Legislative developments in the field of industrial property are an essential factor to consider when seeking to maintain or create a competitive advantage in any market. Recently, countries such as Libya, Iraq, Turkey, and the Bahamas have introduced significant reforms that directly impact how trademark registrations are managed and maintained within their respective systems.

Libya: Significant Increase in Renewal Rates

One of the most notable developments in Libya is the significant increase in official fees for trademark renewals, which has led to a sharp rise in the cost of maintaining trademarks for their owners.

Specifically, the official trademark renewal fees have risen to over 20,000 USD—that is, more than 2,000 USD for each year the trademark is in force.

What is the recommended procedure for registering a trademark in Libya?

It is essential to review renewal deadlines and budget for the corresponding costs well in advance. This change particularly affects foreign trademark owners, who will need to carefully evaluate whether maintaining their registrations is feasible given the new costs. Additionally, it is important to consider the specific characteristics of the Arab legal environment when developing a trademark strategy in the region.

Iraq: New Classification for Products and Services

Since January 2025, the Iraqi Trademark Office has implemented the 11th edition of the Nice Classification, bringing it into line with international standards. This step allows applicants to seek protection in all 45 classes, including service classes, thereby expanding the range of options available to trademark owners.

Implications of the Adoption of the 11th Nice Classification in Iraq

This transition requires the reclassification of goods and services in registered trademarks, pending applications, and future renewals. The office has published specific guidelines, and compliance with them will be mandatory in every new proceeding.

Given this update, trademark owners are encouraged more than ever to plan ahead for expirations or other relevant actions. The goal is to review and adapt to the new classification well in advance, thereby avoiding delays or issues in trademark proceedings in Iraq.

Turkey: Cancellation of Trademarks for Nonuse

As of March 2025, Turkey has introduced an administrative procedure that allows for the filing of applications to cancel trademarks for nonuse directly with the Turkish Patent and Trademark Office (TPTO), without the need to go to court or engage in litigation.

Key Aspects of the New Turkish System

• This applies to trademarks that have not been used in the country for five consecutive years.
• The request must be submitted formally and with a clear legal basis.
• The proceeding is directed against the registered owner as of the date the action is filed.
• Subsequent changes in ownership will be taken into account during the process.

Advantages of the New Turkish Trademark Procedure

This new approach offers a faster, more cost-effective, and more efficient alternative to the traditional judicial process, making it a useful tool for optimizing trademark management in Turkey.

Bahamas: New Trademark Law in Effect

The Bahamas has amended its trademark legislation with the entry into force, on February 1, 2025, of a new Trademark Act. Among the most significant changes is the ability—which did not previously exist—to register service marks.

Considerations for Companies with Interests in the Bahamas

Although certain operational aspects still need to be worked out, the new regulations pave the way for companies in sectors such as tourism, financial services, and hospitality to strengthen their brand presence in the country. In any case, it is advisable to proceed with caution until the practical implementation of this reform is fully established.

Staying Up to Date: A Key Factor in Protecting the Brand Globally

The reforms in these four countries underscore the importance of staying up to date on legal changes that affect the registration and maintenance of trademarks abroad. These adjustments—whether for economic, technical, or procedural reasons—require us to review our strategies and plan ahead.

At ELZABURU, we have a team with extensive experience advising companies on brand management abroad, helping our clients adapt to new legal environments safely and efficiently.

Cristina Arroyo, Director oftheInternationalBrands Divisionat ELZABURU

• The EUIPO Board of Appeal concluded that the two colors and their combination lacked distinctiveness
• The Court agreed that the trademark fell within the grounds for refusal set forth in Article 7(1)(b)
• The EUIPO was correct in referring to the relevant case law on color combinations, such as Heidelberger Bauchemie

In Lotus Bakeries v. EUIPO (Case T-1096/23), the General Court addressed the absolute ground for refusal set forth in Article 7(1)(b) of Regulation 2017/1001, which prohibits the registration of trademarks that lack distinctive character.

