Intellectual property: Trade marks in Spain
Elzaburu advises on trade mark and domain name prosecution, contentious infringement proceedings and nullity actions, rebranding projects, franchising, anti-counterfeiting and anti-piracy. Luis Baz heads the team with litigator Antonio Castán, transactional expert Javier Fernández-Lasquetty, and head of anti-counterfeiting Juan José Caselles. Recent highlights included representing Verizon in a trade mark infringement complaint. Also recommended are associates María Cadarso, who focuses on trade mark enforcement proceedings, and Tránsito Ruiz, who specialises in trade mark-related criminal proceedings and radio and television signal piracy.
‘They understand our business and are very responsive to our needs.’
- Represented McDonald’s in a trade mark dispute.
- Represented Beck+Heun, a company which sells shutters, in a complaint against a fraudulent trade mark registration.
- Represented MGA Entertainment in a complaint concerning a third party registering a trade mark for one of its dolls.
The team at Gómez-Acebo & Pombo handles trade mark assignment, licence and coexistence agreements; the protection and enforcement of brands, trade names, and designations of origin; unfair competition and advertisement; and anti-counterfeiting. Eduardo Castillo heads the IP group, which also includes expert litigator Gonzalo Ulloa. Sofía Martínez-Almeida and Jesús Muñoz-Delgado are particularly focused on trade marks. Associate Manuel de Torres leads the practice’s anti-counterfeiting group. Recent highlights included advising Nvidia in trade mark infringement and contractual breach litigation.
‘The technical knowledge of the team of lawyers in the IP area is at a high level, which greatly facilitates the management of complex cases.’
The Pokemon Company
Bodegas Emilio Moro
eOne (Peppa Pig)
- Advised Realogy Holdings Corporation, a real estate broker, in proceedings relating to the termination of a master franchise agreement for contractual breach and trade mark infringement.
- Advised shoe manufacturer Alpargatas on the infringement of its ‘Havaianas’ trade mark.
- Acted as retained adviser for Diageo, an alcoholic drink company, on its trade mark portfolio and related infringement proceedings.
IP litigation boutique Grau & Angulo has a strong offering for clients in the fashion, luxury goods and perfume industries. Founding partners Jorge Grau and Alejandro Angulo lead the team, and have extensive experience in trade mark and design litigation. Ignacio Marqués, Carlota Viola, Maite Ferrandiz and Jordi Camó, who leads the anti-counterfeiting team, are also noted. Highlights included representing Adidas in a case involving the trade mark infringement of the Spanish football team's kit.
- Represented Continente Modelo in defending its right to use and register a trade mark in Spain.
- Represented Chinese telecoms company Xiaomi in a claim over trade mark infringement and parallel imports of mobile phones.
- Conducted an EU-wide court action against smell-alike perfumes on behalf of Procter & Gamble, Hugo Boss, Lacoste and HFC Prestige Products.
The trade mark practice at Uría Menéndez advises clients in the food and beverages, pharmaceutical and automotive sectors. José Massaguer heads the team, which also handles litigation, licensing and the IP aspects of transactional work. Montiano Monteagudo is also recommended, and ‘one of a kind’ counsel Nuria Porxas is noted for her ‘excellent technical skills’.
‘A team of excellent professionals’
‘Works quickly and efficiently’
Champagne Louis Roederer
Procter & Gamble
- Provided litigation advice to utilities company Acciona on the cancellation of its trade marks.
- Advised Champagne Louis Roederer as a claimant regarding the enforcement of foreign decisions on trade mark infringement.
- Represented Wallapop, a company used to exchange used goods, before the European Court of Justice in an appeal relating to trade marks in the online marketplace.
Baker McKenzie advises on trade mark prosecution, enforcement, litigation, anti-counterfeiting and parallel trade in the fashion and consumer goods, food and beverage, and publicity sectors. José María Méndez, who advises on IP protection, and litigator Carles Prat head the practice. María Dolores Garayalde, who has extensive experience in the IP aspects of corporate transactions, is also recommended.
‘The relationship with the partners is fluid and close, and they are very accessible and available.’
Airbnb/ Madrid Aloja
The trade mark practice at Bird & Bird focuses on litigation, with recent highlights including handling the trade mark portfolio of Cynthia Rowley in Europe and Latin America. Manuel Lobato and litigator Antonio Cueto lead the team with Mariano Santos, who has considerable experience in managing brand portfolios. Associate José Ángel García-Zapata left the firm for a position as Senior IP Counsel at Insud Pharma. Raúl Bercovitz left the firm in 2020.
‘Creative and diverse solutions with exceptional delivery’
‘Deliver added value’
Ace of Spades / Armand de Brignac
Monster Energy Company
- Represented Monster Energy Company in proceedings over unfair competition and infringement against several energy drinks companies.
- Represented Marv Films as the claimant in a trade mark infringement action and a preliminary injunction request brought against a Spanish distillery.
- Represented Take-Two Interactive Software in trade mark infringement proceedings in the e-commerce sector.
Cuatrecasas acts for a range of clients in the manufacturing, automotive, arts and consumer goods sectors. Albert Agustinoy and IP transaction specialist Álvaro Bourkaib head the practice. Senior associate Jean-Yves Teindas is also noted. Recent highlights include advising Instituto de las Industrias Culturales y de las Artes on trade mark nullity actions brought against it regarding the SOS 4.8 music festival.
Instituto de las Industrias Culturales y de las Artes
Walton International (Giordano)
Spanish State Lotteries
- Advised Instituto de las Industrias Culturales y de las Artes on trade mark nullity actions, copyright infringement and unfair competition proceedings regarding SOS 4.8, the well-known musical festival in Murcia.
