ELZABURU Blog - Industrial and Intellectual Property

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The conflict between company names and trademarks (or tradenames)

registro, marcas, diferenciacion, canica, azul, centro, círculo

Conflicts between company names and trademarks (or tradenames) are very common and there has always been considerable debate, both in doctrine and in case law, regarding the relationship and differences between the respective concepts and, specifically, regarding the scope of the exclusive rights conferred by a trademark (or tradename) registration with respect to company names that are identical or similar to such signs.

registro, marcas, diferenciacion, canica, azul, centro, círculo


First of all, it is necessary to identify the differences between the two concepts:

  • A company name is the designation that serves to identify companies in legal affairs (it will normally appear in the company’s documentation concerning its legal relations, such as invoices, contracts, etc.). Company names are registered at the Company Registration Office and their governing rules are set out in the Company Registration Office Regulations.
  • A trademark is the name or sign that serves to identify the goods and services of an undertaking in the marketplace and distinguish them from those of other undertakings, and a tradename is the name or sign that serves to identify an undertaking in the course of trade and distinguish it from others that carry out the same or similar activities in the marketplace. Both are registered at the Spanish Patent and Trademark Office and their registration confers on the owner an exclusive right to use them in trade.

What happens when a company name is identical or similar to a registered trademark or tradename? Does the company name constitute an infringement of the trademark or tradename?

The rules governing such a conflict are set out in the following sections of the Spanish Trademark Act [in Spanish]:

  • 14th Additional provision
  • Article 34

The 14th Additional provision of the Trademark Act establishes a bar to registration aimed at the Company Registration Office: the company registries shall refuse the company name applied for where it is the same as or might give rise to confusion with a reputed trademark or tradename.

In accordance with this provision, it is therefore clear that a new application for a company name cannot conflict with a reputed trademark or tradename. But what happens if the trademark or tradename is not reputed, or if the company name is already registered at the Company Registration Office? Can owners of trademarks or tradenames invoke their exclusive rights to seek the cancellation of the company name or prevent its use?

In these circumstances, it is necessary to rely on Article 34 of the Trademark Act, which is the provision that regulates the rights conferred by a trademark or tradename registration. Under this article, for the owner of the trademark or tradename to be able to prevent a third party from using a sign, various cumulative requirements must be fulfilled, of which, for the purposes of the subject matter at issue, I would highlight the following:

  • the use must be in the course of trade; and
  • it must be in relation to goods or services.

It follows from the above that:

  • The mere registration of a company name at the Company Registration Office does not in itself constitute an infringement of an earlier trademark or tradename registration that the owner of a trademark or tradename registration is entitled to prevent. It is necessary that the company name is used in the course of trade, that is, in the marketplace.
  • Mere use as a company name, that is, for the purpose that it is intended to serve, namely, to identify the company in legal matters, cannot constitute an infringement of an earlier trademark or tradename registration that the owner is entitled to prevent. The use of the company name must be in relation to goods and services.

Thus, it is ultimately an improper use of the company name, given that, as noted above, that is not its intended purpose, which is to identify the company in legal matters.

In summary, the owner of a registered trademark or tradename is entitled to prohibit use of a company name provided that (in addition to other requirements for infringement, such as confusion, etc.) said company name is used: (i) in the course of trade, and (ii) in relation to goods or services. The entitlement to prohibit infringing use of a company name is also expressly provided for in Art. 34.3 (d) of the Trademark Act.

The above parameters and requirements have been confirmed in case law. Particularly well known in this area is the CJEU’s judgment in the case C-17/06 Céline of 11 September 2007, the principles of which remain valid and are applied by the Spanish courts.

Previously published in Economist & Jurist [in Spanish]

Author: María Cadarso

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Eurasian IP System: A New Trademark System in Eastern Europe

Towards the year 2015, a new IP system has emerged in Northern Europe that aims to harmonize and unify, to a certain extent, the registration of trademarks in Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia. It is the so-called “Eurasian IP System”.