Background

On February 22, 2022, Lotus Bakeries filed an application to register the following color trademark (EU trademark application No. 018659684) for goods in Class 30:

On February 24, 2023, the EUIPO examiner rejected the application on the basis of Article 7(1)(b), finding that it lacked distinctiveness.

Lotus Bakeries filed an appeal against the examiner's decision. That appeal was dismissed by the EUIPO Board of Appeal, which found that the two colors (red and white) and their combination lacked distinctiveness.

Lotus Bakeries filed an appeal with the General Court, alleging infringement of:

1. Article 7(1)(b);
2. Article 94; and
3. the principles of proportionality and equal treatment.

Decision

The General Court confirmed that the trademark applied for lacked any distinctive character. The Court found that the Board of Appeal had conducted a reasoned and non-contradictory analysis of the sign when it examined:

• whether the relevant public was able to identify the commercial origin of the sign;
• the argument that the alleged use of the trademark was irrelevant to the analysis of the sign’s distinctiveness; and
• the presence of the colors red and white in the market.

The Court found that the overall impression of the mark applied for had been correctly assessed, even though the Board of Appeal had first analyzed the colors (red and white) separately. The mark applied for consists of a simple combination of two colors arranged in a series of outline-less stripes, such that the sign could be used for advertising or promotional purposes.

With regard to Lotus Bakeries’ claim that the Board of Appeal misapplied the case law, in particular the judgment Libertel (Case C-104/01, May 6, 2003), the Court held that the Board was correct to refer to other relevant case law concerning color combinations, such as Heidelberger Bauchemie (Case C-49/02, June 24, 2004).

Lotus Bakeries also argued that the Board of Appeal had taken into account the descriptive nature of the mark applied for (Article 7(1)(c)), whereas its decision was based solely on Article 7(1)(b). The Court found that this was not the case. In essence, the Board had refused the mark applied for because the use of the colors red and white was common in the market and because their combination would not allow the mark to be perceived as an indication of commercial origin. Its additional considerations regarding the possible perception of the color combination as decorative, promotional, or functional were not made for the purpose of analyzing a potential generic nature, but rather to determine to what extent the relevant public would perceive the trademark as serving a function other than that of an indication of commercial origin.

Accordingly, the Court agreed with the Board of Appeal that the trademark applied for fell within the grounds for refusal set forth in Article 7(1)(b), and that, consequently, Lotus Bakeries could not validly rely on prior decisions of the EUIPO, the EUIPO Guidelines, or its training materials to challenge that conclusion.

Comment

This ruling sheds light on the assessment of the distinctiveness of trademarks consisting of a combination of colors, taking into account not only the trademark itself but also the market in which it operates, in order to determine its ability to convey information to consumers, particularly regarding the commercial origin of the goods and/or services. It also provides valuable guidance on the formal aspects of decisions, including all elements relating to their reasoning and the application of the principles of proportionality and equal treatment.

Patricia Gómez, Junior Associate in the Trademark Practice Group at Elzaburu.

Originally published on WTR on April 11, 2025.

Knowing a brand's value is key to understanding its impact on the market and its relevance to consumers. The world's most valuable brands stand out not only for their financial success but also for how consumers perceive them.

Currently, according to Brand Finance’s “Global 500” report, there has been a growing increase in the value of some Spanish brands, which are achieving an increasingly competitive position on the global stage.

Which Spanish brands saw the biggest increase in value in 2024?

1. Santander

Banco Santander ranks as the most valuable Spanish brand, coming in at No. 93 on the global ranking. Its brand value has increased by 16%, reaching $21.8 billion.

2. Zara

The fashion brand Zara, part of the Inditex Group, ranks 116th, with an 11% increase in its brand value, which now stands at $18.1 billion.

3. BBVA

BBVA 's market value has increased by 28%, reaching $9.2 billion and placing it at No. 247 on the ranking.

