Intellectual property: Trade marks in Spain

Elzaburu

Elzaburu provides the full range of advice on trade marks, advising a prestigious client base on registration and administrative procedures, contract law and litigation. Luis Baz heads the team, which attracts instructions from a diverse list of sectors, from cosmetics and fashion to the sports and entertainment industries. Baz specialises in litigation across the spectrum of IP matters and also has specific strength in domain names and infringement of IP rights on the internet. Litigation department head Antonio Castán is a key contact and Fernando Ilardia has recently covered contentious trade mark issues in the entertainment, technology and food industries. Javier Fernández-Lasquetty and Juan José Caselles are further names to note.

Practice head(s):

Luis Baz

Other key lawyers:

Antonio Castán; Fernando Ilardia; Javier Fernández-Lasquetty; Juan José Caselles; María Cadarso; Tránsito Ruiz

Key clients

7ELEVEN

BBVA

CHAMPAGNE

CONDE NAST

DUNKIN COFFEE

FORMULA 1

GAP

HARD ROCK CAFÉ

IKEA

JOHN DEERE

MAHOU

MCDONALD’S

MELIÀ

MGA

MOROCCANOIL

NBA

NISSAN

ORNUA

Work highlights

  • Acted for Kennametal in a High Court case to overturn an earlier decision by the Spanish Patent and Trademark Office and grant protection in Spain for the international mark WIDIA GTD, owned by the client.
  • Represented John Deere in a breach of trade mark criminal complaint against a company selling different brands of agricultural machinery online.

Gómez-Acebo & Pombo

Gómez-Acebo & Pombo supports clients across the full range of contentious and non-contentious trade mark matters, with particular expertise in relation to the enforcement and commercialisation of brands. The firm also has standout knowledge in anti-counterfeiting. The team acts for a number of multinational companies, with Giorgio Armani a notable new client. Eduardo Castillo leads the team, with a focus on litigation and expertise in the life sciences sector. Sofía Martínez-Almeida has a particular focus on trade mark, designs and unfair competition litigation, while Jesús Muñoz-Delgado specialises in the protection, technology transfer and enforcement of rights. Gonzalo Ulloa is a senior IP expert, and associate Mercedes Corbal specialises in advertising and unfair competition.

Practice head(s):

Eduardo Castillo

Other key lawyers:

Gonzalo Ulloa; Jesús Muñoz-Delgado; Sofia Martínez-Almeida; Mercedes Corbal

Testimonials

An office that can fight to create new developments in the jurisprudence.’

Very specialised and willing to fight with the client to create new interpretations in jurisprudence.’

Key clients

Delta Cafes

Acciona

Diageo

Hermes

Nike

Carrefour España

Bodegas Emilio Moro

EONE

Galletas Gullón

Ecoembes

Pandora

Giorgio Armani

Work highlights

  • Representing Bodegas Emilio Moro in a case against one of its major competitors, a vineyard owner, as well as against companies of the Matarromera group.
  • Advising eOne on the protection and defence of its Spanish trade marks for the well-known characters PJ Masks and Peppa Pig.
  • Represented Galletas Gullón 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.

Grau & Angulo

Specialist IP litigation boutique Grau & Angulo has a strong profile in the market. The firm is active in major domestic and cross-border trade mark litigation in the fashion, automotive, media and entertainment, telecoms, sports, luxury goods and food sectors, and also assists multinational brands with trade mark protection and prosecution. The firm has notably defended groups of clients with shared interests against major infringers. Experienced litigator Alejandro Angulo leads the Barcelona-based team, specialising in trade mark and design defence and food and beverage industry work, respectively. Carlota ViolaMaite Ferrándiz, and Jordi Camó are also highly praised for their work in litigation and anti-counterfeiting.

Practice head(s):

Alejandro Angulo

Other key lawyers:

Carlota Viola; Maite Ferrándiz; Jordi Camó; Agustí Valls

Testimonials

Great team of professionals, with vast knowledge of IP, that looks for a creative method to the benefit of the client, accommodating their needs.

Good team, well coordinated by Alejandro Angulo, who is a brilliant and practical lawyer. Jesús Arribas in civil litigation and Jordi Camó in criminal cases stand out for their knowledge and their practicality when representing the client. They are meticulous and detailed.’

