The powerhouse team at Elzaburu remains a market leader, taking a multidisciplinary approach to safeguarding the trade mark portfolios of major national and international corporations, advising them on a diverse spectrum of matters. These include trade mark due diligence, contentious-administrative proceedings in the High Courts of Justice and the Supreme Court, domain name recovery proceedings, and infringement, revocation and invalidity actions. Led by trade mark prosecution head Luis Baz, litigation head Antonio Castán, head of legal and business Javier Fernández-Lasquetty and head of anti-counterfeiting and anti-piracy Juan José Caselles, the group represents household names such as McDonald’s, NBA, Formula 1 and IKEA. Supported by experienced litigators Enrique Armijo Chávarri and Carlos Morán and associate María Cadarso, the team’s portfolio spans such sectors as entertainment, automotive, health, and food and beverages.
Intellectual property: Trade marks in Spain
‘Brilliance, availability, kindness and success in the entrusted matters.’
El Corte Inglés
Hard Rock Café
With offices in Barcelona, Madrid and Las Palmas, the IP group at boutique firm Grau & Angulo remains a dominant force in the market, advising major global rights holders from a broad range of sectors, including fashion, media and entertainment, telecoms, sports, healthcare, food and beverages, and automotive. Providing a full service in this field, the team can regularly be found advising on trade mark enforcement, counterclaims, cross-border conflicts, unfair competition matters and anti-counterfeiting strategy. Led by cross-border litigation expert Alejandro Angulo, the group’s portfolio includes household names Adidas, Chanel and BMW. The team is supported by automotive sector expert Maite Ferrándiz, counterfeit goods enforcement specialist Carlota Viola, experienced litigator Jordi Camó, and associate Esther Gómez.
‘Excellent firm specialized in Intellectual Property, with among the best lawyers in Spain. They are practical, they explain the issues very clearly and are always willing to go one step further.’
‘The team at Grau & Angulo are very strong and knowledgeable. They are fully coordinated. The client never feels the service is down as there is always a team member ready to provide service.’
‘Alejandro Angulo is the Messi of trade mark practitioners. He is smart and creative. At the same time, he perfectly understands the client’s needs and adapts to the client strategy.’
‘Grau Angulo offers excellent pragmatic support at a reasonable price.’
‘We have been working very successfully with Ignacio Marques from Barcelona for years. Ignacio is well versed in all areas of IP. Thanks to his pragmatic and commercial support, we have always been able to achieve good solutions.’
‘Very fast in replying, good quality, thinking out of the box.’
‘Jordi Camo: we have a very good relationship and he is bringing his emails to the right point and trying to make them as easy in replying as possible.’
Procter & Gamble
- Represented Tommy Hilfiger in successfully defending the legality of its “TH” interlocking logo used on handbags and other accessories against a Spanish hat designer claiming prior rights.
- Advised Procter & Gamble, Hugo Boss Trademark Management, Lacoste and HFC Prestige Products before the Supreme Court in a strategic trade mark enforcement defending major perfume brands against smell-alike perfumes.
The intellectual property team at Gómez-Acebo & Pombo maintains a leading position in the market. The firm adopts a sector-oriented approach to safeguarding the trade marks of major corporates across a diverse spectrum of industries, such as retail, technology, food, life sciences, TMT and entertainment. Representing a portfolio of household names like Jaguar Land Rover, Hermes and Giorgio Armani, the group’s full service extends to obtaining interim injunctions and other infringement actions, unfair competition issues, representation before the Spanish Patents and Trademarks Office and the EU General Court, opposition actions, registration and market strategy. Jesús Muñoz-Delgado, an expert in IP enforcement, leads the department, with key support provided by digital law expert Sofía Martínez-Almeida, senior partner Gonzalo Ulloa and administrative proceedings specialist Mercedes Corbal.
‘The team has in-depth knowledge of the subject and can advise its clients on any questions related to the use of the trademarks.’
‘I would highlight Sofía Martínez-Almeida.’
Bodegas Emilio Moro
Jaguar Land Rover
Master Franchise Salvaje LTD.
