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

Judgment of the Court of Justice of 1 August 2025, Lunapark (C-452/24) 1. Facts: Lunapark has owned the registered trademark DRACULA for confectionery products since 2009. Prior to this registration, the company Karkkimies used the sign "Dracula" to market similar products, without having acquired any trademark rights. In 2019, Hardeco bought Karkkimies and continued to use the "Dracula" mark for the same products, whose packaging featured the word "Dracula" and figurative signs representing the corresponding character. In 2020, Lunapark sued Hardeco for trademark infringement. Hardeco argued that Lunapark had tolerated Karkkimies' use of the sign for many years, which should prevent him from exercising the action now. The Finnish court of first instance accepted this argument based on a general principle of Finnish civil law according to which actions must be exercised within a reasonable time. Lunapark appealed to the Supreme Court. The Supreme Court of Finland referred a preliminary question to the CJEU on whether Article 10 of Directive 2015/2436, in the context of a dispute concerning trademark infringement, allows a Member State to limit the right of the proprietor of a trademark by means of such a general principle of inactivity in cases not provided for in Articles 9 and 18 of the Directive, which regulate tolerance towards a subsequently registered trademark. 2. Rulings The CJEU states that Article 10 of the Directive precludes a Member State from establishing, by means of a general principle of national law, the limitation of the right of the holder of a trademark to prohibit the use of an identical or similar sign in cases other than those provided for in Articles 9 and 18 of the Directive. The CJEU bases its decision on the fact that Article 10 constitutes a complete harmonisation of the material content of trademark law in the Union, so that Member States have no room to introduce additional limitations. This exhaustive character also extends to the regime of tolerance or prescription for inactivity, regulated in Article 18, paragraph 1, which only contemplates the possibility of limiting the right of the holder in relation to a later registered trademark, and always under strict conditions: knowledge of the use, the passage of five consecutive years and absence of bad faith on the part of the applicant of the later trademark. The CJEU also recalls its previous case law (judgment of 22 September 2011, Budějovický Budvar, C 482/09, paragraph 33), according to which Article 9 fully harmonizes the requirements for prescription by tolerance in invalidity proceedings, a harmonization that also extends to infringement actions relating to a subsequently registered trademark. On this basis, the CJEU stresses that the harmonised regime does not provide for any limitation arising from tolerance with respect to unregistered signs, nor does it confer rights to their mere prolonged use. In this specific case, even if the third party had used the sign "Dracula" prior to the registration of the DRACULA trademark by Lunapark, such use —unless it had generated an exclusive right under national law, which the sending body must verify— is not included within the harmonised tolerance regime of Article 18, since this refers exclusively to subsequently registered trademarks and not to signs lacking registration protection. Therefore, it is concluded that Member States cannot introduce additional limitations derived from general principles of their national law — such as a statute of limitations for inactivity regarding the use of an unregistered sign — because this would amount to imposing restrictions not provided for by the harmonised regulations and would compromise the essential objective of ensuring uniform and consistent protection of trademarks throughout the EU. 3. Commentary The judgment reaffirms the case law of the Soda-Club (CO2) and SodaStream International case (C 197/21), in which the CJEU has insisted that Article 10 of the Directive establishes a complete harmonisation of the rules relating to the rights conferred by the trademark, thus exhaustively defining the material content of the rights enjoyed by trademark holders in the European Union. From a practical point of view, the decision has several implications. First, it reinforces the legal certainty of the registered owner: their right is not affected by inaction in the face of unprotected use, guaranteeing uniformity and stability in the protection of trademarks. Second, it limits the expectations of third parties who, in good faith, have used a sign without registering it, making it clear that the European system privileges the registered owner. Third, it protects the coherence of the common market, preventing the application of national civil principles from generating disparities in trademark protection between Member States. This ruling also clarifies a potentially contentious area: the transition between the prolonged use of an unregistered sign and the emergence of a registered owner who remains inactive. The ruling confirms that the only way for the prior user to oppose its use is through the acquisition of a prior right or the existence of a subsequently registered trademark that generates the effects of tolerance. In summary, this matter consolidates the strength of the exclusive right conferred by the registered trademark and underlines that only the causes regulated by the Directive can limit it. At the same time, it warns economic operators that prolonged use of a sign without registering it does not offer sufficient protection against a registered owner who decides to exercise their rights, even after a long period of inactivity. Lorena Sánchez, Lawyer in the Trademark area.