4. Movistar

Movistar ranks 273rd, with a brand value of $8.6 billion, after growing 12%.

5. CaixaBank

CaixaBank has seen its brand value grow by 25%, reaching $7.1 billion and ranking 329th globally.

6. Mercadona

Mercadona has managed to rank 359th in the global ranking.

7. Iberdrola

Rounding out the list of Spanish brands that have grown by 10%, reaching a value of $5.8 billion.

Source: Brand Finance Global 500 2025

Key Factors Behind the Growth of Spain's Most Valuable Brands

Brands face numerous challenges, ranging from technological changes and geopolitical uncertainty to evolving consumer expectations. Success lies in adapting quickly to these challenges while aligning brand strategy with financial goals.

Some of the factors that have contributed most to the increase in the value of Spanish brands are:

• Commitment to digitization and technological transformation. Investment in technology and digital platforms enables brands to expand their reach and improve their competitiveness in an increasingly digitized environment.
• International expansion and market diversification. Entering strategic markets, adapting to local preferences, and consolidating global networks are key to a brand’s long-term growth.
• Commitment to sustainability and social responsibility. Incorporating environmental, social, and governance (ESG) criteria strengthens consumer trust and enhances brand value.
• Customer Loyalty and Corporate Reputation. Brands that set themselves apart with a clear value proposition, quality service, and strong customer relationships are able to strengthen their reputation and increase their market presence.

The Importance of Brand Value on the Global Stage

The rise of Spanish brands in the “Global 500” ranking underscores the importance of managing intangible assets in an increasingly competitive market. These companies’ ability to innovate, expand internationally, and build trust among consumers has been key to their success.

As Spain's most valuable brands continue to rise on the global stage, it is essential to remain committed to protecting industrial and intellectual property.

At Elzaburu, we are committed to helping companies strengthen and protect their brand value, ensuring their sustainable growth in an increasingly digital and globalized world.

Lucía Palomino, attorneys and specialists in the Trademark Department 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

• The case was referred to the Enlarged Board of Appeal of the EUIPO due to its legal complexity and significance.
• It was determined that the trademark MARICÓN PERDIDO would offend a significant portion of the general Spanish public, as it is considered a homophobic slur.
• The evidence presented by the petitioner did not demonstrate that the gay community has attempted to redefine the meaning of “Maricón” in order to eliminate its offensive connotation.

The Enlarged Board of Appeal of the EUIPO has issued its decision in Case R 2307/2020-G, assessing the absolute ground for refusal under Article 7(1)(f) of Regulation 2017/1001, which prohibits the registration of trademarks that are contrary to public policy or accepted principles of morality. The decision includes findings on the standards for determining accepted principles of morality, the relevant public when assessing this ground for refusal, and the role of freedom of expression.

Background

On May 5, 2020, Turner Broadcasting System Europe Limited filed an application to register the word mark MARICÓN PERDIDO as an EU trademark, seeking protection for goods and services in Classes 9 and 41: audiovisual products and entertainment services. It is worth noting that the trademark application was filed before the premiere of the popular television show *Maricón Perdido* on June 21, 2021.

On November 25, 2020, the EUIPO examiner rejected the application in its entirety pursuant to Article 7(1)(f), in conjunction with Article 7(2). The decision was based on the argument that the mark meant “total faggot” and was a vulgar and offensive expression. The examiner considered that this sign would cause offense not only to the consumers for whom the goods and services were intended, but also to people who might come across it by chance in their daily lives.

On December 4, 2020, the petitioner appealed the decision. His main argument was that, although MARICÓN PERDIDO was “a homophobic expression used in Spain to describe men who could not be reeducated to be heterosexual,” it had evolved into an ironic expression used by the gay community itself, which has adopted the term “Maricón.”

Given the complexity of the case, the Board of Appeals referred it to the Enlarged Board of Appeals. In a decision issued on November 25, 2024, the appeal was dismissed.