Ampere Power Energy
- Representing wine company Bodegas Emilio Moro, owner of the winery Bodegas Emilio Moro against one of its major competitors, the vineyard owner Carlos Moro, as well as against companies of the Matarromera group owned by the latter.
- Represented Galletas Gullón, a biscuit manufacturer, in proceedings before the General Court against Kraft Foods which derive from the registration of a figurative trade mark over the design of a biscuit package.
- Representing two professional associations of poultry and bovine meat, INTERPORC and PROVACUNO, in an interim injunction court application against Foods for Tomorrow, a Spanish company that produces plant-based products.
The IP group at Baker McKenzie leverages the strength of its experienced team to advise globally recognised trade mark holders on a diverse spectrum of issues across the practice area. Such matters include unfair competition, oppositions, counterclaims, trade mark cancellation claims and the implementation of protective strategies. Headed by intellectual property specialist José María Méndez in Madrid and brand enforcement expert Cristina Duch in Barcelona, the group’s client base covers the fashion, food and beverages, pharmaceuticals, technology and consumer goods sectors. The group is supported by trade mark litigation specialist María Dolores Garayalde in Madrid, and senior associate Íñigo Gené in Barcelona.
The experienced intellectual property group at Bird & Bird is a regular advisor to national and multinational clients across a broad range of matters related to the safeguarding and management of their trade mark portfolios. These include trade mark infringements, counterclaims, analysis, strategy for market expansion and unfair competition. Headed by veteran IP litigator José Miguel Lissén, opposition proceeding specialist Mariano Santos and trade secrets expert Antonio Cueto, the team’s client portfolio features household names Marriott and Kraft Heinz, and spans the hospitality, energy, food and beverage, retail, publishing, manufacturing, automotive and chemical sectors. Key support is provided by Manuel Lobato and associate Maria Fernandez.
‘The Bird & Bird team is highly specialized, with a very marked commercial focus, excellent quality of service and high proactivity.’
‘Mariano Santos leads the brand practice and has given a very particular stamp to the team. He is a partner who is directly involved in the issues, always available and with great knowledge.’
LleidaNetworks Serveis Telemàtics, S.A.
Marriott International Group
Wisetech Global Limited
Bench Global Ltd
Dos Mil Palabras S.A. – Ok Diario
F.F. Seeley Nominees Pty. Ltd
Seeley International (Europe) Limited
Sumitomo Chemical Co.
With multiple offices in Spain and beyond, Cuatrecasas' intellectual and industrial property group has the size and resources to handle a broad range of work in the field of trade marks. Such matters include the drafting and negotiating of licence and franchise trade mark agreements, litigation and enforcement, arbitration proceedings and cross-border prosecutions. Led by Albert Agustinoy in Barcelona and trade mark expert Álvaro Bourkaib in Madrid, the group’s client base features key market players Casio and Pernod Ricard. The team is supported by IP litigation strategist Jorge Llevat in Barcelona and trade mark nullity action specialist Alejandro Negro in Madrid.
Leo Messi Management
Instituto de las Industrias Culturales y de las Artes (ICA)
Junta Constructora Temple Expiatori de la Sagrada Familia
- Representing and defending Leo Messi Management in litigation involving a decade-long dispute, in proceedings in which the court upheld the registration of the Messi trade mark for sports articles, arguing that there was no conflict with Massi, the bicycle manufacturer.
- Advising OHLA on changing and registering its new international trade mark in over 35 countries where it offers its services.
- Advising Sanoma on drawing up agreements on industrial and intellectual property matters (including licenses and assignments) within the framework of acquiring Santillana Educación and its regional subsidiaries.
The industrial and intellectual property team at Garrigues takes a multidisciplinary approach to advising local and international corporates on a diverse array of trade mark matters. These include trade mark infringement, unfair competition, portfolio management and marketing strategies, and opposition actions. Led by digital business expert Carolina Pina Sánchez in Madrid and IP prosecution expert João Miranda De Sousa in Lisbon, the group’s client base spans the automotive, technology, e-commerce, media, telecoms, and food and beverages sectors. The team is backed by Valencia, Murcia and Alicante IP head Pedro Tent and counsels Isabel Pascual De Quinto and Celia Sueiras in Madrid.
