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The most prolific trademark attorney firms in Europe revealed

Data analysis reveals that, amongst representatives, Isabelle Bertaux ranks as the number one trademark filer in the EU, with Novagraaf and Arpe completing the top 3.

21 Feb 2020

Football: a game where every brand wins

Football teams and corporates are cashing in on brand value, but a changing industry means clubs need to use new methods to continue strengthening their presence and engagement levels.

19 Feb 2020

Diversity in e-sports, new INTA taskforce, intellectual property paid David Beckham’s salary – INTA 2020 Europe day two takeaways

This week, INTA hosted its annual European Conference in Madrid, Spain. WTR is on the ground to bring you the key insights from the second day of the event.

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7 May 2020

Community Design Court confirms infringement of design for GHD hair straighteners

Section 8 of the Court of Appeal of Alicante - acting as the Community Design Court – has confirmed the infringement of a Community design owned by Jemella Limited, which protects the shape of the well-known GHD IV Styler hair straighteners. Read more

27 Apr 2020

Measures adopted in the area of intellectual property due to covid-19 pandemic

In Spain, the rapid spread of covid-19 has led to the adoption of various measures in the judicial and administrative areas. This update highlights the measures of interest for IP owners and practitioners. Read more

6 Apr 2020

Brand creation and protection: out with the old

Trademark experts from across the globe offer critical insight into brand creation best practice and guidance on pitfalls to avoid. Read more

30 Mar 2020

Spain Trademark Prosecution Firm of the Year: BomhardIP

Anti-Counterfeiting

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17 Mar 2020

Trademark procedures and strategies: Spain

Distinctive signs are principally governed by the Trademark Act (17/2001), which has been partially modified by Royal Decree-Law 23/2018 in order to incorporate EU Directive 2015/2436, and it is complemented by Royal Decree 687/2002. Read more

18 Feb 2020

Micro-influencers, Twitch brand challenges, and an IP marathon – INTA 2020 Europe day one observations

This week, the INTA is hosting its annual European Conference in Madrid, Spain. WTR is on the ground and we present key learnings and insights from the first day of the event. Read more

17 Dec 2019

Five counterfeit hotspots in Spain that brand owners must be aware of

In the next edition of our regular series on marketplaces around the world that are reportedly notorious for being havens for fakes, we head to Spain. Read more

4 Nov 2019

Criminal sentence handed down for possession of infringing FC Barcelona t-shirts

The Madrid Court of Appeal has upheld a lower court decision sentencing the defendant to five months’ imprisonment for possessing 9,317 counterfeit items of clothing for commercial purposes, including t-shirts infringing the IP rights of FC Barcelona. Read more

Brand management

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29 Jul 2019

The top filers and a vision for the future: inside EUIPO operations

Less than a year into Christian Archambeau’s tenure as executive director, the EUIPO is laying the groundwork for future expansion. World Trademark Review’s annual focus on the office assesses current operations, reveals the most proactive filers and explores how the agency is taking a global view of trademarks. Read more

26 Apr 2019

Trademark Premier League: Manchester United crowned 2019 champions, as Messi pulls ahead of Neymar

With today’s World Intellectual Property Day celebrating the importance of IP in sports, research conducted by WTR finds that Manchester United has the most significant trademark portfolio of any global football club. Read more

8 Jan 2019

Protecting and enforcing design rights: Spain

The legal framework relating to industrial designs in Spain is circumscribed, as far as national legislation is concerned, to Law 20/2003 on the Legal Protection of Industrial Designs (7 July 2003) and the Regulation for the Implementation of Law 20/2003 on the Legal Protection of Industrial Designs, approved by Royal Decree 1937/2004 (7 September 2004). Read more

2 Nov 2018

Trademarks take centre stage at IP statistics conference

In this exclusive guest insight, CompuMark’s Robert Reading shares his takeaways – and why trademarks are taking a more prominent role in the analysis of IP analytics. Read more

Enforcement and Litigation

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28 Jan 2020

Barcelona Court of Appeal upholds criminal sentence for possession of handbags infringing well-known registered design

