In an increasingly competitive market, where brands seek not only to capture consumers' attention but also to stand out in saturated environments, creativity and originality have become essential strategic elements.

A recent example that illustrates this scenario is the dispute over the “No Ni Ná” trademark, launched by Paz Padilla and her daughter for a fashion line. In this case, the replacement of the letter “I” with a fishbone has raised legal questions that go beyond the design itself: Can a common symbol acquire distinctiveness? What conditions must a trademark meet to be successfully registered?

What does it mean for a trademark 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 fails to establish that connection, it ceases to fulfill its essential purpose.

Trademark registration authorities evaluate this distinctiveness by considering two key factors:

1. The products or services you wish to protect.
2. The perception of the target audience the brand is aimed at.

If a trademark lacks distinctiveness, it cannot be registered. Among the most common reasons are:

• Descriptiveness: This occurs when the mark directly describes characteristics of the product or service, such as its nature, quality, or origin. Example: using “DULCE” for confectionery products.
• Use of generic terms: words commonly used in an industry, such as “SOFTWARE” for computer programs.
• Common expressions in commerce: terms that have become part of everyday language, such as “BIO” for organic foods.
• Overly generic slogans: Phrases like “THE BEST FOR YOU” do not allow consumers to identify a specific company.
• Functional shapes or those dictated by the nature of the product: In the case of three-dimensional trademarks, shapes that are essential or commonplace—such as the basic outline of a bottle—cannot be registered.
• Designs that are too generic or common: overly simple elements, such as a red circle for electronic products, do not allow one company to stand out from another.

Identifying symbols as a distinguishing feature: an increasingly demanding landscape

Not all components of a trademark need to be equally distinctive. A trademark may include elements that, taken individually, have weak distinctiveness or lack distinctiveness entirely.

The use of recognizable icons as trademarks is common in industries such as fashion. Examples such as the skull used by SCALPERS FASHION S.L. or the puma used by Puma SE demonstrate that symbols can become highly distinctive.

But that popularity has led to stricter registration criteria. In the case of “No Ni Ná, ” fish bones are commonly used as a reference to Cádiz and areas such as Zahara de los Atunes, which makes it difficult to consider it an exclusive mark.

To defend its registration, the company would have to prove that:

• Consumers do not associate the "raspa" with a generic symbol of the industry.
• Or that, after prolonged and continuous use, the design has acquired a high degree of distinctiveness or even renown, as is the case with Longchamp’s horseman on horseback, which is unmistakably recognized by the public.

Copyright Protection: An Important Limit

Just because a sign lacks distinctiveness does not mean it is without legal protection. If the design of the “No Ni Ná” logo is original and unique, it could be protected by copyright.

However, this protection would only prevent the exact copying of the specific design, not the use of generic variations of the motif. Therefore, a lawsuit against a different fish scale design would have little chance of success.

Tips for Creating Original Brands and Avoiding Conflicts

The “No Ni Ná” case demonstrates the importance of investing in distinctive and creative branding from the very beginning. Here are some key recommendations for entrepreneurs and designers:

1. Avoid generic or common terms used in the industry.
2. Opt for invented, arbitrary, or evocative symbols that have no direct connection to the product or service. Some successful examples include Google and Apple in the technology sector.
3. Conduct a preliminary trademark search to avoid conflicts.
4. Seek advice from a professional specializing in intellectual property before launching the brand on the market.

Originality as a Brand Positioning Strategy

The level of distinctiveness required may vary by industry. In highly saturated sectors such as fashion, cosmetics, or food, finding truly distinctive marks is more challenging. Conversely, in technology or emerging sectors, where there is greater creative freedom, it is easier to meet this requirement.

In any case, the more unique, original, and memorable the trademark is, the greater the chances of successfully registering it and establishing it in the market.

Lorena Sánchez, Attorneys and Specialists in the Trademark Department at Elzaburu

In 1865, significant advances were made in various fields of knowledge and technology. Some of these went unnoticed at the time, while others marked the beginning of business ventures that are now global leaders. Elzaburu was founded that same year, at a time when science, industry, and culture were beginning to organize themselves around the protection of innovation.

In this article, we highlight ten milestones that occurred in the same year our firm was founded and that have played a significant role in shaping what we now understand as industrial and intellectual property.

1. Mendel's Laws: Genetics Ahead of Its Time

In 1865, Gregor Mendel presented his studies on genetic inheritance. Although his conclusions were not recognized until decades later, his experiments laid the foundation for modern biotechnology, a field that today generates thousands of patents each year. They serve as a clear example of how scientific knowledge takes time to be valued and protected.

2. Joseph Lister and Surgical Antisepsis

That same year, British surgeon Joseph Lister began using carbolic acid (phenol) to sterilize instruments. His technique reduced postoperative infections and transformed medicine, paving the way for the protection of medical and pharmaceutical innovations. Antisepsis marked the beginning of a new era in surgery, and its application led to patentable developments in the hospital setting.

3. Maxwell's Equations: Applied Science

In 1865, James Clerk Maxwell formulated the equations that unified electricity, magnetism, and light. This theoretical breakthrough led to technologies such as radio, television, and telecommunications, all of which are protected by intellectual property rights. Fundamental physics, in this case, became the foundation for numerous industrial sectors that continue to evolve today.

4. Alfred Nobel and Nitroglycerin

In Sweden, Alfred Nobel founded his first nitroglycerin factory. Two years later, he would invent dynamite. His career illustrates how a scientific discovery can become a protected and commercially viable innovation. Furthermore, his legacy was cemented in the field of intellectual property with the creation of the Nobel Prizes, which recognize scientific and literary excellence.

5. The Elevator and Vertical Architecture

In 1865, the installation of elevators in office buildings began to become widespread, following the development of the safety brake by Elisha Otis. This technology transformed urban design and enabled the vertical growth of cities. Its technical evolution has been accompanied by numerous engineering developments that have been subject to industrial protection.