‘I believe that they know our company well and are quite aligned with our projects and, in my experience, Garrigues’ work provides more added value than others.’
Kennedys Law LLP
Valencia Club de Futbol
Hijos de Rivera (Estrella Galicia)
Bimba y Lola, SL
Makeblock Co Ltd
Clave Denia S.A.
Asociación de Organizaciones de Productores de Plátano de Canarias (ASPROCAN)
- Representing Chinese robotics company Makeblock in a trade mark infringement and unfair completion claim against Distintiva, one of its former distributors in Spain.
- Acted successfully as an expert on Spanish law applicable to a pan-European trade mark lawsuit before the District Court of The Hague with regard to the claim brought by FKP Sojuzplodoimport against the SPI Group.
- Filed a trade mark infringement claim on behalf of Goya Foods against a German company and its Spanish subsidiary concerning the sign “Goya” used to promote and offer services in Palma de Mallorca.
Hogan Lovells International LLP
Multinational companies regularly turn to the experienced intellectual property, media and technology team at Hogan Lovells International LLP for advice on complex trade mark matters. Such matters include trade mark infringement, unfair competition, arbitration and mediation, trade mark prosecutions and EU trade mark oppositions. Spearheaded by IP dispute resolution Burkhart Goebel in Madrid and trade mark enforcement expert Imogen Fowler in Alicante, the group’s client portfolio contains household name clients across the food and beverages, banking, pharmaceuticals, telecoms, sport, energy and medical devices sectors, among others. The team is supported in Madrid by infringement and validity proceedings expert Ana Castedo and trade prosecution practice head Constanze Schulte.
Fédération Internationale de Football Association (FIFA)
- Representing Mars and all of its subsidiaries in EU and Spanish trade mark matters, including handling all EUIPO and Spanish Patent Office matters.
- Handling FIFA’s EU trade mark portfolio and advising FIFA on its strategy around trade mark protection.
- Managing all of Yum! Brands’ prosecution and enforcement of its trade marks and designs in Europe, Russia and the CIS region.
HOYNG ROKH MONEGIER
The intellectual property group at HOYNG ROKH MONEGIER offers a comprehensive service to advise high-profile multinationals on a wide range of trade mark portfolio matters. These include border control strategies, the protection of colour names as trade marks, unfair competition, portfolio management, opposition proceedings and trade mark licensing. Led by managing partner and IP authority Luis Fernández-Novoa and brand protection expert Laura Alonso, the team’s client base features household names Duracell and Hitachi, and spans the food and beverages, tobacco, electronics, e-commerce and music sectors, among others. The group is supported by counsel Laura Cantero and associate Alicia Martín.
‘Technically excellent, responsive, commercial advice.’
‘Laura Alonso stands out as an excellent lawyer with a strong understanding of commercial needs.’
Campbell Soup Company
Caryn Mandabach Productions Limited
Hitachi Data Systems
International Sport Broadcasting
Jimi Hendrix (Experience Hendrix LLC)
Marley Green LLC
Seiko Epson Corporation
The IP and unfair competition team at Uría Menéndez provides a comprehensive service to national and global brands to advise them on trade mark enforcement and market strategy matters. Such matters include trade mark infringement, unfair competition, misleading advertising, revocation of third-party trade mark use, cancelation of trade marks due to non-use and the enforcement of foreign judgments. Headed by unfair competition expert Montiano Monteagudo in Barcelona, the team can regularly be found advising clients across the pharmaceuticals, biotech, food and beverages, banking, retail and infrastructure sectors. Senior associate Francisco Javier García is another name to note in Barcelona. Former co-practice head José Massaguer retired in December 2021.
Other key lawyers:
Champagne Louis Roederer
Zur Rose Group
The trade marks department at Abril Abogados, SL advises major multinationals on a diverse span of matters, from trade mark prosecution and unfair competition to domain disputes, cancellation of trade marks for non-use, and opposition actions. In a significant development - since delayed due to the pandemic - the firm announced in 2020 its merger with Italian IP firm Jacobacci & Partners. Headed by IP litigation expert Ignacio Temiño and Eleonora Carrillo in Madrid and trade mark prosecution expert Salvador Diaz in Valencia, the team’s client base includes household names Volvo, Tesla and Burger King, spanning the food, automotive, telecoms and hospitality sectors, among others. TMT specialist Jorge Oria is another key contact in Madrid.
