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.

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

On June 4, 2025, the General Court of the European Union (GCEU) upheld the validity of two Community designs registered by Decathlon for its popular Easybreath snorkel mask, dismissing the invalidity actions filed by the German company Delta-Sport Handelskontor GmbH. The decision, set forth in cases T-1060/23 and  T-1061/23, provides up-to-date guidance on how functionality, distinctiveness, and overall impression are analyzed in the protection of industrial designs in the EU. For those who manage design portfolios or litigate in the field of industrial property, these rulings are essential.

These judgments by the General Court of the European Union mark a significant milestone in the interpretation of Regulation (EC) No. 6/2002 on Community designs. In them, the Court addressed two key issues raised by Delta-Sport: whether the characteristics of the design were dictated exclusively by its technical function and whether the designs lacked individual character due to prior disclosures.

The TGUE concluded that certain design elements, such as the oval shape of the frame and the “X”-shaped strap attachment, were not determined solely by technical function but also reflected the designer’s aesthetic choices. Furthermore, the fact that there were viable alternatives for fulfilling the same technical function reinforced the idea that there was room for creativity.

With regard to distinctiveness, the Court held that, although there were similarities to earlier designs (including Decathlon’s own patents), the differences in elements such as the shape of the frame, the colors, the strap, and the tube cap were sufficient to create a distinct overall impression on the informed user.

1. Background: From Registration to Litigation Regarding Community Designs

• 2013 and 2014: Decathlon registered two designs (002340224-0001 and 002526699-0001) for the Easybreath mask with the EUIPO ; the mask featured an innovative one-piece visor and tube.
• Application for invalidation: Delta-Sport argued that the visible features of the product were dictated exclusively by its technical function (Art. 8.1 of the Design Regulation) and that there were sufficient prior disclosures to deprive the design of its individual character (Art. 6 of the Design Regulation).
• The EUIPO rejected the application for a declaration of invalidity, and Delta-Sport appealed to the General Court of the European Union.

002340224-0001

002526699-0001

Source images of the judgments: Cases T-1060/23 and T-1061/23

2. Key Legal Points in the Rulings on Decathlon's Designs

2.1. Technical Function vs. Aesthetic Choices

Some design elements, such as the oval frame and the way the strap attaches to the head, were not driven solely by technical requirements. These details also reflect aesthetic decisions made by the designer.

2.2. Uniqueness and Overall Impression

Even acknowledging similarities with prior patents and utility models, the TGUE concludes that the formal and visual differences are sufficient to create a distinct overall impression on the “informed user.” The Chamber emphasizes that the comparison is made as a whole, without breaking down individual components.

2.3. Available Alternatives and the Designer's Discretion

The Court also considered whether there were viable alternatives to the contested design that could perform the same technical function. This was key to demonstrating that the designer had a margin of creative freedom, thereby reinforcing the validity of the aesthetic choices made. The presence on the market of designs featuring different technical solutions made it possible to reject the claim that the contested elements were mandatory.

2.4. Evidentiary Value of the Documents Submitted

The TGUE carefully examined the evidence submitted by Delta-Sport, including images of prior products and technical documents. However, it determined that this evidence was insufficient to demonstrate a lack of novelty or distinctiveness, as it did not reproduce the same essential elements with the necessary precision and clarity. The comparative analysis focused on the perception of the informed user, not on a detailed technical analysis.

2.5. Practical Significance for Design Protection

These rulings confirm that aesthetics matter and that designers have the right to protect their creative expression, even in functional products. This is particularly relevant for companies with extensive design portfolios, such as Decathlon, which must anticipate potential conflicts and justify the design decisions they make.

3. Practical Implications for Companies and Designers

1. A Commitment to Visible Creativity
   • Even in highly functional products, small variations in shape, edges, or proportions can make all the difference. This case demonstrates that there is room for creativity and that it deserves protection.
2. Document the design process
   • Keeping sketches, renderings, and proof-of-concepts makes it easier to demonstrate that certain design choices are based on aesthetic criteria and not just technical requirements.
3. Keep an eye on pre-announcements
   • Although court rulings allow for similarities, a thorough clearance search reduces the risk of invalidation due to lack of distinctiveness.
4. Strengthens marketing and usability arguments
   • Demonstrating how the public perceives the design (opinions, awards, sales) helps establish a distinct overall impression before the EUIPO or the courts.
5. Prepare thorough expert reports
   • The opinions of experts in ergonomics, engineering, and design may be key to refuting the claim of exclusive technical function.

