA and the trademark holder can prove it, there is a presumption that they have not consented to the subsequent entry of the products into the European market and it will be up to the parallel importer to prove that such consent has occurred. Based on these premises, in the case under consideration, the Supreme Court rejects the appeal of the plaintiffs, since it considers that they are making a bet on the issue since it has not been proven in the instance that Ron Barceló is distributed under an exclusive distribution regime nor that there is a risk of market compartmentalization. Finally, the Supreme Court also rejects the grounds for appeal that argued that the fact that an EEA distributor was identified in the original labeling of the products was a determining indication of the existence of tacit consent. The Court considers that it could be an indication to be taken into account along with others to reach a certain level of proof in relation to consent, but that on its own it is not sufficient to declare the existence of tacit consent. 3. Commentary The relevance of this ruling lies in the confirmation of the possibility, recognized on appeal by Section 8 of the Provincial Court of Alicante, of bringing a declaratory action of non-infringement -negatory or boastful action- in matters of trademark rights, equivalent to that contemplated in article 121.1 of the Patents Law. In this sense, the reference to the regulation established in that precept has important consequences, among them the requirement to comply with the requirement of prior request to the holder of the right in the terms of the second paragraph of the article. In this case, one of the...Read more

The European Union Intellectual Property Office (EUIPO) has recently refused to register the ROBOTAXI trademark applied for by Tesla to identify vehicles and services related to autonomous transportation. The term is associated with the company's autonomous mobility project, which plans to deploy a network of driverless vehicles for passenger transport. However, the Office has considered that the Robotaxi sign is descriptive of the products and services requested. The decision is especially relevant in a context where emerging technological concepts (such as autonomous driving) generate new terms that are quickly incorporated into common language. In these cases, the boundary between a name that can be registered as a trademark and a merely descriptive term can be decisive for the protection of industrial property assets. Background of the case To understand the EUIPO's decision, we must consider the following applications: The company Robotaxi Ltd applied for EU trademark no. 013813167 ROBOTAXI (March 11, 2015) to designate: Car hire; Vehicle hire; Transport by hire car; Car hire; Taxi services; Passenger transport; Taxi services; Facilitation of hire vehicles for passenger transport. This trademark was granted on 21/10/2015 without opposition. Subsequently, Monsieur ZOUBIER HARBAOUI applied for the French trademark No. 716940 ROBOTAXI (on December 30, 2020), for classes 9, 12, 39, 42. This registration was granted on June 2, 2021. Recently, Testa, Inc. has applied for EU trademark nº 019171190 ROBOTAXI which designates products in class 12 (Land vehicles; electric vehicles, namely automobiles; automobiles; and structural parts therefor) and services in classes 39 (Leasing of motor vehicles; transportation and storage of automobiles; transportation of passengers and goods; coordinating travel arrangements for individuals and for groups, namely, arranging time-based ridesharing services for individuals and for groups; vehicle rental services; vehicle sharing services, namely, arranging and coordinating temporary use of vehicles; transportation and delivery services, namely, monitoring, managing, and tracking of transportation of persons and delivery of goods and packages; namely, arranging and coordinating peer-to-peer vehicle sharing and rental services). Decision In this case the EUIPO has rejected the application since it understands that the ROBOTAXI sign is descriptive of the products and services requested. Specifically, it understands that for relevant audiences it will be perceived as a “Taxi driven by a robot; automatic non-human driven vehicle, intended for personal transportation.” Testa, Inc. It appears that he argued in his defense that the Office has accepted very similar signs, some of them even submitted by the same applicant, and that it must ensure that comparable cases are resolved in a comparable manner, unless an objective and factual distinction justifies a different outcome. However, the EUIPO points out that "decisions concerning the registration of a sign as a European Union trademark (...) are taken in the exercise of circumscribed powers and are not a matter of discretion." Consequently, the registrability of a sign as MUE must be assessed in accordance with the provisions of the EU Trademark Regulation and not on the basis of the Office's previous practice. It also notes that market practices, languages, and examination practices evolve over time, and some of the cited trademarks were accepted because, at the time of their application, they were considered registrable, even though that is no longer the case today. Conclusion The EUIPO has rejected the application for the ROBOTAXI trademark because it considers it descriptive, but it should be noted that this is not contradictory to previous decisions since: It is not bound by previous decisions either of the EUIPO itself or of other offices (such as the French one). The criteria used in previous applications do not necessarily conform to the criteria currently applied, given that linguistic usage varies over time. Elzaburu and trademark advice: Protecting distinctive signs in emerging technology sectors requires carefully analyzing registrability requirements, especially regarding distinctiveness and the risk of a term being considered descriptive of the products or services it identifies. At Elzaburu we advise national and international companies on the design of trademark registration strategies, monitoring of trademark portfolios and defense of their rights before offices and courts.   Marta Rodríguez, Associate Partner in the Brands area of ​​Elzaburu.