Ignacio Temiño; Eleonora Carrillo; Salvador Diaz
Other key lawyers:
‘The Abril Abogados team seems to be part of our own company: they care about the files as if they were their own, trying to anticipate problems, providing solutions, and solving the doubts that arise.’
‘The experience has been favorable. It is a very close team.’
‘Our deal is usually with Ignacio Temiño. Its closeness makes a difference.’
- Assisted Reacciona with the cancellation of a trade mark for non-use, a judgment confirmed by the CJEU.
- On behalf of Danone, successfully defended the trade mark ACTIVIA against “ACTIVIA WEB”, a declaration of a well-known brand in Spain by the court.
- Acting in defence of Benetton’s trade mark portfolio against a competitor challenging all rights in Spain.
Balder is retained by major international companies for advice on a broad span of matters related to the management and safeguarding of high-value trade mark portfolios. These include filing strategies, trade mark prosecution, co-existence agreements, and opposition and cancellation actions. Led by litigation group head Patricia Koch and trade mark expert Óscar García, the group’s client portfolio includes key market players across the media, hospitality, food and beverages, and automotive sectors. The team is backed by experienced counsel Jens-Christian Jahnke.
Other key lawyers:
Leveraging the strength of its global network, the experienced IP team at Clifford Chance provides a comprehensive service to major multinational IP rights holders on a broad range of trade mark matters. These include unfair competition, trade mark registration, trade mark clearance reports, trade mark infringement, revocation actions, and dealings with customs authorities. Headed by multi-jurisdictional IP dispute expert Miquel Montañá in Barcelona, the group is well versed in acting for major companies operating in the healthcare, life sciences, technology, telecoms and media sectors, among others. The team is supported by technology co-head Josep Montefusco and senior associate Sonia Sebé.
‘There are a number of excellent lawyers in the IP team.’
‘Miquel Montana is simply superb. He is very experienced and has a very global outlook. He has seen and done most IP related litigation work in Spain. He is a go to person when there are any IP issues in Spain.’
‘Clifford Chance’s team is tremendously effective and the communication achieved during the pandemic has been extraordinary and key to the success of many cases. They have very good internal coordination.’
‘Undoubtedly, the plus of these lawyers is that they have strong knowledge of the matter and when faced with a specific matter, they go deeply into seeking knowledge, strategies and alternatives. This with the fact that it has a humane and accessible treatment in communications and in the face of problems. Effectiveness prevails and they are transparent.’
‘This team is great to work with.’
‘Juan Cuerva is a great lawyer and person.’
AstraZeneca Farmacéutica S.A.
European Super League
Love Digital Factory, S.L.
L’Oréal España, S.A.
Thermo Fisher Scientific
Edwards Lifesciences Ltd.
Barcelona City Council (Ayuntamiento de Barcelona)
Oxfam – Intermon
- Advising the organisers of the European Super League on the registration of the “Super League” trade mark.
- Representing a leading manufacturer of pet food products at the hearing of a trade mark case before the Court of Justice of the European Union.
- Advising Lindt on the judicial protection of its trade marks in Spain.
CMS Albiñana y Suárez de Lezo's industrial, intellectual property and digital business group regularly advises major global corporates on trade mark matters, covering unfair competition, protection of trade secrets, trade mark infringement, opposition actions, and content acquisition agreements, among other areas. Led by IP litigation expert María González Gordon and backed by senior associate Ricardo Gómez-Barreda, the team’s client portfolio features companies operating in the technology, e-commerce, automotive, pharmaceuticals and telecoms sectors.
Other key lawyers:
‘I work with Maria Gonzalez Gordon on intellectual property matters in Spain, she is energetic, creative and very hardworking. Her advice is always clear and practical.’