Judgments T-1060/23 and T-1061/23 confirm that, in sectors with common technical solutions, the designer’s creative scope and the informed user’s perspective remain decisive for protecting a design in the EU. For this reason, when developing defense strategies against invalidation actions for Community designs, it is important to always combine technical expertise, creativity, and market evidence.

At Elzaburu, we assist companies and designers throughout the entire process of managing, protecting, defending, and internationalizing their industrial designs (across all sectors and for all types of products).

Paloma Querol, Associate and Attorney at the ELZABURU office in Valencia.

• 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.

The legal framework governing the protection of industrial designs in the European Union has been updated with the entry into force of Regulation (EU) 2024/2822 and Directive (EU) 2024/2823. This legislative reform marks a significant milestone in the harmonization and modernization of the system for registering and protecting industrial designs in Europe, as the previous directive dated back to 1998.

With this reform, the European Union seeks to facilitate access to industrial design protection, particularly for small and medium-sized enterprises (SMEs), while adapting to the technological and economic challenges of the digital age.

Key Consequences of the Legislative Reform on Designs

1. Change in terminology: The term “Community design” is replaced by “European Union design, ” which brings this concept into line with others such as the “European Union trademark.”
2. There is a limit of 50 designs per multiple request.
3. The class unity requirement for multiple design applications in the EU has been eliminated: it is now possible to include designs from different classes in a single application.
4. The publication fee is eliminated for design applications (filed on or after May 1, 2025) and requests for deferment of publication. Under the new rule, if you wish to abandon a design without publishing it, you must expressly renounce the design (abandonment by default will no longer be an option).

Other Implications of the New Law on Industrial Designs and Models

1. Expanding the Concept of Industrial Design

One of the major innovations in the industrial design law is the broadening of the definition of “product” eligible for protection. From now on, it will be possible to register not only designs applied to physical objects, but also those that:

• They can be viewed in graphical or digital environments.
• Depict the spatial arrangement of elements in indoor or outdoor settings.
• Include animations, movements, or transitions as part of the design's visual style.

2. Scope of Protection and Visible Elements

Protection is limited to the features visible in the representations of the registered design. However, those features need not be visible at any specific moment or in any specific situation of use. There is only one exception: in the case of components of complex products, protection applies only to the elements visible during normal use of the product.

3. Legislative Harmonization and Redress Clause

The clause regarding the repair of replacement parts becomes mandatory for all European Union member states. This harmonizes the legal situation regarding the use of protected designs to repair a complex product and thereby restore its original appearance, when the design is incorporated into an object that constitutes a component of a complex product on whose appearance the protected design of the component depends.

4. Preventing Unauthorized 3D Printing

Another critical issue is the emergence of technologies such as 3D printing. To prevent infringements, the new regulations clarify that: “the creation, downloading, copying, and making available of any medium or software that records the design for the purpose of reproducing a product that infringes on the protected design,” without authorization, is strictly prohibited.

5. Representation of Designs: New Accepted Formats

The regulations also call for an update to the formats allowed for submitting designs. Pending official confirmation, it is expected that videos and 3D images will be accepted as alternative means of representation to the traditional seven static views.

6. Changes in Rates and Associated Costs

Significant changes have been made to the fee schedule:

• Increase in renewal rates.
• Reduction of appeal rates and declarations of nullity.
• Elimination of fees such as publication and transfer fees.

Timeline for Implementing the Design Standard: Two Key Phases

This reform will be implemented in two phases:

1. First phase: May 1, 2025, when many of the changes described take effect.
2. Phase Two: July 1, 2026, when the rollout of the new regulatory framework will be completed.

For their part, EU member states will have until December 9, 2027, to incorporate the changes from the new directive into their respective national laws.

New Law on Industrial Designs and Models: A Step Forward in Design Protection

Although this is not a regulatory revolution, this update represents a substantial improvement in the legal protection of industrial designs in the European Union. The filing and registration system remains in place, and substantive examination of designs continues to be conducted only in cases where an application for a declaration of invalidity is filed against a registered design.

Similarly, we won't know until next year how the key aspects of the second phase will play out. Some of these changes could have a significant impact in practice, both for designers and for companies that use industrial designs as a competitive asset.

Ultimately, users of the design protection system in the European Union will have new legal tools at their disposal that will allow them to protect their creations more effectively and flexibly in an increasingly digital and globalized market.

At Elzaburu, we will continue to provide updates on how the practical implementation of these reforms is progressing, especially as we look ahead to the second phase, which will take effect in 2026.

Pedro Saturio, Associate Partner in the Patent Practice Group at Elzaburu.