6. The Railroad as a Driver of Patents

That same year, the railroad network continued to expand in both Europe and the Americas. In Spain, connections between Madrid and cities such as Barcelona, Valencia, Seville, and Lisbon were being consolidated. This infrastructure, which transformed mobility and trade, relied on thousands of technical innovations protected by patents: from locomotives to signaling systems and track materials. The railroad is a clear example of how industrial property has been a driving force for progress in strategic sectors.

7. The Origins of Nestlé

In 1865, Henri Nestlé developed a formula for infant nutrition that led to the founding of the Nestlé company. Today, the company is a global leader in brand management, with a solid strategy for protecting its corporate identity. Its evolution demonstrates how a well-established brand can remain relevant for more than a century and a half.

8. Alice in Wonderland

That year, Lewis Carroll published *Alice in Wonderland*, a work that became a classic of children’s literature. Its success demonstrates the value of copyright in the dissemination and protection of creative works. Intellectual property rights have made it possible for this work to be adapted, translated, and marketed in multiple formats and territories.

9. The Transatlantic Telegraph Cable

In 1865, the first telegraph cable between Ireland and Newfoundland was successfully laid. This technical feat revolutionized communications and led to patents in telegraphy, marking the beginning of global connectivity. The transmission of real-time messages between continents was the seed from which the networks that underpin today’s digital economy grew.

10. The Bessemer Process and Modern Steel

The Bessemer process became established in 1865, enabling the mass and efficient production of steel. This innovation was protected by patents and became the foundation for major infrastructure projects and industrial developments. Steel facilitated the construction of bridges, trains, factories, and buildings, and remains a key material in contemporary engineering.

Elzaburu: a company born out of the same innovative environment

As these advances were taking place, Elzaburu was founded. Since then, we have worked alongside inventors, authors, and companies to protect their creations. Sharing our founding year with so many significant milestones reinforces our commitment to protecting the things that transform the world. Industrial and intellectual property not only preserves the value of ideas but also drives their development and application.

Elisa Prieto, Head of Knowledge Management at Elzaburu

Registering a trademark associated with a musical project has become an essential tool in the industrial property and intellectual property strategies of contemporary artists. Rosalía’s recent application for the European trademark “LUX,” months before the release of her new album, illustrates how trademark law can anticipate market trends and protect the commercial value of the intangible assets associated with artistic creation.

Early Registration and Legal Priority

Filing an application for a European Union trademark before the launch of a cultural or musical product allows the applicant to establish a priority date and obtain a presumption of legal protection against third parties. In the case of “LUX,” the artist filed the application on June 6, 2025, for classes 9, 25, and 41, which include musical recordings, clothing, and entertainment services.

This strategy prevents potential opportunistic registrations by third parties seeking to profit from the commercial value of the mark and facilitates the drafting of licensing agreements ( merchandising, distribution, etc.) with greater legal certainty.

The application is currently under review by the European Union Intellectual Property Office (EUIPO). Once this stage is complete, a three-month period will begin during which holders of prior rights may file an opposition on relative grounds. Consequently, an opposition could still be filed if there are similar prior trademarks.

Risks of Not Registering a Trademark in Other Jurisdictions

One of the fundamental principles of trademark law is its territorial nature. This means that the protection granted by a European Union trademark is effective only within that territory.

Failure to register the trademark in relevant jurisdictions may leave the owner vulnerable to unauthorized use or prior registrations by third parties. In this case, Rosalía has also applied for registration in the United Kingdom and the United States, a move consistent with the international significance of her previous Motomami World Tour.

However, at this time, there is no record of an application in China, where releasing the album before registration could have made it easier for a third party to beat them to it. Without a local registration, it would be more difficult to take action against potential infringements or misuse of the “LUX” mark in that market.

The Distinctive Character of “LUX”

One of the key factors in granting a trademark is its distinctiveness. The EUIPO examines applications to rule out generic or descriptive signs in accordance with the absolute grounds for refusal set forth in the EU Trademark Regulation.

Although “LUX” means “light” in Latin and is commonly associated with luxury, this term does not directly describe the protected goods or services (such as clothing, musical recordings, or entertainment services). Therefore, there are no apparent legal obstacles to its registration.

Figurative and Symbolic Trademarks: Specific Characteristics

At the same time, another trademark related to “LUX” is a symbol. These figurative trademarks may also be registered, provided they are not limited to generic shapes and possess sufficient distinctiveness.

Unlike word marks, their distinctiveness is assessed from a visual perspective, based on whether the graphic symbol allows the business or artistic origin of the goods and services offered to be identified.

Disclosure and Transparency in Applications

In the case of European Union trademark applications, it is common for the timeline and information regarding potential oppositions not to be displayed until the application is published. This is because, while the application is under examination, the opposition period has not yet begun, and certain information is accessible only to the owner or the owner’s authorized representative before the Office.

The European Union Intellectual Property Office does not provide for the confidential processing of applications; therefore, this would not constitute a confidentiality strategy. Once the application is published, all essential information would become public.

Trademark Ownership and Relationship with the Record Label

In this case, for the record label to be able to claim a share of the revenue derived from the use of the trademarks, we must rely on what was agreed upon between the parties. In principle, without a formal licensing agreement with the record label, the artist herself will receive the revenue generated by the use of the trademarks registered in her name.

Legal Strategies for Capitalizing on Intangible Assets

When it comes to developing a strategy to capitalize on an album release, various factors come into play, depending on the creativity of the artist or the team. An example of how to leverage intangible assets in this context is the case of Rosalía’s album cover, unveiled at a massive event in Callao. To create the cover, certain rights must be assigned by the collaborators involved—such as the photographer or designer—and these rights are typically owned by the record label, in this case, Columbia Records.

