Intellectual property: Trade marks in Spain

Elzaburu

Elzaburu’s trade marks practice has a strong reputation in the market. Antonio Castán successfully represented Brockmans Gin in its unfair competition action against an infringer. Castán jointly heads the team alongside Luis Baz and Javier Fernández-Lasquetty.

Gómez-Acebo & Pombo

Gómez-Acebo & Pombo's team stands out for its 'deep, substantive knowledge of Spanish and EU law, very good practical understanding of the Alicante court and excellent access to strong experts in the country and region'. It was recently retained by Nike to advise on e-commerce marketing and data protection matters. Practice head Eduardo Castillo, 'statesmanGonzalo Ulloa, Jesús Muñoz Delgado, Mónica Estéve and Sofía Martínez-Almeida  are recommended. Manuel de Torres is a notable senior associate. José Miguel Lissen left to lead the litigation team at ABG Patentes in March 2018. María González Gordon, previously a senior associate with the firm, joined CMS Albiñana y Suárez de Lezo as a partner in 2019.

Grau & Angulo

The ‘strong team’ of ‘excellent professionals’ at Grau & Angulo is, arguably, 'Spain's strongest anti-counterfeiting group'. The practice is representing Adidas in numerous cross-border matters against counterfeiters and in unfair competition matters. Founding partners Alejandro Angulo ('very creative and experienced') and Jorge Grau lead the practice alongside Sonia Santos. Ignacio Marqués was promoted to partner in January 2018. Carlota Viola, Jordi Camó and Maite Ferrandiz are also recommended.

Hogan Lovells International LLP

The ‘stand-out’ team at Hogan Lovells International LLP is praised for operating ‘seamlessly’. Led by Burkhart Goebel and the ‘capableAndreas Renck, it acts for PepsiCo in numerous trade mark infringement cases; it recently obtained a successful outcome in the Spanish Supreme Court, opposing a trade mark application for PEPXI relating to fresh fruit and vegetables. Imogen Fowler, Constanze Schulte and Ana Castedo are also noted.

Uría Menéndez

Uría Menéndez is acting for a number of household name clients in unfair competition, pre-litigation advisory and infringement matters. It is representing champagne producer Louis Roederer, as the claimant, in proceedings regarding the enforcement of foreign decisions ordering the defendant to pay damages for trade mark infringement. José Massaguer leads the team. Montiano Monteagudo and Ingrid Pi i Amorós are also noted.

Baker McKenzie

The ‘highly qualified’ team at Baker McKenzie is praised for its ‘understanding of client needs’ and its 'knowledge of the audiovisual practice, locally and in an international environment, is remarkable'. The group advises a wide array of well-known media and entertainment companies, as well as clients in the technology, food and beverage, and sport sectors. José María Méndez and Carles Prat lead the team. Cristina Duch and Maria Dolores Garayalde are other notable names.

Bird & Bird

Bird & Bird has expertise in trade mark litigation, trade secrets, design, and unfair competition matters. Mariano Santos is leading the trade mark prosecution strategy for Ben Sherman, and Manuel Lobato is representing Marv Films as the claimant in an infringement action against the use of its mark Kingsman by a Spanish distillery. Antonio Cueto, of counsel Raúl Bercovitz and senior associate José Ángel García-Zapata are also singled out.

Cuatrecasas

Albert Agustinoy and Álvaro Bourkaib lead the trade mark practice at Cuatrecasas. The practice acts for a range of clients in the beverage, fashion and industrial products sectors, among others. Jorge Llevat is representing a cava producer in court proceedings in defence of its well-known trade marks. Alejandro Negro and senior associate Jean-Yves Teindas are other names to note.

ECIJA

ECIJA’s team acts for numerous clients in the media and technology sectors on trade marks, designs and domain names issues. The practice advised Mediapro on the sale of IP and licensing rights for the broadcasting of La Liga and Champions League matches to Orange and Vodafone, internationally and domestically, respectively. Hugo Écija, Carlos Perez, Juan Salmeron and managing partner Alejandro Touriño are the key names.

Garrigues

Garrigues manages the trade mark portfolios for a variety of well-known international and domestic clients. Recent work includes handling trade mark infringement and unfair competition cases, as well as anti-counterfeiting matters and assisting clients with IP protection and enforcement strategy at an international level. Carolina Pina and João Miranda de Sousa jointly head the practice. Isabel Pascual de Quinto and Cristina Mesa have been promoted to principal associate.

