Córdoba and the jewelry industry have a centuries-old relationship. This craft is an integral part of both the city’s history and its economy (with an extensive network of workshops, manufacturers, and professionals), and as of this summer, it has taken on a new legal dimension: “Joyería de Córdoba” is the first Spanish geographical indication (GI) registered for artisanal and industrial products under Regulation (EU) 2023/2411.

This recognition establishes, for the first time in Spain, a European protection mechanism for names associated with non-agricultural products whose value lies, to a large extent, in their geographic origin, reputation, and local expertise.

A collective right to a designation, not to any piece of jewelry manufactured in Córdoba

The protection afforded by this GI recognizes the connection between Córdoba and a jewelry-making tradition that has been sustained for generations through specialized knowledge, unique techniques, and a production structure deeply rooted in the city.

This GI covers various jewelry products (rings, bracelets, necklaces, earrings, and other pieces made of gold, silver, or platinum, which may incorporate pearls, gemstones, or enamel) and establishes the conditions that must be met in order to market them under the designation “Joyería de Córdoba.”

According to the specifications, all stages of production and packaging must take place within the defined geographical area. The pieces are associated with Córdoba because of the quality of their design and finish, their weight-to-volume ratio, and the specialized knowledge passed down through generations of local producers.

This does not mean that any jewelry manufactured in Córdoba is automatically protected, nor that the city obtains an exclusive right to produce jewelry. What is protected is the use of “Joyería de Córdoba” as a designation associated with a specific origin and specific characteristics. Producers who wish to use this designation must be located within the defined geographic area and comply with the corresponding specifications.

This distinction is significant because the value of the name no longer depends solely on its commercial recognition. From now on, there is also a common legal tool to defend it against those who seek to benefit from that reputation without meeting the established requirements.

Why has this recognition become possible now?

Until recently, this type of protection was associated primarily with food, wine, and oil. However, Regulation (EU) 2023/2411, effective as of December 1, 2025, established a unified system of protection for geographical indications of artisanal and industrial products, thereby expanding the scope of the previous protection. Since then, products such as jewelry, ceramics, textiles, glass, leather, natural stone, cutlery, and furniture can qualify for a European geographical indication when they meet the required criteria.

However, to qualify for this protection, it is not sufficient for a product to be traditionally manufactured in a particular locality. The product must: (i) originate from a specific place, region, or country; (ii) possess a quality, reputation, or other characteristic attributable primarily to that geographic origin; and (iii) have at least one stage of production carried out within the defined geographic area. In the case of “Joyería de Córdoba,” the specifications require an even stronger link, as all stages of production and packaging must take place within the municipality of Córdoba.

The system therefore seeks to protect a genuine link between the product and the territory, not merely a geographic name used for commercial purposes.

What is the actual scope of a GI such as “Joyería de Córdoba”?

A geographical indication confers a collective industrial property right that can be enforced throughout the European Union. Furthermore, it protects the designation linked to the origin, not each individual piece of jewelry produced under that designation. For this reason, this type of protection does not replace other industrial property rights but can coexist with them as part of a broader protection strategy.

A manufacturer may continue to use its trademarks to distinguish its products from those of other operators and rely on industrial designs to protect the appearance of certain parts. A geographical indication operates on a different level: it identifies a place of origin and characteristics shared by authorized producers.

This combination is particularly interesting in sectors where a distinct corporate identity coexists with a collective reputation. While the brand makes it possible to identify who is behind a product, the geographical indication adds another piece of relevant information: where it comes from and why that origin is part of its value.

Therefore, in addition to protecting their trademarks and designs, companies and producers must ensure that the signs they apply for or use do not conflict with prior geographical indications. Conversely, the registration of a GI for artisanal and industrial products does not automatically eliminate validly acquired prior rights; the coexistence of these rights must be analyzed in accordance with the Regulation and the circumstances of each case.

What Benefits Does the GI Bring to the Cordoba Jewelry Industry?

One of the main effects of recognition lies in the ability to defend the designation. The greater the prestige of a designation, the greater the interest of third parties may be in using it, associating themselves with it, or suggesting a connection to that origin that does not actually exist.