- Advised PokerStars on the cancellation of a trade mark registered by a third party in bad faith.
- Advised BH Bikes on the acquisition of trade marks.
HOYNG ROKH MONEGIER
HOYNG ROKH MONEGIER has a strong offering in trade mark litigation, unfair competition matters, and border control enforcement strategies. Luis Fernández-Novoa leads the team with Laura Alonso, who heads the firm’s brand protection and prosecution group. Recent highlights include handling the brand portfolio of a world-renowned beverage company.
Campbell Soup Company
Hitachi Data Systems
Marley Green LLC
Paragon Pet Products
- Represented Premier Tech, a Canadian agricultural company, in EU trade mark litigation.
- Advised FKP, a Russian drinks company, in EU litigation over the ‘Stolichnaya’ trade mark.
- Represented fabric producer Vlisco before the customs authorities in relation to the enforcement of its IP rights.
Garrigues handles the full range of trade mark and design matters, including litigation, transactional work and advice in relation to trade names and company names, designations of origin and geographical indications, unfair competition and domain names. João Miranda de Sousa and Carolina Pina lead the team. Principal associate Isabel Pascual de Quinto is noted, as is counsel Celia Sueiras, who has experience in design disputes with an EU law component.
Herederos Garcia Lorca
Pharma Mar S.A.
Taxand Global Alliance
Valencia Club de Futbol
Eemboga S.A. (Hispanitas)
Refresco Iberia SAU
Silicium España Laboratorios S.L.
Xpressio Estudio Creativo S.L.
- Provided Carrefour with day-to-day advice on IP protection.
- Represented the governing council of the appellation of origin ‘Queso de La Serena’ in a trade mark dispute before EU Intellectual Property Office (EUIPO).
- Advised GlaxoSmithKline on day-to-day trade mark protection issues.
Abril Abogados, SL
The ‘outstanding’ practice at Abril Abogados, SL is active in both trade mark prosecution and litigation, acting for clients in the media, telecoms, software and automotive sectors. Litigators Carlos González and Ignacio Temiño Ceniceros head the practice with prosecution and protection expert Salvador Diaz.
‘Their trade mark practice is outstanding and always provides us with solutions and high standards.’
Mahou San Miguel
- Defended footwear manufacturer Grupo Illice in a lawsuit over the ‘Conguitos’ trade mark.
- Represented Cadena Ser, a Spanish radio station, in an action defending its trade mark ‘Radiotubers’ against Google’s objections on the grounds of its ‘YouTube’ mark.
- Appealed a trade mark infringement complaint on behalf of Toyotomi, a Japanese company which manufactures heating apparatus.
Clifford Chance handles trade mark matters for clients in the consumer goods and retail, biotechnology, media and telecoms sectors. Miquel Montañá and Josep Montefusco head the practice. Rais Amils and Manel Santilari are both noted as ‘exceptional professionals’ who are ‘capable of seeking solutions to any legal problem, however complex’. Recent highlights include advising Honda on trade mark protection.
Nutrition & Santé
Honda Motor Europe
TLMK Servicio de Marketing Telefónico, S.L.
Universidad Internacional de la Rioja
- Advised Nutrition & Santé on the defence of trade mark rights regarding a balsam product.
- Advised Philip Morris on criminal proceedings related to infringement of its trade marks.
ECIJA acts for clients in the media, arts and entertainment sectors. Alejandro Touriño, firm founder Hugo Écija and Juan Salmeron are key names. Highlights included advising the European energy group EDP on bringing a trade mark infringement action against a competitor.
Republic of Costa Rica
- Advised European energy group EDP on a trade mark infringement case.
- Represented El Mundo (Unidad Editorial) in trade mark infringement litigation.
- Advised the Republic of Costa Rica on the design of public and legislative policies protecting intellectual and industrial property.
- Advised Bomanite, a construction materials company, in trade mark nullity and infringement proceedings against its former distributor in Spain.
- Advised Skechers on criminal proceedings against a counterfeiter in the Canary Islands.
DLA Piper handles anti-piracy enforcement, brand prosecution and trade mark litigation for clients in the gaming, fashion and media industries. The team is led by Diego Ramos, who is currently advising Bacardi Iberia on brand protection and labelling.
Tata Consultancy Services
- Advised Levi Strauss on intellectual property enforcement, particularly regarding trade mark infringement.
- Advised Warner Bros Entertainment Spain on IP protection.
- Assisted Santander with the negotiation of the international licensing of intellectual property assets.
Rousaud Costas Duran
DA Lawyers focuses on trade mark litigation, and primarily acts for clients in the film industry. José Garrido heads the trade marks practice, alongside partners José Antonio Suárez and Helena Suárez.
- Advising High Tech Hotels & Resorts on trade mark registration.
Eversheds Sutherland Nicea offers a ‘top service’ with ‘great teamwork and communication’. The team handles trade mark litigation and prosecution. Francisco J. (Kiko) Carrión García de Parada and José Mariano Cruz head the team. Inmaculada (Inma) López, who advises on unfair competition, is also recommended.
Merck Sharp & Dohme Corp.
Tyco Fire Security
- Managed the trade mark portfolio for Room Mate, a hospitality company.
- Advised the Kering Group, which includes Gucci and Stella McCartney, on both contentious and non-contentious trade mark matters.
- Advised Johnson Controls, a producer of fire, HVAC and security equipment, on IP matters.