Another way to capitalize on a release—by leveraging intangible assets—is through “listening parties,” a format that originated in the United States and has been used by major artists such as Ye (a.k.a. Kanye West). These types of events serve not only as a promotional tool to generate buzz but also as a unique experience for fans, who can listen to the album for the first time alongside the artist. Rosalía, in particular, has opted for a more intimate format than other artists, thereby creating a more personal connection with her audience and enhancing the experience surrounding the release. This has undoubtedly made it necessary to consider a series of legal measures to protect such activities. For example, formalizing contracts with venues, obtaining public communication licenses, establishing data processing conditions, and managing access. In short, as with almost all music releases, it is the combination of legal measures that makes the difference in determining whether a product will be successful.

Common Mistakes in Intangible Asset Management

The first step in capitalizing on intangible assets to avoid future problems with an album release is to ensure that you have all the necessary rights assignments or licenses for phonographic and publishing exploitation, as well as trademark registrations and rights to other key elements such as artwork, cover designs, and any visual material associated with the release. It is essential to avoid any type of claim for rights infringement, both during the release phase and after the product has been distributed.

A common—and potentially costly—mistake is failing to formalize agreements with producers, performers, and collaborators. It is not uncommon, even today, to see albums released in both physical and digital formats that later lead to claims of copyright or moral rights infringement. These disputes can arise for reasons such as the unauthorized use of samples or rights assignments that were not properly signed. In addition, visual elements—such as the cover art or any other graphic material used in promotion—must be adequately protected to avoid conflicts related to intellectual property.

Lucía Palomino, Attorney in the Trademark Practice Group at Elzaburu, & Jesús Nogués, Attorney in the Media and Entertainment practice group at Elzaburu.

Image: Rosalía's website and EUIPO.

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

The emergence of surreal characters generated by artificial intelligence (AI) on platforms like TikTok has sparked a viral phenomenon known as Italian Brainrot. These creations (such as Tralalero Tralala, Tung Tung Tung Sahur, and Ballerina Cappuccina) have taken the market by storm in the form of trading cards, toys, video games, and merchandise, but they have also raised important legal questions regarding their protection.

Is it possible to register a trademark without being the creator?

Under the trademark system of the European Union and Spain, the “first-to-file” rule grants exclusive rights to the first party to file an application with the competent office (EUIPO or OEPM), regardless of whether that party is the original creator (since the primary function of trademarks is to indicate the commercial origin of the product or service). This has led multiple parties to attempt to register names associated with the Brainrot universe, resulting in a flood of applications and potential conflicts.

However, the law sets clear limits: if it is shown that an application was filed in bad faith (for example, to misappropriate preexisting rights), it may be challenged. But the burden of proof always rests with the claimant.

Can authorship be protected in AI-generated works?

Current legislation recognizes copyright only for individuals. In the case of characters created using AI, the recognition of authorship depends on the degree of human intervention and the presence of originality. If the result is the product of precise instructions and creative control by the prompt writer, it could be considered a protected work, provided it possesses originality and creative merit. The challenge lies in being able to prove it.

In addition, the terms and conditions of use for AI platforms may affect ownership of the results, which adds complexity to legal protection.

Trade Frictions and Brand Coexistence

The proliferation of trademarks selling products associated with Brainrot may lead to commercial friction, with cross-oppositions between applicants. However, it may also be the case that simultaneous applications result in the peaceful coexistence of trademarks when they cover distinct market segments—provided, of course, that no legal action is taken against them by their legitimate owners.

For example, the same name could coexist if it is used for different products (such as toys versus clothing) and does not cause confusion among consumers. This possibility, although less common, is legally viable and can be a strategic option for companies that wish to capitalize on the popularity of the phenomenon without entering into direct conflict with other owners who already hold the registration. However, this does not prevent a legitimate owner who can prove their rights from challenging the registration or filing infringement claims, as appropriate.

How can you protect yourself against unauthorized copying and use?

The proliferation of products inspired by Brainrot has led to commercial friction and the risk of plagiarism. To prevent this, it is essential to have an adequate protection strategy in place: registering trademarks and designs, actively monitoring the market, and using technological tools to detect counterfeits.

Platforms such as Amazon, eBay, and Google allow for the removal of infringing products within 24–48 hours if ownership of the right is proven. However, for this protection to be effective, there must be both a valid, enforceable right and a right holder.

Are we looking at a folk creation?

The difficulty in identifying legitimate authors has led some experts to compare the phenomenon to folk creations passed down orally. If no one claims authorship of characters such as Tralalero Tralala, or of the content featuring them (videos, memes, songs), copyright protection remains open to anyone, subject to a claim by anyone who believes their legitimate rights have been infringed.

What if the Brainrot phenomenon fades away?

The regulations provide that trademarks that are not actually and effectively used for five years shall lapse. However, this period is considered a reasonable timeframe for the owner to begin commercial exploitation of the trademark. In viral phenomena such as Brainrot, this “grace period” can be decisive in establishing a monetization strategy.

The viral nature of AI-generated creations poses new challenges for trademark and intellectual property law. In this context, specialized legal advice is key to avoiding conflicts, protecting intangible assets, and capitalizing on the opportunities offered by the digital environment. At Elzaburu, we work with companies, creators, and rights holders to design effective legal strategies for registering, defending, and exploiting their trademarks in an increasingly complex and digitized ecosystem.

Enrique Jacobo, a trademark attorney at Elzaburu.

The link between sports and intellectual property continues to grow stronger. A year ago, we examined how certain soccer celebrations could be registered as distinctive marks. Today, we find a new example of this trend in Lamine Yamal, who recently registered seven European Union trademarks with the European Union Intellectual Property Office (EUIPO).

Personal Branding as a Strategic Asset

Registering trademarks with the EUIPO is no small matter: it involves establishing a legal framework to protect intangible assets that will accompany the athlete both on and off the field. In Yamal’s case, this strategy will allow him to control the use of his first and last names through two different trademark registrations, as well as the gesture he makes when scoring a goal (304) through five other registered trademarks, preventing third parties from using any of these elements as trademarks or capitalizing on them without his authorization.