Herrero & Asociados

Herrero & Asociados has a strong track record handling trade mark prosecution and enforcement. María Ángeles Moreno, José Luis López and Mario de Justo are noted.

HOYNG ROKH MONEGIER

HOYNG ROKH MONEGIER provides 'thorough legal advice' and acts for an impressive list of clients before the EU Intellectual Property Office (EUIPO). Recent highlights include representing Vlisco before the customs authorities in the enforcement of its IP rights by implementing border control procedures. Laura Alonso, Luis Fernández-Novoa, Álvaro Velázquez and José Antonio Sanmartín are key names. Laura Cantero is now counsel.

Abril Abogados, SL

The ‘outstanding’ team at Abril Abogados, SL acts for clients including major automotive and technology brands, among others. Recent work includes investigative and litigation work for new client Mahou San Miguel. Ignacio Temiño Ceniceros is the key name.

Clifford Chance

Clifford Chance’s practice acts for high-profile clients, frequently handling trade mark litigation. Miquel Montañá leads the team and the 'experienced Josep Montefusco is also noted. Samsung, Philip Morris International and Honda Motor are among its key clients.

Sol Muntañola & Asociados

Barcelona-based boutique Sol Muntañola & Asociados has considerable expertise in the space and Francisco Javier Márquez is the key name. Marita Dargallo departed to Buigas as a partner.

Augusta Abogados

At Augusta Abogados, Carlos Valls leads the trade marks practice. The team is representing an international construction corporation in a trade mark dispute with its former Spanish distributor. Carmen Torrents is now with Jafer Enterprises R&D.

Balder

Olof Fickert and Oscar García jointly head Balder's IP practice. The team specialises in trade mark prosecution matters, from clearance to registration and litigation. Bianca Fresneau and Patricia Koch are also noted.

CMS Albiñana y Suárez de Lezo

Javier Torre de Silva is a key name at CMS Albiñana y Suárez de Lezo, which handles contentious and non-contentious trade marks matters. Bartolomé Martín joined the team as counsel in May 2018  from DLA Piper LLP. María González Gordon joined the firm in 2019 from Gómez-Acebo & Pombo as practice head.

DLA Piper

DLA Piper LLP advised e-commerce giant Rakuten on the trade mark elements of a major football sponsorship deal. Diego Ramos heads the practice.

Jacobacci

Ignacio Martinez is the key contact at Jacobacci for trade mark-related matters.

Jones Day

Jones Day’s IP team handles a wide range of work for domestic and international corporations. Marta Delgado Echevarría is the key name.

RCD

RCD is a popular choice for Spanish corporates for trade mark disputes. Ignasi Costas, Jordi Sanchez and Juan Manuel de Castro are the names to note.

Ungria Patentes y Marcas

The ‘business-oriented’ team at Ungria Patentes y Marcas  represents a number of domestic clients in national and cross-border litigation. Joaquin Latas Diez and Angel Pedrero Marquez are the key names.

Ventura Garcés & López-Ibor

Ventura Garcés & López-Ibor is well known for acting for clients from the beauty, technology, arts and design industries. Andrea Garcés is recommended.

Bardají & Honrado

Bardají & Honrado’s Andy Ramos Gil de la Haza is defending Yoga Center against a trade mark claim initiated by Asociación Española de Yoga Iyengar.

DA Lawyers

DA Lawyers' team is 'very responsive and offers perfect solutions for clients'. It acted for VPZ, a vaping cigarette company, in an opposition strategy with parallel cancellation for non-Spanish and EU trade mark uses before the EUIPO and the Mercantile Court of Barcelona. José Garrido is the key contact.

Eversheds Sutherland Nicea

Eversheds Sutherland Nicea fields a team of 'great professionals' that stand out for their 'teamwork and communication skills'. It is advising a well-known automotive client and hotel sector client on the protection of their trade mark portfolios. José Mariano Cruz and legal director Inmaculada López are the key names.

Fieldfisher JAUSAS

Fieldfisher JAUSAS acts for a variety of clients in the media and communications, food and beverage, and apparel sectors among others. Josep Carbonell is the name to note.

PONS IP

PONS IP handles trade mark litigation for a variety of domestic clients in the hotel, hospitality and energy sectors, among others. José Carlos Erdozain leads the practice and Isabel Cortes is also noted.