Consequently, the new European regime allows for action to be taken in the 27 member states of the European Union—among other cases—against the direct or indirect commercial use of the designation for products not covered by it, its misuse, imitation, or evocation, false or misleading indications regarding origin, and other practices likely to mislead consumers. Protection also extends to domain names and infringements committed on online platforms and electronic marketplaces, in accordance with the terms set forth in the Regulation.

Therefore, its usefulness is not limited to certifying origin. It also prevents third parties from misappropriating the collective reputation built around the name, even when they do not literally reproduce the protected designation.

Indeed, for producers in Córdoba, the GI can also serve as a tool for differentiation. In a market where items and products from a wide variety of sources coexist, the geographical indication makes it possible to distinguish those that meet verifiable requirements of origin and quality, while protecting the collective reputation associated with the designation “Joyería de Córdoba.”

Protecting the origin also means preserving knowledge

For artisanal products, the connection to a region is often based on more than just a geographic location. Behind them lie techniques, production processes, specialized training, and knowledge that have been passed down and adapted over time. In that sense, protecting a geographic indication can also help preserve the economic value of that know-how.

This does not mean rigidly preserving tradition. Cordoba’s jewelry industry, like any other, will continue to incorporate new technologies, materials, designs, and marketing strategies. What matters is that this evolution does not dilute the characteristics that allow the product to remain connected to its place of origin.

The very logic of the system thus links two issues that have often been addressed separately: the protection of an intangible asset and the continuity of the local economic fabric. If origin is part of a product’s value, preserving what underpins that reputation also becomes a strategic issue.

A precedent for other sectors in Spain

The registration of “Joyería de Córdoba” sets an important precedent for other Spanish artisanal and industrial products linked to a specific region. Spain has numerous artisanal and industrial products whose reputation is tied to specific cities, counties, or regions, ranging from ceramics, footwear, and leather to textiles, glass, and certain metalwork.

This does not mean that everyone can or should be granted a geographical indication. Before initiating an application, it will be necessary to identify the eligible group, delimit the protected geographical area, define the product, its characteristics, and its production method, demonstrate the link between its qualities, reputation, or characteristics and the territory, and establish a viable control system. It will also be important to analyze how this protection will coexist with trademarks, designs, domain names, and other assets already existing in the sector.

“Joyería de Córdoba” confirms that geographical origin can constitute a legal and competitive asset even outside the agri-food sector. Thus, in light of this new landscape, geographical indications open up an additional avenue for protecting and promoting assets linked to a specific territory, but their usefulness will depend on each sector and how they are integrated with other forms of industrial property. At ELZABURU, we assist companies, associations, and producer groups in the analysis, protection, and strategic management of these types of assets, evaluating in each case the most appropriate approach to preserve their reputation, differentiation, and market position.

Raquel González Betanzos, attorney in the trademark practice group at Elzaburu.

Intellectual property (IP) is not just a legal tool for protecting intangible assets: it is a structural economic driver for Europe. The latest joint report by the European Union Intellectual Property Office and the European Patent Office confirms that IP-intensive sectors account for a significant portion of the continent’s wealth creation, skilled employment, exports, and technological investment.

The study analyzes the 2021–2023 period and identifies 361 industries that are intensive in intellectual property rights, accounting for nearly 48% of the EU’s GDP, more than 30% of employment, and nearly 80% of European foreign trade. In addition, these industries attract more than 88% of private equity and venture capital investments in the EU directed toward IP-intensive startups.

These data not only provide macroeconomic evidence. They also offer a strategic conclusion for businesses: protecting innovation directly translates into competitiveness, financing, and growth.

Below, we analyze the report’s main findings and their practical implications for technology, industrial, and creative companies.

What are intellectual property-intensive industries?

Industries are considered IP-intensive if they have a higher-than-average number of patents, trademarks, designs, or other intellectual property rights per employee compared to other industries that use intellectual property rights.

In simple terms:

An industry is considered intellectual property-intensive in the EU if, for at least one of the intellectual property rights under consideration, the number of such rights per employee exceeds the average for all EU industries that use that same intellectual property right.

These industries range from pharmaceuticals and electronics to software, fashion, food products with geographical indications, and creative services.