Last May, the first trademarks were registered with the EUIPO for sports apparel and footwear, caps, and various types of clothing. Shortly thereafter, protection was expanded by filing applications to register the word marks “LY304,” “304,” and “304 FC” for a broader range of products, including soccer balls, gloves, action figures, sunglasses, helmets, watches, headphones, backpacks, barbells, and video games. This extension of protection reflects a strategic, long-term vision, which advises registering a trademark not only for products or services whose launch is imminent, but also for those to which the brand’s use might be extended in the medium or long term.

Gestures as Distinctive Signs

A year ago, we noted how players like Kylian Mbappé had registered their celebrations as trademarks. In Yamal’s case, the trademark protection for his goal-scoring gesture (number 304) refers to the last three digits of the ZIP code for his neighborhood, Rocafonda, in Mataró (Barcelona).

Lamine Yamal's Celebration: A Record of the Gesture He Made After Scoring a Goal

The registration of this celebration does not protect its performance on the field ( where any other player could perform it without infringing the trademark), but rather its use in the commercial sphere. In other words, it grants the owner an exclusive right to commercially exploit the gesture protected by the trademark and to prevent third parties from using it on products or services without authorization, thereby establishing it as an asset capable of commercial exploitation.

It is also worth noting that, in addition to the protection afforded by trademark law, claims based on copyright (provided sufficient originality is demonstrated) or on the protection of the right to reputation, privacy, and one’s own image may arise in some cases.

A forward-looking strategy

A soccer player’s career, no matter how successful, has a limited duration. Trademark registration is a key tool that allows an elite soccer player to extend his or her economic, social, and cultural influence beyond their time on the field. In this regard, Yamal’s decision reflects a clear understanding that his image and distinctive marks are part of an intangible asset that should be protected from the very beginning.

Furthermore, the combination of such a unique and personal way of celebrating his goals, a number that holds special significance for him, and his geographic origins also reinforces the brand’s authenticity, creating a narrative that blends personal identity, a connection to his hometown, athletic success, and public recognition.

The case of Lamine Yamal confirms an increasingly established trend: elite soccer players are adopting a strategy of protecting as trademarks not only their names and nicknames, but also their goal-celebration gestures and other personal symbols that represent their identity.

At Elzaburu, we are closely monitoring this trend, convinced that intellectual property has become a key element in managing athletes’ identities and creating value beyond the playing field.

Fernando Ilardia, Partner in the Trademark Practice Group at Elzaburu

The evolution of medicinal remedies into the modern pharmaceutical industry is closely linked to the development of intellectual property, the protection of inventions, and the consolidation of regulatory systems that are now essential to public health. Throughout the 19th and 20th centuries, the concept of a medicine evolved from an advertising claim with no scientific basis into a regulated product, backed by patents, clinical evidence, and institutional oversight.

“Patent Medicines”: Brands Without Scientific Backing

During the second half of the 19th century, rapid urban growth, precarious working conditions, and poor sanitation created an environment conducive to the spread of epidemics. Against this backdrop, the public, desperate for solutions, turned to so-called “patent medicines.”

Despite their name, these products were not pharmaceutical patents in the modern sense. In reality, they were registered trademarks under which supposedly curative remedies were marketed, without undergoing any quality control or verification of efficacy. Manufacturers protected the name and the secrecy of the formula through trademark registration, which allowed them to operate indefinitely as long as they paid the corresponding fees.

Most of these formulas contained alcohol, opioids, and other ingredients of questionable safety, and they were sold over the counter—even to children, pregnant women, and the elderly. The consequences were inevitable: cases of poisoning, serious side effects, and even deaths.

In the following video, Elisa Prieto (Head of Knowledge Management at Elzaburu) summarizes how Patent Medicines came to be and why they captivated the public; their pioneering role in the widespread use of advertising; and how regulation and science put an end to these “miracles” from the apothecary.

First Steps Toward Health Care Regulation

Growing concerns about public health prompted medical associations and authorities to take action. Healthcare professionals began to reveal the true composition of these products and the risks they posed, while regulatory agencies developed regulations that required authorization procedures for the marketing of drugs.

By the 1920s, most patent medicines had disappeared, giving way to a more transparent healthcare model based on scientific research.

Consolidation of the Pharmaceutical Industry and the Patent System

The disappearance of “patent medicines” marked the beginning of a completely different era: the industrialization of medicine. For the first time, scientific research and the protection of inventions through pharmaceutical patents took center stage in production. As a result, medicines ceased to be artisanal preparations and came to be produced using standardized and controlled processes.

The ELZABURU historical archives contain significant examples of this transition:

Eno Fruit Salts

Created by James Crossley and registered in Spain in the late 19th century, they were originally developed as a multipurpose remedy. Over time, they evolved into a well-established antacid product in the GSK pharmaceutical catalog, with a global presence.

Coca-Cola: From Medicinal Tonic to Global Icon

Formulated in 1886 by pharmacist John Stith Pemberton, Coca-Cola was initially marketed as a “patent medicine” intended to relieve headaches and digestive problems. Today, with no therapeutic claims, it is one of the most recognizable beverages on the planet.

Salicylic Acid and the Birth of Aspirin

In 1884, German chemist Friedrich von Heyden obtained one of the first patents for the industrial production of salicylic acid, a derivative of willow bark with analgesic and antipyretic properties. Later, in 1890, the Bayer company registered the patent for diquinoliline in Spain, helping to establish a model for reliable and standardized medications.

Ceregumil: Tradition and Modernity

In 1907, pharmacist Bernabé Fernández developed Ceregumil, a nutritional tonic designed to improve digestion, made from grains, legumes, and honey. Registered as a trademark in 1911, the company has expanded internationally and today offers modern dietary supplements tailored to today’s needs.

In addition, the archives contain historical records from other pioneering brands, such as Listerine, Merck, Wellcome, and Glaxo, which helped shape the pharmaceutical industry in the 20th century.

Industrial Property as a Driver of Pharmaceutical Innovation

The shift from unproven advertising remedies to regulated medications was made possible by a combination of three key factors:

1. Rigorous scientific research: Clinical trials have demonstrated the efficacy and safety of these medications.
2. Patent protection: It ensured investment in development and competitiveness in the market.
3. Robust health regulations: These established standards for quality and transparency that bolstered consumer confidence.