‘Great, long standing team that have represented us for decades. In depth knowledge of the Spain market.’

This office clearly stands out for its high specialisation in the field of industrial property, for being excellent proceduralists and rigorous and high level professionals. Alejandro Angulo and his team have brought us through various lawsuits with excellent results.’

I have always worked with Agustí Valls and his advisors. I do not have the words for give thanks for the service that we have always received. Always accessible, always waiting, and seeing the good of the client.’

Key clients

Adidas

Hugo Boss

Procter & Gamble

Chanel

Tommy Hilfiger

Bmw

Burberry

Fred Perry

Futbol Club Barcelona

Carolina Herrera

Harley Davidson

Lvmh

Calvin Klein

Longchamp

Prada

Coty

Work highlights

  • Represented an alliance of major perfume brands in a crucial case before the Supreme Court relating to strategic trade mark enforcement.
  • Represented GHD in a design infringement case against a Spanish company for the manufacture, offer and commercialisation of hair irons copying the shape of different GHD hair irons.
  • Representing a well-known Spanish biscuit manufacturer in a case defending its trade mark and prosecuting its infringement by a competitor.

Uría Menéndez

Uría Menéndez offers litigation, transactional and portfolio management advice on trade marks, with sector strengths including pharmaceutical, cosmetics, food and chemicals. The team regularly acts for leading multinationals in these key sectors. Madrid's José Massaguer leads the team, and is experienced in trade mark defence before regulatory bodies and courts. Barcelona-based Montiano Monteagudo works with national and multinational clients on IP and unfair competition issues. Ingrid Pi i Amorós focuses on litigation.

Practice head(s):

José Massaguer 

Other key lawyers:

Montiano Monteagudo; Ingrid Pi i Amorós; Núria Porxas

Testimonials

Broad and deep knowledge of the practice in the area of IP. Detailed and punctual information to the client in both the analysis and the development of the case.’

Solidity, experience, reliable, prestige. Communication with the client. Jose Massaguer.’

Key clients

Acciona

Champagne Louis Roederer

Work highlights

  • Advising the shareholders of a Spanish company which specialises in computer security solutions, on the IP aspects (including trade marks) of a corporate transaction.

Baker McKenzie

Baker McKenzie assists clients in maintaining and enforcing trade marks and designs on a global basis, advising on practical and strategic ways to work within local, regional and international registration regimes. In trade marks and anti-counterfeiting, the team is especially strong in the fashion, food and beverage and publishing sectors, with heavyweight clients including multinationals and domestic leaders. The team is led by Barcelona-based senior counsel Carles Prat, who focuses on commercial litigation, alongside Madrid's José María Méndez, an experienced specialist IP practitioner. María Dolores Garayalde has extensive experience as a trade mark attorney, in both portfolio management and representing in infringement suits .

Practice head(s):

José María Méndez; Carles Prat

Other key lawyers:

María Dolores Garayalde

Key clients

Puig

Work highlights

  • Advised Puig on the acquisition of a majority stake in Charlotte Tilbury, including providing advice on the IP and image rights aspects of the transaction.

Bird & Bird

Bird & Bird covers the full range of trade mark matters from its Madrid office, with a focus on litigation and a growing profile in prosecution work. The team acts for heavyweight domestic and international clients in a broad range of sectors, including retail and consumer goods, technology and manufacturing. The department was strengthened further by the arrival of Jose Miguel Lissen in 2020, bringing expertise in technology, communications and life sciences. Manuel Lobato is a highly respected practitioner with capabilities in litigation and transactional support, while Antonio Cueto is an experienced litigator. Mariano Santos is praised for his expertise in prosecution and defence proceedings.

Practice head(s):

Manuel Lobato; José Miguel Lissén; Antonio Cueto; Mariano Santos

Testimonials

Excellent communication, expeditious. They do not delay in answering an email with options and costs. Always open to dialogue.’

‘Mariano Santos. Excellent colleague. Supportive, responsible, attentive, counseling, friendly and always willing to communicate. In addition, he provides us with an excellent service coordinating with offices of his firm in other countries.’

‘The Bird & Bird team is a very proactive team, with a high level of response and very flexible to customer requirements. They have a diversity of areas that are very attractive to which is added their international connections given the offices they have in different countries.’