Decision

The Enlarged Chamber upheld the examiner’s opinion, concluding that the trademark applied for would offend a significant portion of the general Spanish public, as it is considered a homophobic slur and, therefore, contrary to human dignity and accepted principles of morality.

In reaching this conclusion, the Enlarged Chamber took into account the criteria established in the FACK JU GÖHTE (Case C-240/18 P) and COVIDIOT (Case R 260/2021-G) cases, which provide guidelines on determining accepted principles of morality and clarify the role of freedom of expression in trademark proceedings.

With regard to the applicant’s arguments concerning the incorrect application of this absolute ground for refusal, the Enlarged Chamber noted the following:

• The brand's audience consisted of the consumers targeted by its products and services, as well as other people who, while not interested in them, might encounter the brand in their daily lives.
• Since the sign consisted of words in Spanish, the audience was primarily Spanish-speaking, including children and young people under the age of 18.
• Regarding the meaning of the mark:“Maricón” means “homosexual” or “effeminate” and is used as an insult. Meanwhile, “Perdido” refers to a person dominated by bad habits. In this regard, the Enlarged Chamber went beyond the examiner’s interpretation and held that the most accurate interpretation of the mark was “hopeless faggot.”
• With regard to the applicant’s assertion that the “gay community” had attempted to reclaim and redefine the meaning of the term “Maricón” in order to eliminate its negative and offensive connotation, the evidence presented did not support this claim. The Enlarged Board upheld the examiner’s decision that, as of the filing date of the application, the term remained offensive not only to a significant portion of the general Spanish public but also to many members of the “Spanish gay community.” Although the articles submitted by the applicant mentioned that the term “Maricón” had been coined by the LGBTQ+ community—particularly thanks to the television show *Maricón Perdido*—they also noted that its meaning depended on who said it, how it was said, and in what context. Therefore, the term remained unacceptable when directed at gay men by someone outside their group.
• The personal circumstances of the trademark applicant (who claimed to be part of the potentially offended group) had no impact on the applicability of this absolute ground for refusal.
• This absolute ground was considered a valid limitation on freedom of expression.

Comment

As in the previous case before the Enlarged Board of Appeal (see COVIDIOT), this decision clarifies the factors to be considered when refusing to register a mark on the grounds that it violates accepted principles of morality. Furthermore, it provides useful criteria for assessing the relevant public when applying this ground for refusal and defines what is considered morally acceptable according to normal standards of tolerance and sensitivity.

The fact that the trademark application was filed before the premiere of the television show *Maricón Perdido* may have influenced the Expanded Chamber’s decision. Based on the evidence provided by the applicant, the show was very well received by its audience, and the irony in its title was highlighted. However, this did not prevent the trademark from being deemed offensive, especially when used by people outside the LGBTQ+ community.

Pamela Olivos Reyes, Associate in the Trademark Practice Group.

Originally published on WTR on January 17, 2025

The Duchess of Sussex, Meghan Markle, recently announced her new business venture: “As Ever, ” a brand about which few details are known but which has already sparked controversy in Spain. The reason: its logo bears a resemblance to the coat of arms of the City Council of Porreres, a small town in the Balearic Islands.

Far from announcing legal action, the municipality has opted for a diplomatic strategy: inviting Meghan Markle to visit Porreres. However, this case raises a legal issue regarding industrial property and trademark registration in the European Union (EU).

Can Meghan Markle register her “As Ever” trademark in the EU?

The European Union Intellectual Property Office (EUIPO) examines each application according to strict criteria to avoid conflicts with preexisting marks. In this case, the viability of the “As Ever” trademark could be compromised due to its similarity to the coat of arms of the Porreres City Council, which opens the door to potential objections based on current regulations.

The Paris Union Convention and Its Application in the “AS Ever” Case

Article 6 of the Paris Convention prohibits the registration of trademarks that incorporate emblems, coats of arms, and official symbols of member states and government organizations without their consent. In Spain, there are currently 14 symbols protected under this provision, but the coat of arms of Porreres is not included on this official list.