The social change brought about by this model led society to move beyond “miracle cures” and demand precisely what we now recognize as the fundamental pillars of pharmaceutical innovation: safe and effective medicines, protected by intellectual property rights and backed by responsible health regulations. Today, although the sector has made progress, these principles remain essential and ensure that innovation is sustainable.

Elisa Prieto, Head of Knowledge Management at Elzaburu

• Extending the protection of a national trademark by registering it as an EU trademark is part of a company's standard business strategy
•  The fact that a party acts dishonestly in one context does not necessarily mean that the party acts in bad faith in a different case
•  The Chinese characters in question are perceived as abstract symbols with no meaning or as decorative elements that refer to China or Asia

In the judgment in Guangzhou Wanglaoji Grand Health Co., Ltd. v. EUIPO ( Joined Cases T-121/24 to T-127/24 and T-129/24), the General Court reiterated the relevant factors for assessing bad faith at the time of filing an application. A separate judgment in the Case T-128/24 (involving the same parties to the proceedings) addressed the additional issue of the re-filing of the trademark.

Background

The contested applications were EU trademarks consisting of three Chinese characters, “王老吉,” and a Latin transcription of the sign’s Mandarin pronunciation (“Wang Lao Ji”).

The contested applications were filed in 2009, 2010, and 2014 and related to goods and services in classes 5, 29, 30, 32, 33, and 35. These applications were owned by the intervening party, Multi Access Ltd.

On July 10, 2018, the plaintiff, Guangzhou Wanglaoji Grand Health Co., Ltd., filed applications for a declaration of invalidity of the contested trademarks with respect to all goods and services for which they were protected. The ground for invalidity invoked was that set forth in Article 52(1)(b) of Regulation 207/2009 (now Article 59(1)(b) of Regulation 2017/1001).

The EUIPO Invalidity Division dismissed the requests for invalidation, finding that the intervening party’s bad faith at the time of filing the contested trademarks had not been proven.

On February 8, 2023, the petitioner filed appeals against the decisions issued by the Cancellation Division. The Board of Appeals dismissed the appeals, concluding as follows:

• The applicant and the intervenor had a complex and long-standing relationship. The intervenor knew that the contested trademarks were being marketed and used in China by the applicant prior to the filing date of the registration applications.
• At the very least, in 2002, the plaintiff’s group of companies should have known that the intervening party’s companies were using trademarks in Europe consisting of the three Chinese characters in question.
• There was nothing to suggest that the market separation between the applicant and the intervenor in 1913 would have prevented the latter from lawfully registering and using the disputed trademarks in the European Union.
• Given that the intervening party and its companies had informed the plaintiff’s companies, through license agreements signed in 1995 and 2002, that they were using trademarks consisting of the three Chinese characters abroad (including Europe), such transparency could not be reconciled with the assertion that the intervening party had acted in bad faith with the aim of unduly taking advantage of the plaintiff’s reputation.
• The intervening party’s intent at the time of registration of the contested trademarks was part of a normal business strategy, since it was the legitimate owner of trademarks consisting of the three Chinese characters in Hong Kong, and it had not been shown that it had been prevented from extending its rights to other jurisdictions.

Judgments

With regard to the allegations of bad faith on the part of the applicant at the time the applications were filed, the General Court upheld the Board of Appeal’s decision and dismissed the action, finding that the trademark owner’s fraudulent intent in filing the applications had not been proven.

The parties had signed a joint-use agreement in 1913, under which both held rights to the same trademark consisting of the three Chinese characters. Therefore, the Court held that both were historically legitimate owners of trademarks consisting of those three Chinese characters in third countries. Since that agreement made no reference to the European Union, in the context of the examination of the registration of that trademark in the European Union, the“first-to-file”principle must be applied.

The principle of priority based on registration is qualified by Article 52(1)(b) of Regulation 207/2009, pursuant to which a European Union trademark must be declared invalid, upon request to the EUIPO, when the applicant acted in bad faith at the time of filing the application. Since the intervener was the owner of national rights in two EU Member States (France and the United Kingdom, prior to Brexit) and it could not be demonstrated that the intervening party’s predecessors were not entitled to apply for trademark registration outside Hong Kong (such as those filed in France and the United Kingdom in 1992), the Court agreed with the EUIPO Board of Appeal in finding that extending the protection of a national trademark by registering it as a European Union trademark is part of a company’s normal business strategy.

The Court noted that the European Union trademark system is an autonomous system and did not take into account the decisions issued by national authorities in third countries (such as China and the Philippines), in which the intervening party was found guilty of bribery, misleading advertising, unfair competition, and bad faith in filing another trademark application (distinct from the trademarks at issue in this case). The Court held that the fact that the party had acted dishonestly in a different context did not necessarily mean that it was automatically acting in bad faith when filing the applications for registration of the contested trademarks in the European Union.

These conclusions were consistent with those reached in the judgments handed down in the joined cases T-121/24 through T-127/24 and T-129/24, as well as in Case T-128/24. The latter was dealt with separately due to an additional ground of appeal concerning the re-filing of trademarks.

In that case, the intervening party had filed an application for registration of a European Union trademark in Classes 5, 30, and 35 that was nearly identical to an earlier European Union trademark. It was filed six days before the grace period for the prior trademark expired and differed from it only in insignificant visual elements. The intervener argued that the prior trademark depicted the three Chinese characters in poor quality and that the new application was intended to modernize that mark.

The Court held that there is nothing in European Union trademark law that prohibits the refiling of an application for registration. Therefore, the mere fact of refiling the application cannot, in and of itself, establish bad faith at the time of filing.

While it is true that, according to case law, a trademark consisting entirely of letters protects the term specified in the application and not the specific graphic or stylistic elements present in that mark, and that the representation of a word mark is not generally of such a nature as to alter its distinctive character, in the present case the appellant had not demonstrated that a significant portion of the relevant public in the European Union was aware of the meaning of the three Chinese characters.