The report's premise is clear: when IP is used systematically, its economic impact is multiplied.

Key figures illustrating the economic impact of IP

The study provides compelling indicators regarding IP-intensive industries:

• They accounted for 30.6% of total employment in the EU (more than 65 million workers).
• 47.9% of European GDP was generated by these industries (7.7 trillion euros).
• 76.4% of imports and 78.3% of exports, generating a trade surplus of 108,000 million euros, which helps keep the EU's overall foreign trade in balance.
• A wage premium of 40.9%, significantly higher than in other non-IP-intensive sectors.
• 88% of venture capital and private equity investment went to startups operating in IP-intensive sectors.

These figures demonstrate a direct correlation between the protection of intellectual property and value creation. These are not marginal sectors or technological niches, but rather the backbone of the European economy.

Patents, Trademarks, Designs, and Copyright: How Each Right Contributes

The financial contribution varies depending on the type of right involved. The report breaks down the data by sector. Below, in addition to companies specializing in the leasing of intellectual property, are some examples by type of industrial property right.

Patent-intensive industries

• Manufacturing of hand-held power tools.
• Manufacturing of telecommunications equipment.
• Manufacturing of household appliances.
• Research and experimental development in biotechnology.
• Further experimental research and development in the natural and technical sciences.

Brand-intensive industries

• Manufacture of other transport equipment (n.e.c., not elsewhere classified), such as handcarts
• Production of other non-distilled beverages resulting from fermentation, such as vermouth.
• Collective Investment Schemes, Funds, and Similar Financial Institutions
• Activities of Holding Companies
• Crude Oil Extraction
• Research and experimental development in biotechnology.

Industries that rely heavily on industrial design

• Manufacture of other transportation equipment (n.e.c.), such as handcarts; wholesale trade in furniture, carpets, and lighting fixtures.
• Manufacturing of electric lighting equipment.
• Manufacture of jewelry and similar items.
• Wholesale trade intermediation activities in furniture, household goods, and hardware

Copyright-intensive industries

• Printing, prepress, and media preparation.
• Playback of recorded media.
• Retail sale of books, newspapers, and stationery.
• Retail sales of music and video recordings.
• Video games.

Industries that rely heavily on Geographical Indications

• Dairy Products
• Spirits
• Wine
• Beer

Crop-intensive industries

• Wholesale trade in flowers and plants.
• Research and experimental development in biotechnology.
• Wholesale trade in grains, raw tobacco, seeds, and animal feed.
• Other research and experimental developments in the natural and technical sciences.

Intellectual Property and Quality Employment

One of the most significant findings of the report is the wage premium.

Workers in IP-intensive sectors earn, on average, 40.9% more than those in non-IP-intensive sectors.

This fact has clear implications:

• higher professional qualifications
• more stable jobs
• increased productivity
• more investment in talent

IP not only generates business wealth, but also higher-quality, more specialized jobs.

Exports and Global Value Chains

Sectors that rely heavily on intellectual property rights are significantly more international.

According to the report:

• Three out of every four euros exported by the EU come from these sectors
• generate a trade surplus
• are more integrated into global value chains

This is because protected innovation facilitates:

• technological differentiation
• barriers to entry
• international licenses
• scalability of business models

IP as a Signal to Investors: Venture Capital and Startups

One of the most innovative sections of the study analyzes the relationship between PI intensity and business funding.

The conclusion is clear: investors view intellectual property as a sign of quality and growth potential.

More than 88% of European venture capital and private equity investment goes to startups in IP-intensive sectors.

The reasons are clear:

• lower risk of copying
• greater market exclusivity
• transferable or licensable assets
• Highest valuation in investment rounds
• protection against global competitors

For tech, deep tech, or biotech startups, having a solid patent and trademark strategy can be crucial for securing funding.

Practical Implications for Innovative Companies

Beyond the macroeconomic figures, the report's message is practical:
Intellectual property must be integrated into business strategy from the very beginning.

Some key recommendations:

1. Set up protection before climbing

Registering patents, trademarks, or designs before expanding into new markets helps avoid risks and strengthens one's negotiating position.