The Barcelona Court of Appeal has upheld a condemnatory judgment sentencing the defendant to six months’ imprisonment for the possession of 240 handbags infringing a design belonging to the Robin Ruth Group. Read more

5 Dec 2019

Exhaustion of trademark rights: Barcelona Court of Appeal rules in Schweppes case

The Barcelona Court of Appeal has held that Red Paralela had infringed Schweppes' Spanish SCHWEPPES marks by importing and commercialising Schweppes-branded tonics in Spain which had been manufactured in the United Kingdom by Coca-Cola, the owner of the UK SCHWEPPES marks. Read more

14 Nov 2019

Protecting and enforcing design rights: Spain

23 Jul 2019

Supreme Court recognises Modelo’s right to register and use CONTINENTE mark

In a case involving multinational retailer Carrefour, the Spanish Supreme Court has confirmed that under no circumstances can a trademark that is no longer used on the market seek protection. Read more

Government/Policy

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27 Feb 2019

IP offices of EU, Chile, Singapore and Spain named most innovative in the world

In exclusive research from WTR, the EUIPO has been ranked as the most innovative IP office in the world for the third year in a row. Closely behind are the registries of Chile, Singapore and Spain. Read more

10 Sep 2018

Trademark procedures and strategies: Spain

At an international level, the Trademark Act has adapted Spanish law to the general legal framework established within the international community. Read more

11 Apr 2018

Customs concerns: counsel identify significant room for improvement in India, Iran and Turkey

Trademark counsel have had their say on the efficiency of customs authorities across the globe – with some of the largest importers of counterfeit goods giving cause for continued concern. Read more

6 Apr 2018

Trademark offices prepare for the future as users give poor performance grades

The performance levels of the Chinese, Brazilian and Indian trademark offices have clear room for improvement but change could be afoot. Read more

Law Firms

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27 Mar 2018

BARCELONA collective mark rejected, battle for Prudential name and Philippines fakes crackdown: news round-up

In our latest round-up, we look at the Philippines government pledging to crackdown on counterfeit goods, a national IP office’s anti-fakes video featuring a naked man atop a tortoise, and much more. Read more

7 Jul 2016

Barcelona and Neymar top football trademark rankings; high-flying Leicester need to shore up their defence

Research conducted by <i>World Trademark Review</i> reveals the leading trademark filers in the football world, with FC Barcelona, AC Milan and Manchester United topping the list. It also demonstrates that Leicester City – a team that shocked the football fraternity by winning the Premier League title two months ago – do not yet have a trademark portfolio that matches its newfound success; although a club spokesperson tells us that it has plans to change that.

IP Offices

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19 Jan 2016

Use of ‘Champagne’ in bar name infringes protected ‘Champagne’ designation of origin

The Granada Court of Appeal has upheld a lower-court decision finding that the owner of the Café Jazz La Champagnería had infringed the ‘Champagne’ designation of origin (Appeal 307/2015, October 28 2015).

Online

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30 Oct 2014

Court rules on use of third-party trademarks as AdWords

The Barcelona Commercial Court Number 2 has dismissed Fotoprix’s trademark infringement and unfair competition action against Vistaprint, and upheld Vistaprint’s counterclaim for a declaration of partial invalidity and partial cancellation of Fotoprix’s FOTOLIBRO mark. Among other things, the court referred to the ECJ’s decision in <I>Google France</I> to decide whether Vistaprint’s use of Fotoprix’s marks as AdWords amounted to infringement.

21 Mar 2014

'.es' domain names on the up

Red.es, the registry responsible for domain name registrations in Spain, has announced that a total of 1,696,538 ‘.es’ domain names were registered at the end of 2013, representing an increase of 5.1% compared to the number of registered domain names at the end of 2012. In contrast, there were recorded negative growth rates in many other domain name extensions in the same period.

23 Mar 2011

New precautionary measures against online infringement introduced

Following an eventful parliamentary procedure, the Sustainable Economy Act (Law 2/2011) came into force on March 7 2011. Among other things, the act introduces a preliminary injunction procedure aimed at removing content from websites in relation to activities that infringe IP rights.