‘Mariano Santos is a great partner. He has a wealth of intellectual property knowledge and a truly exceptional level of responsiveness, which is highly appreciated today.’

Key clients

Lleidanetworks Serveis Telemàtics

Divina Pastora Seguros

Elixinol Llc.

Wisetech Global

Repsol

Bench Global

Dosmilpalabras S.a. – Ok Diario

Schott Bros.

F. F. Seeley Nominees Pty Ltd. And Seeley International

Work highlights

  • Advised Leida.net on its worldwide trade mark portfolio transfer.
  • Provides day-to-day advice to Bench on trade mark matters, including portfolio management, protection and enforcement.
  • Representing Seeley as the plaintiff in a complex case involving trade mark infringement, recovery, nullity, and unfair competition against a Spanish marketing company.

Cuatrecasas

Cuatrecasas advises on prosecution, litigation and arbitration involving well-known trade marks in sectors such as gaming, beverages, cosmetics, sports and fashion, working with major multinational and Iberia-based companies as well as high-profile individuals. The team is led from Madrid by Albert Agustinoy and Álvaro Bourkaib, a trade mark specialist who particularly stands out for his work in the IT and life sciences spaces. In Barcelona, Jorge Llevat is noted for his expertise in litigation and transactional support, while recently promoted partner Jean-Yves Teindas works with high-profile sports and gambling clients in disputes relating to image rights and publicity.

Practice head(s):

Albert Agustinoy; Álvaro Bourkaib

Other key lawyers:

Jorge Llevat; Jean-Yves Teindas

Key clients

Walton International (Giordano)

Pokerstars

Faes Farma

Airfal International

Cepsa

Casio Spain

Wavegarden

Pernod Ricard

Eventbrite

Spanish State Lotteries (Selae)

Work highlights

  • Providing ongoing advice to Faes Farma in a trade mark infringement case related to DermoFaes.
  • Representing Casio Spain in an unfair competition claim against a former distributor due to parallel imports and trade mark infringements.
  • Advised Merlin Properties on all trade mark matters related to their acquisition of the Glories Tower.

Garrigues

Garrigues handles a broad workload in trade marks, covering litigation, transactional support, unfair competition and domain name matters. The firm has a growing client base in the audio-visual, life sciences and fashion industries, and also acts for multinational companies in technology, food and pharmaceuticals. The practice is jointly led by João Miranda de Sousa, based in Madrid and Lisbon, who heads the prosecution team, alongside Carolina Pina, a highly regarded practitioner with expertise in arbitration and transactions, particularly for sports clients. Principal associate Isabel Pascual de Quinto specialises in trade marks, industrial designs and unfair competition cases, while counsel Celia Sueiras is noted for her protection and enforcement expertise.

Practice head(s):

Joao Miranda de Sousa; Carolina Pina

Other key lawyers:

Isabel Pascual de Quinto; Celia Sueiras; Fernando Rubiano Fernández

Testimonials

‘They are fully committed and always do their best to understand companies’ particular needs. No generic approaches.’

‘Fernando Rubiano is the external lawyer every company should be willing to have. Fully committed and always ready to assist.’

‘Excellent technical level and proactivity.’

‘Isabel Pascual de Quinto: Excellent technical level, practical and decisive approach.’

‘The Garrigues IP team stands out for its deep knowledge of the subject and its total dedication to the client, being without a doubt at the top of the professional practice in this area of practice.’

‘Isabel Pascual de Quinto demonstrates an excellent professional level, which is also maintained over the years. Her commitment to the client, proactivity, speed and in-depth knowledge of her subject matter make her an outstanding professional.’

‘They are a benchmark team in Spain on brands. Very specialised.’

Key clients

UEFA

Carrefour

Glaxo Smithkline

Pharmamar

Prosegur

The Alan Parsons Project

Makeblock Co Ltd

Asac Compañía De Biotecnología E Investigación

Greencycles, S.l.

Work highlights

  • Representing The Original Alan Parsons Project Band in a lawsuit initiated by the well-known producer and musician Alan Parsons for alleged trade mark infringement and unfair competition before the EU Trademark Court of Alicante.
  • Advised Prosegur in the negotiation of its agreement with Telefónica to sell a 50% stake in Prosegur’s alarm business in Spain.
  • Representing Chinese robotics company Makeblock in a legal proceeding against Distintiva, one of its former distributors in Spain. The claim is based on trade mark infringement and unfair competition.