The Eurasian IP System is created primarily under the framework of the “Eurasian Economic Union (EAEU)” and is based on the “Treaty of the Eurasian Economic Union”. At the moment the five cited countries are the only members, but it is very possible that others in the region will join over the time.

map, world, europe, asia  

For us Spaniards and, in general, for the Western world, the eastern markets of our continent may seem somewhat unknown, distant or very alien to our daily lives, very focused on the European Union and America. However, in the world, especially in Asia, these markets are very important. The Russian market looks mainly towards Asian horizon and this process of integration with other states in the region to boost their economies has been developing for many years.

The alliance among these five States aims to achieve a free and unique economic space in which goods, capital, services and people circulate freely within a single market and under the framework of a coordinated customs integration.

As regards the IP field, the new trademark registration system is about to materialize – it was planned for 2020 – as an opportunity for the registration and protection of trademarks, even though there are still many fringes to overcome. In addition to the logical objectives of any common market, it seems that this new system also seeks to speed up the registration of trademarks in these jurisdictions.

Making a comparison with other existent and commonly used registration systems, it would broadly be more similar to the Madrid System than to the trademark in the European Union or to the AIPO administered by L’ Organization Africaine de la Propriété Intellectuelle (OAPI). It is not a completely unitary system, but rather a system that allows obtaining a trademark registration to obtain a bundle of national registrations, but that maintains a certain unity and dependence for some procedures and aspects. Therefore, from the moment this new registration comes into force, it will constitute one more strategic formula for the protection and internationalization of trademarks.

Some characteristics of what the Eurasian Trademark System will be:

  1. The application form will be unique and will be deposited with any of the intellectual property offices to choose from among those of Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia.
  2. The substantive examination will be carried out by each intellectual property office in each country.
  3. The official language will be, of course, Russian.
  4. For a trademark to be granted, it must be granted in all countries. Despite the fact that once the trademark is granted it becomes a bundle of national registrations, it must be granted by all the offices. Otherwise, it will be necessary to transform the Eurasian registry into independent national registries.
  5. The duration of the procedure is estimated to last approximately 1 year.
  6. There will be an opposition procedure within a period of 3 months. The opposition may be submitted to the receiving office where the application was filed.
  7. It is expected that the use of the trademark in one of the countries may serve as proof of use in the other members.
  8. It is not clear enough which office will have to be the one to request the renewal of a trademark, but it is reasonable to think that it will also have to be filed with the office that received the trademark application.
  9. It is still unknown if the Eurasian Mark is expected to become part of the Madrid Protocol. Therefore, it will not be possible to make a designation of this jurisdiction via Madrid Protocol, at least in the short-medium term.
  10. At the moment, there is not a unitary or centralized Eurasian administration nor jurisdiction. Therefore, administrative or judicial issues, it seems that they must be defended before the office through which the trademark has been applied for, and judicial issues will be heard by the competent national court.

It will be very interesting to know how this new Eurasian System and the Madrid Protocol coexist in practice. The reality is that the Madrid Protocol allows to protect trademarks not only in Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia, but also in practically all of northern Europe and very much of Asia (new Asian countries are also adding) through a partially centralized procedure in the initial phases and which currently allows a more or less centralized management of portfolios for certain formalities.

Author: Cristina Arroyo

Previously published in Economist & Jurist [in Spanish]

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GC confirms that trade mark KERRYMAID cannot be registered in the EU on grounds of the likelihood of confusion with KERRYGOLD

mantequilla, kerrygold, produccion

On 28 June 2011, Kerry Luxembourg Sàrl (“Kerry”) filed the EU trade mark application KERRYMAID (word) for different goods in classes 29 and 30. The Irish company Ornua Co-operative Ltd. (“Ornua”) filed opposition based on 18 earlier marks composed of the sign KERRYGOLD and registered in Classes 1, 5, 29, 30, 32 and 33, invoking Articles 8(1)(b), 8(4) and 8(5) EUTMR.