15 Sep 2010

Court orders blocking of Chilean website

The Third Commercial Court of Barcelona has granted a request for an interim injunction filed by Société des Produits Nestlé SA and Nestlé España SA against a natural person residing outside Spain. The court ordered the blocking of the defendant's website, which featured a promotional campaign for Nestlé cereals.

Portfolio Management

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12 Nov 2018

Preliminary draft Trademark Act: invalidity and cancellation proceedings

Following the approval of a preliminary draft law partially amending the Spanish Trademark Act in order to incorporate Directive 2015/2436, various consulting bodies have given their opinions on the draft text, highlighting certain aspects which they believed could be improved. Read more

17 May 2018

Manchester United tops Premier League of trademarks; Messi overtakes Neymar in player rankings

Exclusive research by World Trademark Review reveals the filing activity of the world’s most valuable football clubs and players, and finds that Manchester United boasts the most trademarks of any team in the world. Read more

3 Aug 2017

Court win for FC Barcelona

The High Court of Justice of Catalonia has overturned two previous decisions by the Spanish Patent and Trademark Office in favour of FC Barcelona. This judgment may set a precedent for other cases concerning Spanish industrial designs intended to protect products containing emblematic elements or images that may clash with earlier marks or signs (eg, souvenirs, stationery and ornamentation).

29 Mar 2017

Trademark procedures and strategies: Spain

Distinctive signs are principally governed by the Trademark Act (17/2001), which replaced the former Trademark Act (32/1988) and was complemented by Royal Decree 687/2002. In 2006 the Trademark Act was further amended by Act 19/2006, which implemented the EU IP Enforcement Directive (2004/48/EC).

Trademark law

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17 Jul 2018

Court of Appeal upholds criminal sentence for import of counterfeit t-shirts bearing registered trademarks

The Court of Appeal of Zaragoza in Spain has upheld a judgment of the Trial Court in which the latter had sentenced the defendants for importing thousands of counterfeit t-shirts from China.

23 May 2018

Barcelona Court of Appeal upholds criminal sentence for sale of counterfeit shoes

The Barcelona Court of Appeal has upheld a condemnatory judgment sentencing an online seller of counterfeit shoes for committing a crime under Article 274 of the Criminal Code.

11 Oct 2017

Foreign companies and unfair competition actions in Spain

The Spanish Supreme Court has addressed the controversial issue of the standing of foreign companies which do not operate directly in Spain to bring actions under the Spanish Unfair Competition Act, by dismissing an appeal against a US company’s standing to sue a Spanish distributor.

1 Feb 2017

Cancelled CONTINENTE marks are no obstacle to use of later registered CONTINENTE mark

The Madrid Court of Appeal has recognised the absolute right of Modelo Continente Hipermercados SA to use its registered trademark CONTINENTE, having upheld the cancellation of Carrefour’s CONTINENTE marks due to non-use. The decision confirms that trademark registrations that are cancelled due to non-use in the market should not prevent the holder of a later registered mark from using it in that market.

Twitter

30 Jun 2020

@WTRmagazine RT @MarksmenTweets: ICYMI @INTA events go digital: what to expect from this year’s virtual Annual Meeting | World Trademark Review https://… Read more

30 Jun 2020

@WTRmagazine Booking․com prevails at the US Supreme Court; will it lead to a flood of ‘generic․com’ trademark applications at th… https://t.co/mnB7lOdRRP Read more

30 Jun 2020

@WTRmagazine How WTR is connecting the global trademark community this October. https://t.co/t0dHlyjYg4 https://t.co/VKH1yBU08e Read more

30 Jun 2020

@WTRmagazine WTR is delighted to announce the launch of WTR Connect, a series of online events taking place from 6 to 15 October… https://t.co/taTqIepXJL Read more

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Michal Havlík

Partner

Prague, Czech Republic

Všetečka Zelený Švorčík Kalenský and Partners, Law and Patent Office

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