‘Excellent international networking, decades of experience, excellent responsiveness, reasonable prices, high professionalism, friendly, courteous approach.’
‘María González Gordon works extremely efficiently, has an enormous knowledge of trade mark law and related fields of law, shows outstanding strategic intuition, creates solutions and, for example, not new difficulties with her clear answers and is thus the self-evident number 1 for us in Spain.’
‘María González Gordon really stands out – she is highly professional and responsive.’
‘I found the CMS team to be highly responsive to our requests, as well as proactive and practical with their recommendations. Both the partner and associate on the file were well-versed on the matter and were responsive to last minute requests for assistance.’
CBRE (CB Richard Ellis)
1031023 B.C. Ltd. (“Phantom Creek Estates”)
Common Project Trading
Grupo 888 Holdings
Hikma Pharmaceuticals and Teva Pharmaceuticals
Colinas Golf Residencial
- Advised Adama in relation to the use of its sign “Adama” in Spain and infringement of third parties’ rights.
- Advising Otovo on the protection of its trade secrets through the implementation of the corresponding measures and Spanish trade mark registration matters.
- Providing Common Project Trading advice in the context of litigation regarding the opposing party’s claim based on the alleged parallel imports of the protected Havaianas flip-flops by the client.
The experienced IP group at Augusta Abogados is a popular choice for a number of local and international companies. Headed in Barcelona by IP and dispute resolution expert Carlos Valls, the team advises on a broad range of matters, from trade mark infringement and unfair competition to nullity proceedings and trade secrets infringement. The group’s client base covers the fashion, construction materials, biotech and food sectors, among others.
‘The Augusta trade mark team is led by the highly experienced Carlos Valls. Reflecting Carlos’s renowned attributes, Augusta’s trade mark team is responsive, approachable and efficient. That combination of qualities, combined with high quality work, is rarely encountered elsewhere.’
‘Carlos Valls has a solid track record in the trade marks field, dealing with national and international clients, so he has a total command of the English language and knows how to handle matters from other jurisdictions. The highlight of his practice is his creativity: his experience in the legal and business fields, together with his knowledge, make him always able to find a creative solution to any need.’
‘They have extensive knowledge of trade marks and patents and offer global advice on everything related to this issue at the European level.’
‘Excellent knowledge of the trade marks and patents sector. Great human quality of the partners, especially Carlos Valls.’
- Advises Skechers on the protection against infringements of its design rights in Spain.
Madrid-based boutique firm Baylos fields an experienced and dedicated IP team, which provides major global and national corporates with a one-stop-shop service to ensure brand protection, management, and advice on a comprehensive range of trade mark matters. Led by cross-border litigation expert Fernando Rodríguez, EU trade marks and designs specialist Juan Luis Gracia, managing partner David Gómez and unfair competition advisor Pedro Merino Baylos, the group assists clients with counterfeiting, oppositions and cancellations, as well as worldwide registration and monitoring services. Supported by associate Morgan Schaaf, the team represents companies in the media, food and beverage, finance and information technology sectors, among others.
Other key lawyers:
‘Practical approach, quality of service, commercial vision, great technical quality.’
‘Baylos provides deep legal expertise combined with a practical, business-savvy approach. We’ve repeatedly turned to the team for IP disputes in Spain. They’ve provided excellent advocacy and localized insight. We’ve been greatly pleased by the quality and value of the work.’
‘Juan Luis Gracia Albero is our go-to lawyer. His responsiveness, focus on client-service, business-sensitive approach and skilled advocacy make him a stand-out in Spain for us.’
‘They are clear on communication, proactive in reporting case updates, and skilful in implementing trademark strategy.’
‘The firm’s professionals, in addition to having excellent technical skills and a long professional career, convey confidence and closeness to us, they are proactive and always respond with agility and efficiency to the different matters that we deal with them.’
S. Tous S.L.
NBC Universal Media, LLC
Nube – Pacha
Schweppes International Limited
Scalpers Fashion, S.L.
- Advised Japan Tobacco on global trade mark matters.
- Advising Schweppes in a trade mark case in recent years, which relates to a situation where the same trade mark has two different owners in the EU.
