Category: Trademarks
Rebranding: how to change brand identity without jeopardizing trademark protection
Rebranding enables the name, visual identity, positioning or message of a trademark to be redefined in order to maintain consumer interest and loyalty, gain an edge over competitors or reach new markets. However, whether temporary or definitive, these strategies can create legal risks that should be addressed in order to safeguard a company’s rights in […]
Genuine use of trademarks in the digital age: when a review on Tripadvisor also counts
The General Court of the European Union has once again emphasized that genuine use of a trademark is not determined solely by the geographic extent of its use, but by the commercial reality of the market in which it operates. In a recent case regarding hotel and restaurant services, the court confirmed that an online […]
Use it or lose it: Madrid Provincial Appellate Court confirms the partial revocation of the Spanish Olympic Committee’s trademarks for non-use
The Madrid Court confirms the partial revocation of several trademarks of the Spanish Olympic Committee due to non-use. The judgment underscores that neither reputation nor sector-specific protection can replace genuine use: without actual commercial use a trademark is lost. Panel 32 of the Madrid Provincial Appellate Court has confirmed, through six judgments dated October 29 […]
Roncato: When a coexistence agreement redefines the rules of a trademark conflict
The Spanish Supreme Court has brought to an end the trademark dispute between the two branches of the Italian Roncato family, a leading name in the luggage sector. The companies, Valigeria Roncato and Baulificio Italiano, will continue to use the surname “Roncato” in their respective trademarks, in accordance with the coexistence agreement signed in 1996. […]
The Mafia no longer has a seat at the table: the OEPM follows in the EGC’s footsteps and invalidates the Spanish trademark
The Spanish Patents and Trademarks Office (OEPM) has declared the trademark “La Mafia se sienta a la mesa” invalid, deeming it contrary to public policy and accepted principles of morality based on the same criteria that led the European General Court (EGC) to invalidate the European trademark in 2018. In 2018, the European General Court […]
EUIPO changes its approach: beer is not always similar to alcoholic beverages
Existing case law had long supported the similarity between beer in class 32 and alcoholic beverages in class 33. However, a recent shift in case law must now be taken into account when assessing oppositions against class 33 trademarks at EUIPO based on earlier marks covering beer, even though both categories consist of drinks containing […]