Hogan Lovells International LLP

Hogan Lovells International LLP's full-service offering includes a dedicated EU trade mark and designs practice in its Alicante office, led by co-head Imogen Fowler, assisted by EU trade mark specialist Andreas Renck. The team also handles trade mark protection, enforcement and portfolio management matters for a range of notable companies in the life sciences, consumer, banking, media and telecoms sectors. Madrid's Burkhart Goebel co-leads the team and handles multi-jurisdictional trade mark, unfair competition, design and geographical indication litigation cases throughout Europe, with a focus on Germany and Spain. Constanze Schulte heads up the trade mark prosecution team.

Practice head(s):

Burkhart Goebel; Imogen Fowler

Other key lawyers:

Andreas Renck; Constanze Schulte

Key clients

Adidas

Yum! Brands

AB InBev

Work highlights

  • Sccessfully brought multiple cases against two stripe marks based on Adidas’ three stripe marks, including before the Court of Justice of the European Union.
  • Representing a major chocolate manufacturer and all its subsidiaries in EU trade mark matters, having recently secured three opposition wins before the European Union Intellectual Property Office.
  • Managing Yum! Brands’ prosecution and enforcement of its trade marks and designs in the Europe, Russia and the CIS region.

HOYNG ROKH MONEGIER

With a focus on cross-border litigation, HOYNG ROKH MONEGIER has broad court experience covering both national and EU trade marks, as well as unfair competition. The Madrid-based team also manages trade mark portfolios in the EU and globally for a number of international clients across a wide variety of industries. Luis Fernández-Novoa leads the team, leading the IP litigation practice, alongside Laura Alonso, who heads the brand protection and prosecution team, acting for numerous multinational clients across a range of industries.

Practice head(s):

Luis Fernández-Novoa; Laura Alonso

Key clients

Campbell Soup Company

Duracell

Ferring

FKP

Groasis

Hitachi Data Systems

Experience Hendrix LLC

Marley Green LLC

Paragon Pet Products

Premier Tech

Sammode

Seiko Epson Corporation

Signify

Vlisco

Zenni Optic

Work highlights

  • Managing Groasis’ worldwide trade mark portfolio.
  • Portfolio management for Experience Hendrix LLC in the EU, which includes assisting them with all applications, oppositions, office action and brand protection advice.
  • Representation of Hitachi Data Systems in its trade mark prosecution before the EUIPO, including the preparation and filing of applications and oppositions, briefs of defense against third parties’ oppositions and handling of office actions.

Abril Abogados, SL

Abril Abogados, SL has expanded its trade mark work, with a growing client portfolio in the technology sector, and continues to handle a range of mandates from major international brands and organisations. Madrid-based co-heads Ignacio Temiño Ceniceros and Carlos González are experienced IP litigators, with González enjoying notable cross-border trade mark expertise, particularly in Latin American jurisdictions. Salvador Diaz jointly leads the practice from Valencia, and takes the lead on trade mark prosecution.

Practice head(s):

Ignacio Temiño; Carlos Gonzalez; Salvador Diaz

Key clients

Hearst

Hyundai

Samsung

Burger King

Camper

Laboratorios Rovi

Tesla

Volvo

Mahou Sanmiguel

Fila

Work highlights

  • Representing Mahou-Sanmiguel in a criminal suit against Heineken-Amstel España regarding the imitation of a new product.
  • Assisting a client in the successful cancellation of the EU trade mark registration of J. DEWARD whisky.
  • Criminal enforcement for Fila of trade mark rights protecting the shape of the Disruptor shoe model.

Balder

IP boutique Balder's trade mark offering largely focuses on prosecution and portfolio management strategy on behalf of a broad client base, including notable domestic and international clients in the retail sector. The team is led by experienced IP litigator Patricia Koch alongside Óscar García, who offers extensive experience in managing large-scale trade mark portfolios for both foreign and domestic clients.

Practice head(s):

Óscar García; Patricia Koch

Testimonials

‘Professional, friendly, fast and kind!’

‘Very client-oriented and flexible.’