However, the EU Trademark Regulation introduces another relevant protection mechanism in this case. According to Article 7(1)(I), the registration of trademarks containing symbols of special public interest may also be refused. The Porreres City Council could use this criterion to present arguments against the trademark application, asserting that its coat of arms has historical and cultural value. It could also rely on any other claim demonstrating the existence of a special public interest and justifying its protection within the EU.

What can the Porreres City Council do about Meghan Markle's brand?

Porreres has not announced any legal measures. However, there are a few options for defending its emblem that it could consider if it decides to take action:

1. Submit third-party comments to the EUIPO. This action would allow for the presentation of the reasons why the registration of “As Ever” could violate EU law.
2. Apply for official protection of the coat of arms at the national and international levels, thereby preventing third parties from appropriating similar symbols.
3. Negotiate directly with Meghan Markle and her legal team to reach an out-of-court settlement regarding the use of the logo.

What would happen if the EUIPO rejects Meghan Markle's trademark?

If the EUIPO were to decide to reject the registration of “As Ever” in Europe, Meghan Markle could continue to use her trademark outside the EU, provided there are no legal conflicts in those territories.

In this regard:

• In the United States, the regulations are different, and the Porreres coat of arms would not be protected unless it were registered in that country.
• In the United Kingdom, following Brexit, trademarks must be registered separately, so the EUIPO's ruling would not directly affect their registration there.

This case underscores the importance of conducting a preliminary feasibility analysis before registering a trademark, especially when there are graphic elements that could lead to conflicts with official symbols or matters of special public interest.

Paloma Querol, associate in the trademark practice group at Elzaburu

Since January 2025, the Canadian Intellectual Property Office (CIPO) has launched a pilot project for the ex officio cancellation of trademark rights, based on Section 45 of the Canadian Trademark Act (Section 45 of the Trademark Act). This mechanism allows the office to randomly select trademark registrations for cancellation proceedings if proof of use in Canada for the claimed goods and services is not provided, or if the lack of use is not justified.

A pilot project with significant implications

Although this initiative might appear to run counter to the principle of legal certainty, CIPO justifies it as a measure to assess the state of the country’s Trademark Registry, promote fairer competition, and ensure that registered rights reflect market realities.

This procedure applies to all trademarks registered in Canada that have been registered for at least three years. The selection is made at random in monthly batches of 45 registrations. Once notified, the owners or their legal representatives have three months to submit evidence of use of the trademark in Canada or, failing that, to justify its nonuse.

A Change in Canadian Trademark Policy?

Since the 2019 reform, use is no longer a prerequisite for obtaining trademark registration in Canada. However, with this new random cancellation procedure, CIPO may be reconsidering this position and evaluating the possibility of reintroducing the requirement to provide proof of use as a condition for maintaining trademark rights.

If so, this measure could signal a shift in approach in Canadian trademark policy, suggesting a possible return to the requirement to prove use in order to maintain registration, as was the case under the previous legislation.

Prevention and Compliance: Key to Avoiding Risks

 Given this new reality, trademark owners in Canada must ensure that their rights are being used effectively or, failing that, that they can justify their lack of use in accordance with legal exceptions. Otherwise, they run the risk of being selected in this random process and losing their trademark.

This pilot project marks a turning point in trademark rights management in Canada, and its progress will need to be monitored to determine its impact on legal certainty and the country’s trademark protection strategy.

Cristina Arroyo, Associate Partner in the Trademark Practice Group at Elzaburu

Arabic is the fifth most widely spoken language in the world, with approximately 274 million speakers, behind English, Mandarin Chinese, Hindi, and Spanish. It is currently the official language of at least 22 countries and is used as a business language in key nations such as Saudi Arabia, the United Arab Emirates, and Kuwait.

In which countries and regions is Arabic the language of business?