In an increasingly competitive market, where brands not only seek to attract consumer attention but also to differentiate themselves in saturated environments, creativity and originality have become essential strategic elements. A recent example that illustrates this scenario is the dispute surrounding the brand “No Ni Ná”, promoted by Paz Padilla and her daughter for a fashion line. In this case, the replacement of the letter “I” with a fishbone has generated legal doubts that go beyond design: can a common symbol achieve distinctive character? What conditions must a trademark meet to be successfully registered? What does it mean for a brand to be distinctive? Distinctiveness is what makes a brand unique and allows consumers to associate a product or service with the company that offers it. When a sign does not allow that connection to be established, it ceases to fulfill its essential purpose. The authorities in charge of trademark registration assess this distinctiveness by considering two key factors: The products or services that are to be protected. The perception of the target audience to which the brand is directed. If a sign lacks distinctiveness, it cannot be registered. Among the most common causes are: Descriptiveness: occurs when the sign directly describes characteristics of the product or service, such as its nature, quality or origin. Example: Use "SWEET" for confectionery products. Use of generic terms: words commonly used in a sector, such as "SOFTWARE" for computer programs. Common expressions in commerce: terms that have become integrated into everyday language, such as "BIO" for organic food. Overly generic slogans: phrases like "THE BEST FOR YOU" do not allow you to identify a specific business origin. Functional shapes or shapes imposed by the nature of the product: in three-dimensional trademarks, indispensable or common shapes, such as the basic silhouette of a bottle, cannot be registered. Overly banal or common designs: excessively simple elements, such as a red circle for electronic products, do not allow one company to differentiate itself from another. Identifying symbols as a distinctive element: an increasingly demanding field. Not all components of a brand need to be equally distinctive. It is possible for a brand to include elements that, in isolation, have a weak distinctive character or lack distinctiveness altogether. The use of recognizable icons as brands is common in sectors such as fashion. Examples such as the skull from SCALPERS FASHION SL or the Puma SE puma demonstrates that symbols can acquire great identifying power. But that popularity has tightened registration criteria. In the case of “No Ni Ná”, the fishbone is commonly used as a reference to Cádiz and areas such as Zahara de los Atunes, which makes it difficult to consider it an exclusive symbol. To defend its registration, the company should prove that: Consumers do not associate the rasp with a generic symbol of the sector. Or that, after prolonged and continuous use, the design has acquired a high distinctive character or even renown, as is the case with the Longchamp horse rider, unequivocally recognized by the public. Copyright protection: an important limitation. The fact that a sign lacks distinctiveness does not mean that it is left without legal protection. If the design of the “No Ni Ná” scraper is original and unique, it could be protected by copyright. However, this protection would only prevent the literal copying of the specific design, not the use of generic variations of the motif. Therefore, legal action against a different fishbone would have little chance of success. Keys to creating original brands and avoiding conflicts The case of “No Ni Ná” demonstrates the importance of opting for distinctive and creative signs from the beginning. Some key recommendations for entrepreneurs and designers are: Avoid generic or common terms in the sector. Opting for invented, arbitrary or suggestive symbols, with no direct relation to the product or service. Some successful examples are Google or Apple in the technological field. Conduct a prior trademark search to avoid conflicts. Seek advice from a professional specializing in industrial property before launching the brand on the market.   Originality as a brand positioning strategy. The required distinctiveness may vary depending on the sector. In highly saturated fields such as fashion, cosmetics or food, finding truly differentiating signs is more complex. Conversely, in technological or emerging sectors, where there is more creative space, it is easier to meet this requirement. In any case, the more unique, original and memorable the sign, the greater the chances of success in its registration and consolidation in the market.   Lorena Sánchez, Lawyers and Trademark Specialists at Elzaburu