2. Build a cohesive portfolio

It is not a matter of accumulating rights, but rather of aligning them through a protection strategy that includes:

• technology
• markets
• business model
• international strategy

3. Using IP as a financial asset

Rights may:

• attract investment
• issue licenses
• allow joint ventures
• improve ratings

4. Scope of Protection

European companies compete globally. Protection must cover the main target markets.

5. Manage IP Strategically

IP is not an administrative procedure, but a tool for gaining a competitive advantage.

Intellectual Property as a Driver of European Competitiveness

The report by the EUIPO and the EPO confirms what business practice has been demonstrating for years: the knowledge economy is built on protected intangible assets.

Nearly half of Europe's GDP depends on sectors where patents, trademarks, designs, and copyrights are essential. These industries generate more skilled jobs, pay higher wages, export more, and attract greater investment.

For companies, the conclusion is clear: protecting innovation is not just a legal issue, but a strategic decision for growth.

At Elzaburu, we support technology, industrial, and creative companies in protecting, managing, and maximizing the value of their intangible assets, helping them transform intellectual property into a sustainable competitive advantage.

Frequently Asked Questions

What is an intellectual property-intensive industry?

It is a company that registers more patents, trademarks, designs, or other intellectual property rights per employee than the average, indicating that its operations rely heavily on protected innovation.

How much do these industries contribute to the European economy?

They account for about 48% of GDP and more than 30% of total employment in the European Union.

Why does IP attract investment?

Because it reduces competitive risk, protects exclusivity, and increases company valuations, which makes it attractive to venture capital funds.

Which sectors rely most on intellectual property?

Pharmaceuticals, technology, software, fashion, automotive, food products with geographical indications, and creative services, among others.

When should a company protect its innovation?

As soon as possible, preferably before launching products or seeking financing. Depending on the nature of the registration, launching a product may result in the loss of the novelty requirement, making it impossible to obtain subsequent protection—for example, through a patent.

David Hidalgo, Associate and European Patent Attorney in the Patent Department at Elzaburu.

The European Union Intellectual Property Office (EUIPO) recently rejected the application to register the trademark TEQUIFRESA for alcoholic beverages in Class 33. The decision is based on the fact that the sign applied for evokes the geographical indication (GI) “Tequila,” which is protected by both European regulations and international agreements with Mexico.

This case is a good example of how European regulations protect geographical indications against attempts to register trademarks that might take unfair advantage of their reputation or mislead consumers.

Background of the Case

The applicant, Fraternity Spirits World Inc., filed an application for the word mark TEQUIFRESA in Class 33 to designate: “Alcoholic beverages, except beers.”

In its initial communication dated May 27, 2025, the EUIPO raised an objection pursuant to Article 7(1)(j) of the European Union Trademark Regulation (EUTMR), finding that the trademark evoked the geographical indication (GI) “Tequila.”

The applicant did not file any arguments within the allotted time limit; therefore, the Office upheld the rejection in its decision of August 22, 2025.

Legal Rationale of the EUIPO

Strengthened Protection of the “Tequila” Geographical Indication (GI)

In its decision denying the application, the EUIPO noted that the term “Tequila” enjoys dual protection:

1. Pursuant to Regulation (EC) No. 2024/1143 of April 11, 2024, which regulates geographical indications for spirits in the European Union.
2. Pursuant to the Agreement between the European Community and the United Mexican States on the Mutual Recognition and Protection of Designations in the Spirits Sector (OJEU L 152, June 11, 1997).

Definition of the term “protected”

The EUIPO determined that the trademark application for “TEQUIFRESA” includes the element “TEQUI,” which evokes the term “Tequila.” The addition of the term “FRESA” would not eliminate that association.

Furthermore, with regard to the goods applied for in Class 33 (“Alcoholic beverages, except beers”), the EUIPO considers that this description includes“agave-based spirits,” which do not have the origin indicated by the geographical indication referred to in the trademark for which protection is sought.

Consequences of the resolution

The EUIPO, pursuant to Article 7(1)(j) of the EUTM Regulation, rejected the trademark application for TEQUIFRESA.

In accordance with Articles 67 and 68 of the RMUE, the applicant has the right to file an appeal within two months of notification and will then have an additional two months to present the arguments they deem relevant.