Arabic is the official language in many countries in the Middle East, West Asia, and North Africa. It is spoken in Saudi Arabia, Bahrain, the United Arab Emirates, Iraq, Jordan, Kuwait, Lebanon, Oman, Qatar, Syria, Yemen, Lebanon, Israel (although Hebrew is the official language, Arabic is also widely spoken), Egypt, Algeria, Gaza and the West Bank, Western Sahara, Morocco, Mauritania, Libya, and Tunisia. 

In sub-Saharan Africa, countries such as Chad, Djibouti, Sudan, and South Sudan have Arabic as their primary language. It is also the official language of the African Union, the Cooperation Council for the Arab States of the Gulf, and the Arab League.

Although it is not the primary language, Arabic also coexists with other official languages in countries such as Malta, Afghanistan, Eritrea, Niger, Senegal, and Turkey. Furthermore, as the language of Islamic worship, Arabic is spoken in all regions where Islam is the majority religion.

As a result, Arabic serves as a key link for economic, cultural, and academic activities across various regions, and proficiency in the language is essential for navigating the global economy, geopolitics, and cultural exchange to ensure proper brand protection. 

Why adapt trademark protection to the Arabic language and culture?

When designing a trademark protection strategy, language plays a crucial role, and factors such as the following come into play: the chosen country, local trademark laws, cultural and idiosyncratic nuances, rules and regulations governing the marketing of certain products or the provision of services, the characteristics of the product or service itself and its target audience, the degree of cosmopolitanism in the region, etc.  

Given this complex landscape, decisions regarding trademark protection must be aligned with these factors and with an appropriate marketing strategy. The trademark must be adapted to both the local language and culture to achieve effective protection and ensure its success in Arab markets.

How do you choose where to protect your brand in the Arab world?

In general, it is important to ensure that the chosen brand protection—especially in the Persian Gulf countries, Western Asia, and North Africa— meets minimum requirements and that the brand’s market presence (as reflected in products and services, advertising, signage, and business identifiers, etc.) is perceived by the local public in the desired manner. 

Some of the characteristics specific to this language that must be taken into account when registering trademarks are:

• The writing goes from right to left.
• Italics are used frequently.
• There are no capital letters.
• Each letter can have several forms, depending on its position in the word.
• The meaning of a word can vary depending on its context.

Iraq and the Persian Gulf: Examples of Trademark Registration in Arabic Required by Law

In Iraq, for example, registration in Arabic is required by law. If a trademark is filed in non-Arabic characters, an additional registration in Arabic will be required.

In Persian Gulf countries, such as the United Arab Emirates, it is common for trademarks to be registered in two versions: one in Latin characters and the other in Arabic. This is because commercial laws require that the transliterated version be used in commercial establishments, and from a business perspective, displaying both can be advantageous for reaching a wider audience. 

How should the trademark be registered: in Latin characters, Arabic characters, or both?

It is important to decide whether it is sufficient to register the trademark in Latin characters or whether it is also necessary to register the Arabic version. In some cases, especially for trademarks of products vulnerable to counterfeiting, registering the trademark in both versions (Latin and Arabic) can provide stronger protection against infringers or legal disputes. While it is not a common practice, in certain regions it might also be useful to extend protection to the different Arabic dialects prevalent in each country.

There is no one-size-fits-all solution . In addition to legal considerations, it makes sense for a brand to seek to connect effectively with its target audience. Therefore, adapting to the local language and culture is key to attracting consumers.

Ultimately, the decision regarding the type of registration and trademark protection strategy will depend on local laws, market conditions, and the specific interests of each company in the various Arab countries.

Cristina Arroyo, Director of the International Brands Division at ELZABURU

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

• The owner of a Community trademark that had expired due to failure to renew filed an appeal against the notice informing him of that expiration.
• Since the petitioner did not file a statement of grounds within the prescribed time limit, the appeal was dismissed as inadmissible.
• Furthermore, since the notification was not a decision closing the proceedings, the appeal did not comply with the provisions of Article 66(2) of Regulation 2017/1001.