- Advising the Touse jewellery firm on registration strategy, civil/criminal/administrative litigation and copyright matters.
The intellectual and industrial property group at Andersen coordinates with offices in Madrid, Barcelona, Valencia and Seville to advise local and international corporates on a wide range of trade mark issues. Such matters include preliminary clearances, the registration of trade marks, trade mark prosecutions, and trade mark licensing and assignment. Led by IP expert José Garrido in Madrid, the group’s client roster spans the tobacco, construction, insurance, food and beverage, and sport sectors.
‘José Garrido is an exceptional lawyer. He has experience, deep knowledge of IP law, close treatment, adaptability to changes, flexible for meetings via Zoom. Also, with excellent results.’
‘José Garrido. Simply brilliant.’
‘In our case, the partner with whom we have the greatest confidence is José Garrido, who has been working with us for years on all matters related to our brands and our IP. All the issues that José Garrido has handled have been successfully resolved, but in addition, throughout the process, so complex for those unfamiliar with the world of intellectual property, he has given us great peace of mind, which is essential in such matters.’
‘Very responsive, highly professional and skillful staff, ready to provide assistance on an urgent basis. Whenever we asked for information or estimation from this firm on behalf of our client, we always receive prompt reply with the detailed information and very clear efficient recommendations.’
‘Quick and responsive. Always look at the matter commercially.’
‘José Garrido is a great lateral thinker and gets straight to the point.’
Peris Correduría de Seguros
High Tech Hotels & Resorts S. A.
Portal Golf Gestion
- Advising the companies Lladró and Daisa, Diseños Artísticos e Industriales on trade mark and copyright matters.
Eversheds Sutherland stands out for its international footprint, which is of benefit when advising its client base of well-known international companies. The firm is well versed across a range of trade mark matters, covering trade mark registration, trade mark prosecution, trade mark licence agreements, trade mark infringement, due diligence and unfair competition issues, among other areas. Led in Madrid by arbitration expert Kiko Carrión, IP partner José Mariano Cruz and litigation and life sciences specialist Marta González, the department has experience working with clients in the food and beverages, pharmaceuticals, retail, sports and e-commerce sectors. The team is supported by legal director Inmaculada López.
Other key lawyers:
Athlon Car Lease Spain
With ‘high quality professional services', the intellectual property group at Fieldfisher JAUSAS advises major national and international corporates on registration and protection strategies for their trade mark portfolios. Josep Carbonell in Barcelona leads the team, assisting household names like Bimbo and negotiating licensing agreements and IP rights transfer contracts. The team has notable experience working in the sports, IT, fashion, food, health and video game sectors.
‘It is a legal firm that presents high quality professional services at acceptable costs. It is one of the Spanish law firms we work best with, as they provide excellent solutions to our clients’ problems.’
‘Josep Carbonell is simply exceptional! He has an extraordinary handling of the matter and gives a lot of confidence when giving his opinions, in addition to being a very important lawyer within the Spanish IP group. I have worked with him for over 20 years and have always had excellent results!’
PONS IP utilises the experience of a network with 300 associated offices worldwide to advise national and international corporates on a broad span of trade mark issues. Such matters include opposition proceedings, trade mark cancellations, infringement, licensing and transfer agreements. Headed by trade mark litigation expert and the firm’s new international affairs director Isabel Cortés, the department includes deputy IP head Jean Devaureix and Carmen González, who specialises in trade mark opposition. The team’s client roster spans the education, food and beverages, media and life sciences sectors, among others.
‘It is a very orderly, methodical firm, they dedicate a lot of detail and attention to the cases. They are proactive.’
‘Our experience has been very satisfactory with the PONS team.’
‘The practice is highly cooperative, very fast in responding, of good service quality, and has good resources in other areas.‘
Universitat Politècnica de València
Universidad de Sevilla
Universidad de Salamanca
Fundación General de la Universidad de Valladolid
Universidad de Zaragoza
Instituto de Microelectrónica de Sevilla – CSIC
Fundación Centro Nacional de Investigaciones Cardiovasculares (CNIO)
Fundación Vasca de Innovación e Investigación