Significance of the Decision for Trademark Owners and Applicants

This case highlights several key aspects that trademark applicants should consider when planning their trademark strategy in the European Union.

The ruling confirms that geographical indications enjoy enhanced protection that not only prevents the registration of an identical term but also any reference—even partial—such as the inclusion of the element “TEQUI” in the trademark application, which is capable of leading consumers to associate it with the geographical indication “Tequila” even when accompanied by other elements or names.

Furthermore, this case underscores the need to conduct thorough preliminary searches not only for trademarks but also for geographical indications, thereby reinforcing the importance of developing robust trademark strategies that are aligned with current regulations.

Marta Rodríguez, Senior Associate in the Trademark Practice Group at Elzaburu

In the competitive world of wine, a brand represents much more than just a name: it is a promise of quality, a story, and a bridge to consumers. However, registering and protecting a wine brand in international markets is not simply an administrative formality. It is a comprehensive strategy that combines legal considerations, identity, and differentiation.

3 Key Aspects of International Trademark Registration

1. Trademark Registration in Strategic Markets

Using the Madrid System can simplify protection in multiple countries. However, it is essential to keep in mind that some markets, such as the United States and China, have specific requirements and deadlines that may require additional steps.

2. Protection of Derivative Products and Sub-Brands

Many wineries have additional product lines, such as limited editions or premium wines, that require specific protection. In addition, registering domain names related to the brand helps prevent conflicts in the digital realm.

3. Protecting the Brand Story

Wine brands are often built around stories related to family tradition, terroir, or production methods. These narratives should not only be part of the branding but also protected by intellectual property rights.

Building a Distinctive Brand Identity: The Key to Avoiding Brand Dilution in the Market

Beyond legal protection, a brand must stand out visually and emotionally. This is especially true in the wine industry, where consumers often make decisions based on cultural, visual, and storytelling elements.

• Designing distinctive labels. A unique label not only attracts consumers but also helps protect against competitors who try to imitate the design.
• Brand storytelling. Building a brand around stories related to the winery or vineyard allows you to create experiences and connect with consumers. These narratives should be reflected in the brand’s visual identity: labeling, digital channels, wineries, etc.
• Strategies to Avoid Dilution. In highly competitive markets, such as Germany or the United Kingdom, there is a risk that a brand may lose its exclusivity. An original design and advertising campaigns that reinforce its unique character can prevent this problem.
• When choosing a name, remember to avoid generic or protected terms. Terms such as “Cava,” “Prosecco,” or “Chablis” are often protected as geographical indications. Even if they seem generic in a given context, their use in a trademark may be prohibited if the necessary conditions are not met. You can read this other article to learn about the main legal challenges involved in protecting wine trademarks abroad and how to address them.

Ultimately, registering and marketing a wine brand in international markets is a challenge that goes beyond legal considerations. It requires a strategic vision that combines legal protection, innovative design, and an authentic narrative. Doing so not only ensures the brand’s expansion and protection against potential counterfeits but also strengthens its market position.

Miguel Ángel Medina, Associate Partner in the Trademark Practice Group

Spanish wine has earned a prominent place in international markets thanks to its quality and rich tradition. However, taking a wine brand abroad involves more than just standing out for its organoleptic characteristics or an effective marketing strategy. One of the greatest challenges lies in ensuring the brand’s legal protection in the face of complex international regulations and competitors in the industry.

The wine industry faces unique challenges in terms of intellectual property due to the importance of geographical indications, traditional designations, and strict labeling regulations. Ignoring these particularities can lead to costly legal disputes and a loss of prestige in the market.

Specific Legal Challenges Related to the Registration of Wine Trademarks

1. Geographical Indications and Designations of Origin (PDO/PGI)

PDOs and PGIs are key elements in wine marketing, as they guarantee the product’s authenticity to consumers. Registering a trademark that refers to a protected geographical region, such as “Rioja” or “Champagne,” is strictly regulated. Any violation could result in the denial of registration or even penalties.

2. Traditional wine designations

In many markets, terms such as “crianza,” “gran reserva,” or “grand cru” are protected to preserve the cultural and quality associations they represent. Misuse of these terms may be considered a violation, even if the term is common in the language of the target market.