Consequently, the Court found that the relevant public would perceive the signs as devoid of any meaning, as abstract signs, or as signs consisting of decorative elements referring to China or Asia. Thus, the intervener’s attempt to register the disputed trademark in a higher-quality format—which constitutes a modernization of the earlier trademark—was justified by customary business practices. Consequently, the allegation of “repeated conduct” as an indicator of bad faith was rejected.

Concluding Remarks

These rulings highlight the importance of the evidence submitted in support of an application to declare a European Union trademark invalid. The Court reaffirmed the autonomy of the EU trademark system and the non-binding nature of decisions issued by courts and intellectual property offices in third countries. It also emphasized the need to demonstrate the applicant’s bad faith by providing solid and well-founded evidence, rather than relying on mere assumptions or allegations.

The Court also provided valuable guidance regarding practices considered part of a legitimate business strategy, defining the scope of what it considers to be a “modernization” of an already registered trademark when such registrations are in a language that is not an official language of the European Union; consumers’ perception of such trademarks, will be characterized by the belief that they are meaningless terms, abstract signs, or mere decorative elements referring to China or Asia.

Sara Navarro, Senior Associate in the Trademark Practice Group at Elzaburu.

Originally published on WTR on July 28, 2025.

A brand is one of the most valuable intangible assets for any company, not only because it identifies its products or services, but also because it serves as a vehicle for building reputation, conveying values, and fostering consumer loyalty.

But not all trademarks are the same, and a distinction is increasingly being made between those considered traditional—such as names and logos—and those considered non-traditional, which include shapes, colors, sounds, movement, or even specific placements of the mark on a product.

These non-traditional trademarks offer new opportunities for differentiation, but they also entail greater legal and strategic challenges when it comes to protecting them. In this guide, we explain the different types of trademarks, how they are classified, and what you need to consider if you want to successfully register a non-traditional trademark.

What is a trademark, and why is it important to protect it?

A brand is a symbol that distinguishes a company’s products or services and sets them apart from those of its competitors. More than just a logo or a name, a brand represents a company’s commercial identity and becomes a vital asset for its market positioning.

For a trademark to be registered, it must meet two fundamental requirements:

• Distinctiveness: The trademark must be sufficiently distinctive to identify the origin of specific goods or services; it must not be generic, merely descriptive, or excessively simple (such as a dot), nor should it be overly complex (such as a movie).

• Representative capacity: It must be possible to represent it clearly and precisely in the registry so that consumers and competitors know exactly what is being protected.

The advantage of registering a trademark is that its protection can potentially be indefinite, provided it is renewed periodically (every 10 years in the European Union and Spain), unlike other industrial property rights such as designs, whose protection in our country lasts for 5 years and can be extended to a maximum of 25 years.

Classification of brands: traditional and non-traditional

Brands can be divided into two broad groups: traditional and non-traditional. Below, we describe each type with illustrative examples.

1. Traditional brands: the most common ones

These are the ones consumers think of when they hear the word “brand,” as they represent the options that are best known and most widely used by companies. They include:

• Word marks: consisting of words, letters, numbers, or a combination of these in standard characters. Example: the name of a company or product.
• Figurative marks: graphic symbols without text. Example: logos without verbal elements.
• Mixed trademarks: a combination of word and figurative elements in a single mark.

2. Non-traditional trademarks: definition and examples

Non-traditional trademarks are used to protect visual, sensory, or presentation elements that do not fit into conventional categories but may still be capable of fulfilling the distinctive function of a trademark.

2.1 Three-dimensional trademarks

They protect the distinctive shape of a product or its packaging, provided that it deviates from standard designs and is not solely based on a technical or functional purpose. Examples include iconic perfume bottles, as well as unique shapes of handbags, shoes, or beverages.

Three-dimensional trademarks also include trade dress, which protects the overall appearance of a retail establishment (shelf layout, aisles, color schemes, etc.) when that configuration serves to identify a commercial source.

2.2 Position Markers

They protect the specific placement of a symbol on a product. Some examples of this type of non-traditional trademark are:

• The red soles on Christian Louboutin shoes
• Distinctive stitching on the pockets of Levi’s pants
• The Three Stripes of Adidas

2.3 Pattern Marks

They feature the systematic repetition of a graphic or ornamental motif. Take Louis Vuitton, for example, which has succeeded in creating a highly recognizable pattern through the use of its logo, or Burberry with its classic “Check” pattern.

2.4 Color Trademarks

They can refer to a single color or to a combination of colors in specific proportions (both in terms of color distribution and the relative weights of each color).

Registering a trademark based on a single color poses a particular challenge, due to the limited availability of shades and the need to avoid monopolies on basic colors. For this reason, only those trademarks that have achieved a high degree of recognition and association in the market are granted registration.

Some companies that have achieved this include Milka, with its traditional purple color, and 3M, with the classic yellow color of its Post-it notes.

2.5 Sound Marks

They include melodies, sounds, or jingles that identify a product or service—for example, Mercadona’s sung slogan or the iconic MGM lion’s roar.

2.6 Motion Marks

They protect visual animations that depict a moving symbol, but without sound.

2.7 Multimedia Brands

They combine video and audio into a single file. An example would be the opening sequence of a TV show or streaming platform.

2.8 Hologram Marks

They preserve three-dimensional visual effects such as glare, reflections, and contrasts that vary depending on the viewing angle.

2.9 Scent, taste, or touch marks?

Although applications have been filed both at the national level and within the European Union, these trademarks have not yet been accepted in practice, as they do not meet the requirement of clear, precise, objective, and lasting representation. Therefore, at present—and at least until technology exists that allows for their objective assessment—it is not possible to register smells, tastes, or tactile sensations as trademarks.

Legal Challenges Facing Non-Traditional Brands

Non-traditional trademarks present specific challenges when they are filed and examined by intellectual property offices, because their form of expression often differs from traditional signs and from what we have come to recognize as a trademark.