Judgment of the Court of Justice of 25 January 2024, AUDI (C-334/22) 1. Facts AUDI, a car manufacturer, is the holder of the European Union figurative trademark No. 000018762, reproduced below, whose protection extends, among other products and services, to “land, air and sea vehicles, parts of these products (included in Class 12), including motors for automobiles” included in Class 12. GQ, for its part, is a natural person who marketed, through the Internet, radiator grilles, adapted and designed for AUDI car models from the 80s and 90s. These grilles were not original, but they incorporated an element whose shape allowed the manufacturer's emblem to be fixed and reproduced totally or partially the figurative AUDI brand. AUDI filed legal action before the Sąd Okręgowy w Warszawie (Regional Court of Warsaw, Poland) to prevent its importation and marketing, alleging infringement of its trademark rights and also requesting the destruction of the parts seized by the authorities. The Polish court considered it necessary to clarify: (i) whether that fixing element which reproduces the mark constitutes a use in the course of trade likely to conflict with AUDI's prior rights; (ii) whether the use of elements intended to fix the manufacturer's emblem can be covered by the limitation of Article 14.1.c) of the EU Trademark Regulation; and (iii) whether, given that the sign forms part of the configuration of a component of the automobile, the so-called "repair clause" of the Community designs and models Regulation could be applied by analogy. 2. Rulings On this basis, the Court of Justice categorically rules out the possibility of applying by analogy the remedy clause provided for in Article 110 of Regulation 6/2002, provided for drawings or designs, recalling that the European Union legislator decided not to incorporate an equivalent exception in the field of trademarks. Consequently, the holder's exclusive right must be assessed solely in accordance with Articles 9 and 14 of the EU Trademark Regulation. The Court notes that the use of a sign identical or similar to the trademark in economic transactions includes, among other things, placing that sign on a product intended for marketing, offering it, storing it or importing it. In this regard, the Court states that the shape of the element of those radiator grilles intended to fix the AUDI emblem constitutes a sign within the meaning of Article 9.2 of the EU Trademark Regulation and that, therefore, its placement and integration into the radiator grilles, with a view to marketing, constitutes a use covered by Article 9.3. of the RMUE. Furthermore, the Court notes that such use may undermine any of the functions of the trademark, not limited to its essential function of indicating the business origin, but also the function of "guaranteeing the quality of that product or service, or those of communication, investment or advertising." Consequently, and given that there would indeed be use by GQ of the described sign, it is for the national judge to assess whether there is identity or similarity between the sign and the earlier mark, the similarity between products and, where applicable, the risk of confusion or the possible improper exploitation of the reputation of AUDI, which the referring body considers to be notoriously well known. On the other hand, the Court rejects that the use can be covered by the limitation of article 14.1.c). It points out that GQ does not use the brand to indicate the product's destination, but rather reproduces the shape of the symbol on the piece itself to give it an appearance as close as possible to the original replacement part. It is, therefore, a reproduction of the sign, not a referential use. Therefore, the limitation is not applicable, regardless of whether or not there is a technical possibility of fixing the emblem without reproducing the shape of the brand. Consequently, the Court declares that the use of a sign identical or similar to the AUDI trademark on spare parts constitutes a use in the course of trade that may be prohibited by the owner and that the limitation of Article 14 of the EU Trademark Regulation does not prevent such a prohibition in this type of case. 3. Commentary: The ruling significantly clarifies the scope of trademark protection in the spare parts sector. The question raised did not refer to the direct reproduction of a manufacturer's emblem, but to the place intended to fix said emblem, whose shape inevitably outlines the brand. The Court reaffirms that the trademark does not lose protection by being physically integrated into a spare part and that the shape of the fastening element, even if it responds to functional requirements, can constitute a sign if it reproduces or is sufficiently similar to the trademark. The Court also rejects the application of the "repair clause" as a way to limit trademark protection, recalling that Article 14 of the EU Trademark Regulation is the mechanism created by the legislator to balance the interests of the trademark holder with those of an uncounterfeited spare parts market. This conclusion rules out the possibility of transferring to the trademark field a more flexible regime intended exclusively for designs. Regarding the interpretation of Article 14.1.c) of the EU Trademark Regulation, the judgment correctly distinguishes between referential use (necessary and lawful) and the reproduction of the sign in the piece itself. This criterion reinforces that the limitation cannot be used to legitimize imitations that seek to replicate the appearance of the original product. In conclusion, the ruling strengthens the protection of automotive brands and limits the marketing of non-original parts that include elements likely to create a direct association with the manufacturer. It also provides a guideline for distinguishing between compatible spare parts (protected by the referential use of the brand) and imitation spare parts, which conflict with the scope of protection of the previous brands. Lucía Palomino, Lawyer in the Trademark area.