3. Labeling Regulations

Labels serve not only as a distinctive visual element but also as a source of regulated information. In addition, label design must comply with both trademark protection requirements and food and beverage labeling regulations. Health warnings, alcohol content, and origin information must comply with local laws.

How can you tackle these challenges and successfully expand your wine brand in the international market?

To effectively protect a wine brand, it is necessary to adopt a legal and preventive strategy. Some key actions include:

• Conduct a preliminary search: This includes checking for potential conflicts with already registered trademarks and verifying that the trademark does not violate regulations regarding protected designations in the target market.
• Ensure the originality of visual elements: Logos, labels, and other distinctive marks must be unique. A well-designed visual identity also makes it easier to defend against potential imitations.
• Seek local legal advice: Each market has its own specific regulations. An intellectual property attorney in the target country can help you avoid unexpected problems.

Ultimately, protecting a wine brand in foreign markets not only ensures its commercial success but also preserves its legacy and authenticity. In such a competitive industry, a solid legal strategy can be the difference between sustained growth and legal disputes. Investing in brand protection paves the way for a smooth international expansion.

Miguel Ángel Medina, Associate Partner in the Trademark Practice Group at Elzaburu

Yesterday, April 23, 20024, Regulation (EU) 2024/1143 of the European Parliament and of the Council, amending the regime governing geographical indications in the European Union, was published in the Official Journal of the European Union (OJEU).

This regulation repeals Regulation (EU) No . 1151/2012 on the quality of agricultural products and foodstuffs, which governed geographical indications (Protected Designation of Origin—PDO—and Protected Geographical Indication—PGI) and guaranteed traditional specialties (GTS), as well as the use of certain optional quality terms, and replaces it with the new regulation. It also partially amends the provisions of the EU regulations on wine quality designations (Regulation 1308/2013) and spirits (Regulation 2019/1753).

Its publication marks a crucial milestone in the update and expansion of the scope of protection for quality designations, as recently provided for by Regulation (EU) 2023/2411 of the European Parliament and of the Council of October 18 on the protection of geographical indications for artisanal products, which introduced for the first time a system for protecting GIs for such products at the European Union level and amended Regulations (EU) 2017/1001 and (EU) 2019/1753.

Among the new provisions of the regulation approved yesterday—in line with current trends in intellectual and industrial property and other fields governing production and trade—is the inclusion and emphasis on sustainability in all its aspects (environmental, social, and economic), albeit within a voluntary framework.

Other particularly noteworthy aspects include its contribution to better protection and explicit legal protection for geographical indications with respect to domain names and on the Internet—something that had been consistently demanded in recent years given the discriminatory and disadvantaged position in which geographical indications found themselves in this area within some of the most important domain name dispute resolution systems and other environments, particularly when compared to trademarks.

It also regulates the conditions under which the mention of a geographical indication may be used commercially when it is listed as an ingredient on a product’s label—an area where, in practice, there was a tendency to create ambiguity and confusion among consumers regarding whether the product benefited from the geographical indication or what, specifically, benefited from that geographical indication.

The regulations also address the requirement to identify the producer on the label, the use of personal data in applications, and the role of producer groups as managing entities for GIs.

According to sources at the Ministry of Agriculture, Fisheries, and Food, Spain ranks third among EU member states in terms of the number of quality designations (PDO, PGI, and TSG), with 381 entries in the EU registry, trailing only Italy, with 890 designations, and France, with 769. The 381 Spanish designations are distributed among 146 wines, 212 agri-food products—including cheese; meats and similar products; seafood; fruits, vegetables, and legumes; olive oil and vinegar; sweets such as polvorones, turrón, and alfajores, among others; honey, etc.—, 19 spirits, and 4 Traditional Specialities Guaranteed (TSG), with another 25 designations currently in the process of being registered with the European Commission.

According to the latest available data, more than 330,000 farmers and ranchers in Spain produce products bearing geographical indication quality labels, with more than 1.5 million hectares of cultivated land and 2.3 million head of livestock. This high-quality production has an estimated value at source of more than 7,000 million euros and is subject to a rigorous control program, which is part of the National Plan for Official Control of the Food Chain (PNCOCA 2021–2025) and carried out 49,213 inspections in 2022.