In its decision of August 26, 2024, in Case R 656/2024-4, the Fourth Board of Appeal of EUIPO dismissed an appeal filed by the owner of a Community trademark registration that had expired due to failure to renew, challenging the notice informing the owner of said expiration.

The Board of Appeal found that, since the proprietor of the EUTM did not file a statement of grounds within the relevant time limit, the appeal did not comply with Article 68 of Regulation 2017/1001 and must be dismissed as inadmissible pursuant to Article 23(1)(d) of Delegated Regulation 2018/625. Furthermore, since the notification by which EUIPO informed the proprietor of the EUTM, in accordance with Article 53(8) of Regulation 2017/1001, that the registration of the EUTM would expire on July 23, 2023 (i.e., the notification that is the subject of the appeal) was not a decision terminating the proceedings, the appeal did not comply with Article 66(2) of Regulation 2017/1001 and should have been dismissed as inadmissible pursuant to Article 23(1)(b) of Delegated Regulation 2018/625, even if the statement of grounds for the appeal had been filed within the time limit (which was not the case).

Facts

The figurative mark TAJ (EUTM No. 012007258) was filed on July 23, 2013, and was granted on December 3, 2013.

The proprietor did not renew the registration by the due date (July 23, 2023) or within the six-month grace period provided for in Article 53(3) of Regulation 2017/1001. By notice dated February 2, 2024, and sent on February 3, 2024, the EUIPO informed the EUTM proprietor, in accordance with Article 53(8) of Regulation 2017/1001, that the EUTM registration had expired on July 23, 2023 (“the contested notification”). Furthermore, the EUTM proprietor was informed that, if he considered this conclusion to be incorrect, he could request a decision on the matter in writing within two months of the notification. It was noted that such a decision would only be issued if the EUIPO did not share that view; otherwise, the conclusion would be amended and the EUTM proprietor would be informed.

On March 26, 2024, the owner of the EUTM filed an appeal requesting the complete annulment of the contested notice and submitted a statement indicating that, due to the withdrawal of his representative, he was unaware of the notice of expiration. The statement concluded by noting that a brief setting forth the grounds for the appeal would be filed shortly.

On June 5, 2024, the Registry of the Boards of Appeal notified the holder of the EUTM of an irregularity regarding the notice of appeal. It stated that, pursuant to Article 66(2) of Regulation 2017/1001, an appeal may only be filed against a decision that concludes the proceedings and that, therefore, the appeal was likely to be dismissed as inadmissible. The EUTM proprietor was invited to submit observations and to provide the Board with any supporting evidence regarding those conclusions within one month of receiving the notification.

The statement of grounds for the appeal was received on July 3, 2024, well after the four-month period from the date of notification of the decision provided for in Article 68(1) of Regulation 2017/1001.

Decision

The Board of Appeals declared the appeal inadmissible:

• The head of the EUTM did not file a written statement of reasons within the applicable time limit (four months after the contested decision); and
• The contested notice is not a decision that concludes the proceedings and, therefore, is not subject to appeal.

Comment

The decision issued by the Board of Appeal is logical and unavoidable for both procedural and substantive reasons. The appellant did not file its arguments within the four-month deadline. Even if it had done so, the appeal would still be inadmissible, given that EUIPO issued the notice that is the subject of the appeal for purely informational purposes, since the expiration of the EUTM registration due to failure to renew occurs by operation of law. The cancellation will take effect on the day following the expiration date of the existing registration. In other words, the revocation of the EUTM registration did not occur as a result of the EUIPO’s notification, but had already taken place previously, as the 10-year term of validity and the subsequent six-month grace period had elapsed without the holder of the EUTM registration applying for renewal.

José Ignacio San Martín, Associate Partner at ELZABURU

Originally published on WTR on October 18, 2024.