Context of the case regarding trademark expiration: Trademarks have a validity of ten years, renewable indefinitely. However, their owner must use them effectively in the market. Failure to use it for five consecutive years may result in its expiration, the application for which is processed before the Spanish Patent and Trademark Office (OEPM). In this context, the Provincial Court of Madrid (APM) recently confirmed the partial expiration due to lack of use of several trademarks of the Spanish Olympic Committee (COE). The resolution is relevant because it addresses key issues of trademark law, such as the legitimacy to request the expiration and the scope of the requirement of effective use of the registered sign. The trademark conflict between OLIMPO and the COE's OLIMPIADA trademarks The procedure originates from the application submitted to the OEPM by the company Miguel Bellido to register the OLIMPO trademark. The COE opposed this request, based on trademarks it owned that included the name OLYMPICS. Faced with this opposition, Miguel Bellido not only defended his trademark application, but also filed several applications for expiration due to lack of use against the COE's trademarks. After analyzing the documentation provided, the OEPM declared the expiration of these trademarks for all products and services, except for those corresponding to "education, training and sports activities" (class 41). The COE appealed this decision, but the Provincial Court of Madrid dismissed the appeal and confirmed the trademark expiration, except for the services mentioned. Who can request the expiration of a trademark for lack of use? One of the main arguments of the COE was to question the legitimacy of Miguel Bellido to request the expiration of his trademarks. The Spanish Olympic Committee maintained that the company had not suffered any harm, since the OEPM ultimately granted the OLIMPO trademark despite the opposition presented. However, the Provincial Court adopts a broad interpretation of the concept of "harmed" in the expiry proceedings for lack of use. The court considers that there is a general interest in ensuring that only trademarks that are actually used remain registered, and therefore the harm requirement provided for in Article 58.1 of the Trademark Law must be interpreted flexibly. Consequently, it understands that, in principle, it is sufficient for the applicant to consider himself affected by the contested trademark, a circumstance that is presumed by the very filing of the application, unless there are exceptional cases of abuse. Furthermore, the Court points out that the fact that the COE's opposition did not succeed and that the OLIMPO trademark was finally registered does not retroactively eliminate the legitimacy that the applicant had when he filed the expiry action. Proof of effective use of the trademark in the market Another relevant aspect of the resolution refers to proof of the use of trademarks. The documentation provided by the COE only proved the use of its trademarks in relation to education, training and sports activities, but not with respect to the rest of the products and services included in its records. Among the evidence provided were publications on their website, Google search results, and references to the Olympic Games, as well as information relating to events such as the Paris Games. However, the Provincial Court considers that these elements do not sufficiently prove an effective use of the trademark in commercial transactions for the products and services whose expiration was declared. Renown or legal recognition does not replace the use of the brand. The ruling also addresses another argument raised by the COE: its institutional position and renown linked to the Olympic movement. The Court acknowledges that sports legislation may grant the COE exclusive rights over certain symbols. However, the court notes that if an entity decides to register these signs as a trademark, it must comply with the obligations of the trademark regime, including effective use for the protected products and services. In this sense, the fact that a brand is well-known in certain sectors or that an official body has rights recognized by other regulations does not exempt it from complying with the requirements of trademark law. Furthermore, the Court points out that the COE has other legal avenues to prevent the registration of certain signs by third parties, such as those provided for in article 5.1.f) of the Trademark Law, as it has exclusive rights recognized by the applicable legislation. However, it cannot obtain additional protection through the trademark system if it does not comply with the particular requirements imposed by the trademark system on the owner of the trademark right in order to retain it as such. Active legitimation in the expiration of the trademark and its broad interpretation According to the judgment, the active legitimation to request the expiration due to lack of use must be understood in a broad way. The concept of "injured party" should not unduly restrict access to this action. It should only be excluded in exceptional cases where bad faith or abuse of rights is evident, concepts which, according to European jurisprudence, must be interpreted restrictively. Furthermore, legitimation is not limited solely to identical or similar products or services that may prevent the registration of a subsequent trademark. Had that been the case, Miguel Bellido would not have been entitled to request the expiration of the wide range of products and services protected by the COE trademarks. Public interest in cleaning up the trademark registry Thus, this case underlines that in the procedures for expiration due to lack of use there is not only a private interest, but also a public interest in cleaning up the trademark registry. Furthermore, it is important that we do not forget that in these cases a uniform interpretation of European Union law must be made. And, in this respect, it can be indicated that in that area there is no talk of "injured party", but rather it must be considered that active legitimation is possessed by whoever has procedural capacity. Jesus Gomez ...Read more