These challenges stem from three key factors:

1. Brand function

The sign must fulfill its function as a trademark; that is, it must—as we have seen—have representational capacity (it must be capable of being clearly and easily perceived) and distinctive capacity (it must identify the business origin of the product or service).

Furthermore, although in theory the requirements are identical to those for traditional trademarks, it is now required that the sign differ from what is customary in the sector to which it belongs. This means that it must not be a shape, color, or arrangement commonly found on the market, but must stand out for its originality or exclusive use.

2. Acquired distinctiveness (secondary meaning)

During the trademark application process, it is possible to demonstrate that the mark has acquired distinctiveness through prior use in the market. This is known as “secondary meaning”: because consumers have repeatedly seen that sign associated with a specific business, they recognize it as indicative of a specific source.

3. Absolute Prohibitions

Special care must be taken with certain absolute prohibitions that are frequently applied to non-traditional trademarks. In particular, when the sign consists exclusively of a shape or feature that:

• It is dictated by the nature of the product—that is, whether it is a standard or necessary form of the product that all competitors in the industry must use.
• It is necessary to achieve a technical result. For example, a shape that serves a practical function of the object, such as the cap of a lipstick, whose shape is determined by its opening and closing mechanism.
• It adds substantial value to the product—that is, a form or feature that the consumer perceives as an element that is attractive solely from an aesthetic or commercial standpoint.

Trademark or Design? How to Choose the Best Protection Strategy

In certain industries, it is often necessary to determine which form of protection is most appropriate: whether to register a sign as a design or as a trademark.

Both options are perfectly valid, but they have different legal statuses:

• An industrial design protects the external appearance of a product and is therefore ideal for protecting packaging or specific product shapes. However, it has a limited term of 5 years, which can be extended to a maximum of 25 years.
• A trademark, on the other hand, protects a sign that identifies a business’s origin, which means that when consumers see it, they can directly associate it with a specific company. For this reason, it is particularly well-suited for protecting names, logos, and also non-traditional trademarks that, thanks to their originality and/or market recognition, have distinctive character. Unlike industrial design protection, trademark protection can be extended indefinitely, provided it is renewed every 10 years.

The key is to analyze each specific situation and determine the most appropriate form of protection based on the commercial objectives and the nature of the mark.

How to Successfully Protect Non-Traditional Trademarks

Non-traditional trademarks allow companies to protect distinctive and innovative assets that form part of a company’s visual or sensory identity. However, registering them requires a very careful legal strategy, with special attention paid to proving distinctiveness, use in the marketplace, and overcoming absolute prohibitions.

At ELZABURU, we help our clients identify the most appropriate form of protection for each asset, taking into account its role in the market and the applicable regulations in each jurisdiction. Therefore, we are committed to designing customized strategies that are tailored to the specific needs and objectives of each case.

Cristina Velasco, Senior Associate in the Trademark Practice Group at ELZABURU.

Registering a trademark is essential for protecting the identity of your company, your products, or your services. This guide explains how to register your trademark in Spain, how to extend its protection throughout Europe or internationally, what can be registered, the legal implications of using a trademark, and answers to the most common questions about trademark protection.

What is a trademark, and what is it used for?

A trademark is a symbol that identifies a company's products or services and distinguishes them from those of other companies. It can consist of words, images, logos, shapes, colors, or sounds.

Registering a trademark grants its owner the right to take legal action against third parties who use identical or similar marks in the same commercial field.

What can be registered as a trademark?

Any distinctive sign that identifies the business origin of a product or service may be registered. This includes:

• Words (terms, names)
• Images, logos, shapes
• Letters, numbers, colors
• Sounds, movements, or multimedia
• Combinations of the above

The mark must be distinctive; that is, it must be capable of identifying and distinguishing the product or service from others on the market, without merely describing its characteristics, qualities, or nature.

Can you register a trademark for anything?

No. To register a trademark, you must specify the specific goods or services to which it will apply, in accordance with the Nice Classification, which divides activities into 45 classes.

Although a single trademark may be registered in multiple classes, protection is limited solely to the specified goods or services and does not extend to other categories not included in the registration, except for well-known trademarks, whose protection may extend to related goods or services depending on their degree of recognition.

Can I use a trademark without registering it?

Although it is possible to use a trademark without registering it, it is not advisable to do so without first checking for prior registrations. Use without registration does not confer exclusive rights; therefore, if another person has previously registered the trademark, that person could take legal action for infringement against the owner using an unregistered mark.

In Spain and the European Union, exclusive rights to a trademark are primarily acquired through registration. Therefore, to effectively protect your trademark and avoid legal risks, it is advisable to register it before beginning commercial use.

What happens if I register a trademark but don't use it?

Once registered, the trademark has an initial term of five years during which its use is not mandatory.

However, once this period has elapsed, the owner must make effective and genuine use of the trademark to maintain its protection. If the trademark is not used continuously and in accordance with the registration, a third party may request that the trademark be revoked for lack of use.

Valid uses include, among others:

• Actual use in the marketplace, even with minor variations that do not affect distinctiveness.
• Use for products intended for export.
• Use authorized by third parties on behalf of the owner.

In addition, in opposition or invalidation proceedings, it may be necessary to submit evidence of use to prove the actual use of the trademark.

What can I do if someone applies for or uses a trademark similar to mine?

If you discover that a third party is using a mark that is identical or similar to yours for the same or related goods or services, you can take various legal actions, including:

• Send an out-of-court demand requesting that the use cease.
• Object to new registration applications that conflict with your trademark.
• File a lawsuit for trademark infringement, either in civil or criminal court, depending on the severity of the case.
• Request injunctive relief, a product recall, and compensation for damages.

How do you register a trademark in Spain?

Registering a trademark in Spain is an administrative process handled by the Spanish Patent and Trademark Office (OEPM). It is essential to carry out this process with rigor and precision to avoid rejections by the OEPM, potential oppositions from third parties, or invalidation proceedings, if applicable.