Key clients

Dormakaba

Beiersdorf

Thyssen-Krupp

AmorePacific Corporation

Visa

Mediaset

Clifford Chance

Clifford Chance's Barcelona-based IP team offers a broad contentious and advisory service in trade marks, with a focus on clients in the healthcare and life sciences sectors, including several multinationals. The team is led by Miquel Montañá, an experienced IP litigator with notable expertise in multi-jurisdictional disputes, alongside Josep Montefusco, who specialises in unfair competition and advertising law.

Practice head(s):

Miquel Montañá; Josep Montefusco

Key clients

Bayer

Novartis

Ucb Pharma

Astrazeneca Farmacéutica

Sanofi

Bial-portela

Vivo Communication Technology

F. Hoffman-la Roche

Glaxosmithkline

Pfizer

Janssen

Amgen

L’oréal España

Honda Motor Co.

Tlmk Servicio De Marketing Telefónico, Sl

Nuu Mobile

Henkel

Unilever

Illumina Inc.

Edwards Lifesciences

Work highlights

  • Advised Philip Morris on criminal proceedings related to infringement of its trade marks.
  • Advised Honda on the day-to-day protection of its trade mark rights in Spain.
  • Advised Nutrition & Santé on the defence of trade mark rights regarding a balsam product.

CMS Albiñana y Suárez de Lezo

Led by the highly regarded María González Gordon, the IP team at CMS Albiñana y Suárez de Lezo handles trade mark protection strategies in addition to representing clients in litigation. The team has broad sector coverage, acting for various blue-chip domestic and international names, and is particularly strong in retail and consumer products, with Victoria's Secret a standout client.

Practice head(s):

María González Gordon

Key clients

GMP Property Socimi

CBRE Globla Investors

Adama

Parfumerie Douglas

Otovo

Solera Holdings

Victoria’s Secret

Virtual IP Assets

US Polo

Chargy Technlogies

Grupo 888

Work highlights

  • Advised leading phytosanitary producer ADAMA Group companies, in drafting the strategy for protecting its global trade mark in court proceedings, including investigations, exchange of warning letters and negotiations.
  • Advised Victoria’s Secret and associated companies on its strategy regarding new brands and new names for its newest products to be launched.
  • Representing and defending cosmetics retailer Douglas in the legal proceedings before the EU Trademark Courts of Alicante, based on trade mark infringement and unfair competition.

Augusta Abogados

Barcelona-based boutique Augusta Abogados handles trade mark disputes and transactional support issues for a diverse range of clients. The firm's key areas of focus include retail, aviation and healthcare, though it also acts for notable life sciences and heavy industry clients. Versatile IP litigator Carlos Valls leads the team.

Practice head(s):

Carlos Valls

Testimonials

‘Carlos Valls Martinez has a broad practice which allows him to bring different perspectives to IP disputes. Whether you need a street fighter or someone to cite the finer points of Ronald Dworkin’s legal theories, Carlos can provide you with a creative solution.’

‘The team, while small, has vast experience in trade mark and other soft IP disputes.’

‘Carlos Valls Martinez is vastly experienced and a genuine name in the soft IP disputes field.’

They stand out for their speed and their broad knowledge of the sector.’

Key clients

Skechers

Bomanite

Work highlights

  • Advising Skechers on criminal proceedings for anti-counterfeiting against a local company acting regionally in the Canary Islands.
  • Advising Bomanite on trade mark infringement (including issues of unfair competition).

DA Lawyers

Working closely with its media and technology practice, DA Lawyers has a strong record in trade mark enforcement for domestic companies, both for media and technology clients as well as a number of notable sports and leisure companies. The team is led by José Garrido, who is experienced in international IP prosecution strategies.

Practice head(s):

José Garrido

Testimonials

‘Extensive and detailed knowledge of the legal and practical aspects of the world of patents and intellectual property in the different jurisdictions at a global level. Very competent team.’

‘In addition to its wide field of activities, the specific domain in the area of patents and intellectual property is outstanding. The relationship with the client is very close and inspires confidence due to its great professionalism. In this area of specialization, the technical knowledge and negotiation skills of partner José Garrido Pastor seem outstanding.’

‘Absolute control over the entire procedure and the appropriate actions to be carried out. It has a team that mixes the experience of a Senior Director with young talented people.’