Judgment of the Court of Justice of 20 June 2024, (C-801/21 P) 1. Facts On June 17, 2017, Mr. Hamid Ahmad Chakari filed a European Union trademark application to identify rice products in classes 30 and 31, whose graphic representation was as follows: Abresham Super Basmati Selaa Grade Indo. European Foods filed an opposition with the EUIPO, invoking an earlier right not registered in the United Kingdom based on the continued use of the designation BASMATI for rice. Indo argued that such use constituted a prior right enforceable under Article 8.4 of the EU Trademark Regulation and, in particular, invoked the action for passing off, which allows preventing the use of signs that generate an improper commercial association and may cause economic harm to the prior user. In April 2019, the Opposition Division dismissed the opposition, considering that the evidence provided did not sufficiently prove the existence of a prior right. The Appeals Chamber upheld this decision in April 2020, reiterating that the documentation and evidence did not demonstrate the effective protection claimed. Indo European Foods filed an appeal with the General Court (GC) requesting the annulment of the Appeals Chamber's decision. During the proceedings of the appeal, on December 31, 2020, the transitional period provided for in the Withdrawal Agreement of the United Kingdom ended, which resulted in the rights not registered in the United Kingdom no longer being invoked before the EUIPO as grounds for oppositions based on Article 8.4 of the EU Trademark Regulation. Given this circumstance, the EUIPO argued that the appeal had become moot, since the right invoked by Indo had ceased to exist. The TG rejected this claim and annulled the resolution, considering that the supervening disappearance of the previous right did not affect the legitimate interest of the appellant to obtain the review of the legality while the right was still enforceable. Against this ruling, the EUIPO filed an appeal with the Court of Justice of the European Union (CJEU). 2. Rulings The CJ confirmed that the appeal lodged before the TG was still admissible and that the interest in appealing does not disappear due to the supervening loss of the previous right invoked. In particular, the fact that the previous right ceased to be invoked after the end of the transitional period does not eliminate either the object of the appeal or Indo European Foods' interest in obtaining a review of the decision. The CJEU considered that the TG acted correctly in assessing the allegation of infringement of Article 8.4 of the EU Regulation. It concluded that the dismissal of the opposition harmed the economic interests of Indo European Foods, justifying the continuation of the proceedings despite the subsequent disappearance of the previous right. It also rejected the EUIPO's arguments regarding the essential function of the trademark, territoriality, or the possible conversion into national applications, as they did not affect the interest in appealing. The CJ also highlighted that the TG can, at any stage of the proceedings, examine ex officio whether there is an interest in maintaining the action, assessing whether a possible annulment of the decision could produce advantages or avoid harm to the appellant. It also rejected the EUIPO's arguments regarding the essential function of the trademark, territoriality, or the possible conversion of the contested trademark into national applications, considering that they did not affect the interest in appealing. Finally, the CJEU dismissed the EUIPO's appeal, without the supervening disappearance of the previous right being an obstacle, and without imposing additional obligations on the Board of Appeal regarding the new decision. 3. Commentary The judgment confirms that the examination of the legality of a decision of the Appeals Chamber must focus on the moment in which the decision was adopted, without subsequent changes in the regulations or in the protection of the rights invoked being able to deprive the appeal of its object. Furthermore, the Court reinforces that the right to have a decision reviewed by a higher body does not depend solely on the subsequent validity of the right invoked, but on the possibility of reviewing the decision that affected the economic or legal interests of the appellant, all in order to safeguard the guarantee function of the courts. The Court refers the matter to the Appeals Chamber so that it may rule on the time frame in which the requirements of the prior right must be assessed. In this way, a fundamental issue for resolving the substance of the matter is left in the hands of the Appeals Chamber. In short, the ruling consolidates an interpretation faithful to the structure of the Regulation and to the role of judicial control in matters of trademarks. The subsequent disappearance of the previous right does not deactivate the review function of the courts nor reduce the need to examine the correctness of the administrative action. The ruling thus contributes to strengthening the stability of the system and provides clear criteria on the possible subsequent loss of rights, in a context marked by important regulatory changes, as a consequence, in this case, of the United Kingdom's withdrawal from the European Union. Enrique Jacobo, Lawyer in the Trademark Area of ​​ELZABURU.