The new regulation will take effect 20 days after its publication and will also be applicable as of May 13, 2024, except for the provisions relating to Article 10, paragraphs 4 and 5 (concerning the national objection procedure of EU Member States), Article 39, paragraph 1 (regarding the preparation by Member States of the list of operators engaged in activities subject to obligations set forth in the specifications for GIs), and Article 45 (which addresses the certification of compliance with the specifications), which will take effect on January 1, 2025.

Miguel Ángel Medina, Associate Partner at ELZABURU

For another version of this article, please visit the MARQUES Blog

Conflicts between corporate names and trademarks (or trade names) are very common, and there has always been significant debate—both in legal doctrine and in case law—regarding the relationship and differences between these two concepts and, specifically, regarding the scope of the exclusive right conferred by a trademark (or trade name) registration as opposed to a corporate name that may be identical or similar to such marks.

First, we need to clarify the differences between these various concepts:

• The corporate name is the name used to identify companies in legal transactions (it will normally appear in company documents relating to its legal relationships, such as invoices, contracts, etc.). It is registered with the Commercial Registry, and its regulation is set forth in the Commercial Registry Regulations.
• A trademark is the name or symbol used to identify a company’s products and services in the marketplace and distinguish them from those of other companies, and a trade name is the name or symbol used to identify a company in commercial transactions and distinguish it from other companies engaged in similar or identical activities in the marketplace. Both are registered with the Spanish Patent and Trademark Office, and registration grants the owner the exclusive right to use them in commerce.

What happens when a company name matches or resembles a registered trademark or trade name? Does that company name constitute an infringement of the latter?

The provisions of the Trademark Law that resolve this conflict are as follows:

• Supplementary Provision 14
• Article 34

Additional Provision 14 of the Trademark Law establishes a prohibition applicable to the Commercial Registry: commercial registry authorities shall deny the requested corporate name if it matches or is likely to cause confusion with a well-known trademark or trade name.

Under this provision, it is therefore clear that a new application for a corporate name cannot conflict with a registered trademark or trade name. But what happens when the trademark or trade name is not well-known? Or when that corporate name is already registered in the Commercial Registry? Can the owner of the trademark or trade name invoke their exclusive rights to request the cancellation of the corporate name or prevent its use?

In this other case, we must refer to Article 34 of the Trademark Law, which is the provision governing the rights conferred by the registration of a trademark or trade name. According to this provision, in order for the owner of the trademark or trade name to prohibit a third party from using a sign, several cumulative requirements must be met; of these, for the purposes of the matter at hand, we would like to highlight the following:

• It must be used in commercial traffic.
• And the use must be in connection with products or

It follows from the above that:

• The mere registration of a corporate name in the Commercial Registry does not, in and of itself, constitute an infringement of a prior trademark or trade name that the owner of such rights may prohibit. It is necessary for that corporate name to be used in commercial transactions—that is, in the marketplace.
• The mere use of a corporate name as such—that is, for its intended purpose, which is to identify the company in legal transactions—cannot constitute an infringement of a prior trademark or trade name registration that would entitle its owners to prohibit such use. The use of said corporate name must be in connection with goods or services.

Ultimately, this would constitute improper use of the corporate name, since, as noted above, that is not the purpose for which it is intended (the purposes specific to trademarks and trade names), which is to identify the company in legal transactions.

In summary, the owner of a registered trademark or trade name may prohibit the use of a corporate name provided that (in addition to other requirements regarding infringement—such as likelihood of confusion, etc.) such corporate name: (i) is used in the course of trade, and (ii) in connection with goods or services. The right to prohibit infringing use of a corporate name is also expressly provided for in Article 34.3(d) of the Trademark Law.

Furthermore, case law has confirmed the aforementioned criteria or requirements. The CJEU judgment in this matter is well-known: C-17/06 Céline of September 11, 2007, is particularly well-known; its legal principles remain in force and continue to be applied by our national courts.

Previously published in Economist & Jurist

Author: María Cadarso