‘DA Lawyers provides expert advice that is also practical and relevant. Also, our matters continue to be managed by an experienced partner rather than a junior associate which we really appreciate as matters are resolved more efficiently.’

‘Jose Garrido is an expert in trademark law and a professional who responds quickly and thoroughly to all inquiries.’

Key clients

High Tech Hotels & Resorts

Urbaser

Peris Correduria De Seguros

Portal Golf Gestion

Talisman Ventures

Granalu Transformaciones

Geniova Technologies

Zebra A/s

Work highlights

  • Advising Portal Golf Gestion on a litigation proceeding against the owner of the trade mark “Masters” owned by Augusta National Inc.
  • Advising Talisman Ventures on the registration of a trade mark.
  • Advising High Tech Hotels & Resorts on the design of an IP strategy to register a trade mark.

ECIJA

ECIJA specialises in advice to TMT-sector companies, working closely with the firm's IT practice. Clients include a range of multinationals as well as international governmental organisations. The team is overseen by founding partner and media specialist Hugo Écija and managing partner Alejandro Touriño, who focuses on trade mark disputes.

Practice head(s):

Hugo Écija; Alejandro Touriño

Key clients

Microsoft

Mercedes Benz

Santander Bank

NH Hotels

McDonnalds

Segurcaixa Adeslas

Fox

LVMH

Orange

United Nations

Adidas

Loewe

Porsche

Huawei

Vodafone

UNESCO

Facebook

ONCE

Work highlights

  • Working with the United Nations (Economic Commission for Latin America and the Caribbean and the World Intellectual Property Organization) on digital policy in the IP field (patents, trade marks, copyrights, etc.) linked to international trade between Europe and Latin America.
  • Advised NH Hotels on carrying out an analysis of the current regulatory status in relation to the possibility of using third-party trade marks as keywords through the Google Ads tool.
  • Advising Kantar Media on its negotiations with collective management societies.

Eversheds Sutherland Nicea

Eversheds Sutherland Nicea's Madrid-based team is best known for its expertise in portfolio management, trade mark defence and prosecution for pharmaceutical companies, and it has also expanded its share of major retail clients. The team acts for a combination of domestic, international and multinational companies and is led by IP litigators Kiko Carrión and José Mariano Cruz.

Practice head(s):

Kiko Carrión; José Mariano Cruz

Other key lawyers:

Inmaculada Lopez

Key clients

Sernauto

Athlon

Kering Group

Yokohama

Avis Budget

Room Mate

Tyco Fire Security

CEFI Foundation

Work highlights

  • Managing the trade mark portfolio of Room Mate.
  • Advising Yokohama on trade mark issues concerning infringement acts by distributors.
  • Protecting the Athlon trade mark against unlawful use on several web pages by a criminal organisation which used it to deceive consumers.

Fieldfisher JAUSAS

Fieldfisher JAUSAS regularly acts for a host of domestic and multinational clients from various industries, assisting with trade mark protection strategies as well as a broad range of contentious work. Josep Carbonell leads the team and has over 20 years of experience advising companies on the registration and protection of trade marks; he is also an expert in unfair competition law. Associate Eduardo Vila is another key contact.

Practice head(s):

Josep Carbonell

Other key lawyers:

Eduardo Vila; Gemma Ribas

Testimonials

‘The Fieldfisher Jausas team led by Josep is very professional and always ahead. For a small company like ours, it is an invaluable help in preserving key aspects of our brand.’

‘They are very up to date and therefore I consider it to be a very high level.’

‘The feeling of proximity, but at the same time being able to act globally, makes you feel very safe. Josep Carbonell is great, as is Ana Oliva or Gemma.’

 

Key clients

BIMBO

PONS IP

Boutique firm PONS IP's trade mark work focuses on litigation in a variety of sectors; it acts for international companies in retail, manufacturing and music, including in the management of international portfolios. Practice head Isabel Cortés has experience managing worldwide trade mark portfolios for a variety of clients across a range of industries, while Jean Devaureix has broad IP defence expertise.

Practice head(s):

Isabel Cortés

Other key lawyers:

Jean Devauriex

Key clients

RONCATO S.R.L.

CIPLA

Work highlights

  • Representing Italian apparel company Roncato in an EU trade mark infringement action concerning a figurative trade mark.