1. Preliminary Search for Existing Trademarks

Before applying for registration, it is recommended that you search the OEPM database to check whether there are any identical or similar trademarks already registered that could pose an obstacle to your registration.

Although the applicant may be able to conduct this search on their own, it is recommended that the search be carried out by a specialized professional to prevent the trademark application from facing oppositions from third parties due to a conflict with a prior trademark.

2. Defining the goods or services: Nice Classification

Trademark protection is not universal; rather, it is limited to the goods or services specified in the application, in accordance with the Nice Classification, which is divided into:

• 34 product categories
• 11 categories for services

Choosing the correct classes is essential: registering a trademark in inappropriate classes may leave its actual scope of use unprotected and lead to disputes with third parties.

3. Prepare and submit the application

The application is filed with the Spanish Patent and Trademark Office (OEPM) and must include:

• Applicant's information (name, tax ID number, and address).
• A representation of the mark to be registered (word, logo, image, etc.).
• List of products or services classified according to the Nice Classification.
• Proof of payment of the corresponding official fee.

An incomplete or incorrect application may result in delays, objections, or even denial of registration.

4. Formal Review of the Application

After the application is filed, the OEPM conducts an admissibility and formal review to verify that the legal requirements are met:

• That all required information and documents have been provided.
• That the application fee has been paid in full.
• That the applicant has standing to register the trademark.

If the application is in order, it will be accepted for processing.

If the application contains formal defects, the Spanish Patent and Trademark Office (OEPM) grants a period of time to correct them; if they are not corrected within that time, the application will be deemed withdrawn.

5. Publication in the Official Industrial Property Bulletin (BOPI)

Once the application has been accepted for processing, it is published in the BOPI. This publication serves two purposes:

• Notify interested third parties
• Begin the two-month period during which objections may be filed.

6. Civil Service Exam Period

During this period, owners of other earlier trademarks may oppose the registration if they believe that the new trademark infringes on their rights.

In that case, an adversarial proceeding is initiated in which both parties present arguments and evidence.

If no objections are filed against the application, or if any objections filed are dismissed, the case will proceed to the next stage.

7. Trademark Registration and Publication

If there are no obstacles, the OEPM issues a decision granting the trademark and publishes it as granted in the BOPI. From that point on:

• The registrant acquires the exclusive right to use the mark in the designated classes.
• The trademark is protected for an initial period of 10 years, renewable indefinitely for equal periods.

8. Brand Use and Maintenance

Once granted, it is essential to:

• Use the trademark in the marketplace within five years.
• Renew it every 10 years ( as long as the applicant remains interested).
• Monitor third-party applications to prevent conflicting registrations.
• Take action against unauthorized use (trademark infringement).

How do I register a trademark in the European Union?

If you need to protect your trademark in several European countries, you can apply for a European Union Trademark (EUTM) with the EUIPO (EU Intellectual Property Office).

Advantages:

• Coverage: A single application provides protection in all 27 EU member states.
• Centralized management: Registration, renewal, competitive examinations, and modifications are all handled by a single agency.
• Strategic: It facilitates expansion into European Union countries by eliminating the need for country-by-country registrations, although any invalidation or opposition affects the entire Union.

Can you register a “global” trademark?

It is not a “global trademark,” but WIPO allows you to seek protection in multiple countries through a single international application, thereby simplifying the process and reducing costs.

Given that this is a very specific type of registration, the trademark owner should, with professional advice, evaluate the applicant’s expansion plans as well as the commercial interest in each country to determine whether the best approach for their protection strategy is to opt for the WIPO route or for national registrations in each territory.

Key Requirements:

• Have a trademark that is registered or pending registration in Spain, the EU, or another member country of the Madrid System.
• Specify the countries where you wish to obtain protection.
• Comply with the local regulations of each designated country, as each national office may grant or deny protection.

Advantage: You centralize the application and management of renewals, but the legal effects continue to depend on each country.

What is the difference between a trademark, a trade name, and a logo?

• Trademark: a symbol that identifies and distinguishes a company's products or services from those of others.
• Trade name: the name that identifies the company as such in the market.
• Logo: an image or graphic design that can be registered as a figurative trademark or form part of a combined trademark.

What types of trademarks can be registered?

The trademark registration system in Spain and the European Union allows for the protection of various types of distinctive signs, which are commonly classified as traditional and non-traditional trademarks, depending on how they are represented.

Traditional brands:

These are the most common and are based on signs that can be seen or read:

• Word marks: consisting solely of words, letters, or numbers, without any graphic elements or stylization.
• Figurative trademarks: consisting of graphic elements, logos, or stylized designs, which may or may not include text in a special typeface.
• Mixed trademarks: a combination of word and figurative elements.

Non-traditional brands:

These are symbols that are not necessarily represented in a conventional visual way. Some examples include:

• Three-dimensional trademarks: specific shapes of the product or its packaging.
• Sound marks: sounds or combinations of sounds.
• Color marks: colors or combinations of colors without outlines.

The law requires that the representation of the trademark be clear, precise, complete, durable, and objective, so that the authorities and the public can determine exactly the scope of the protection granted.

Depending on the type of trademark, the representation may be graphic, auditory, audiovisual, or in the form of digital files, in accordance with the formats and technical requirements established by the Spanish Patent and Trademark Office (OEPM).

What happens after a trademark is registered?

After the trademark is granted:

• You must use it consistently and in real life.
• You can license it or sell it.
• You have to renew it every 10 years.
• You can take action against third parties who infringe on your rights.
• It is advisable to actively monitor the market and new registration applications.

At Elzaburu, we have been advising companies, entrepreneurs, universities, and public entities on the protection and defense of their distinctive marks for over 160 years. Our specialized team guides you through the entire process: from filing a trademark application in Spain, Europe, or internationally, to monitoring, renewing, and defending your trademark through administrative or judicial proceedings.

Enrique Jacobo, Attorneys and Specialists in the Trademark Department at Elzaburu.