The Opposition Division upheld the opposition, based on the provisions of Article 8(5) EUTMR, and on the basis of the following trade mark:

kerrygold, logo, vaca, pastar

In December 2013, the applicant lodged an appeal against the Opposition Division’s decision. However, the proceedings before the EUIPO were suspended in light of the infringement action brought before the Spanish courts by Ornua concerning the sale of goods bearing the mark KERRYMAID.

In July 2019, the Board of Appeal ruled on Kerry’s appeal, partially annulling the Opposition Division’s decision and upholding the opposition filed by Ornua on the basis of Article 8(1)(b) EUTMR in respect of all the goods covered by the trade mark applied for, with the exception of “meat, fish, poultry and game” and “preserved, dried and cooked fruits and vegetables” in Class 29. The Board of Appeal concluded that the signs in conflict were similar to an average degree and, therefore, there was a likelihood of confusion in relation to the goods in classes 30 and 29 that were identical or similar to the goods covered by the earlier mark. Moreover, the Board of Appeal held that the peaceful coexistence of the signs in conflict in Ireland and the United Kingdom did not permit the conclusion that there was no likelihood of confusion for the part of the relevant public that is unaware of the geographical reference contained in the term “kerry”.

Kerry’s appeal before the General Court is based on a single plea in law: the alleged infringement of Article 8(1)(b) EUTMR in the Board of Appeal’s decision. Kerry argues that the Board of Appeal erred in concluding that there was a likelihood of confusion between the marks in conflict and it disputes the findings of the Board of Appeal regarding the relevant public’s perception of the geographical name “kerry”, the distinctive character of the earlier mark and the similarity of the signs in conflict.

In its judgment dated 10 March 2021 (T‑693/19), the General Court dismisses Kerry’s appeal and upholds the decision by the EUIPO’s Board of Appeal based on the following findings:

  • Kerry did not put forward any evidence that might call into question the Board of Appeal’s finding that there was no clear indication that the non-English speaking public of mainland Europe would understand the term “kerry” as a geographical indication of the designated goods.
  • Kerry did not furnish any evidence that might call into question the Board of Appeal’s finding that, for the majority of the relevant public, with the exception of the Irish public and possibly the public of the United Kingdom, the term “kerry” included in the earlier mark had distinctive character in relation to the goods for which the mark was registered.
  • Even if it could be considered that the relevant public as a whole would perceive the term “kerry” as a geographical indication when used in relation to the goods covered by the earlier mark, the Board of Appeal’s finding that the word element “kerrygold” is the dominant element of the earlier mark would not be called into question, given that, contrary to Kerry’s contention, said finding was not based solely on the presence of the term “kerry” in the word element “kerrygold” but on the position and size of said element and the lack of distinctive character of the figurative elements of the earlier mark.
  • The Board of Appeal did not err in not considering the figurative elements of the earlier mark to be the dominant and distinctive elements of that mark, given that, as held by the Board of Appeal, the representation of a grazing cow that features in the earlier mark, in relation to milk products, will be perceived by consumers as an element that is descriptive of the nature of the designated goods, and the other figurative elements of the sign (the flowers, the green background, the white lines and the font used) will be perceived as purely decorative elements that cannot convey any message that can be remembered by consumers.
  • The signs at issue are visually and phonetically similar to an average degree due to the common element “kerry”, placed in the first part of the word elements of the signs. Therefore, the Board of Appeal rightly concluded that, even though the signs in dispute are not conceptually similar, they are similar overall.
  • In light of the foregoing, the Board of Appeal rightly concluded that, in the global assessment of the likelihood of confusion, in the case at hand, with regard to the goods covered by the mark applied for which are similar or identical to the goods in Class 29 covered by the earlier mark, there may be a likelihood of confusion for the part of the relevant public which is not aware of the geographical reference contained in the term “kerry” and which corresponds to a large part of the relevant public.

In relation to the objections raised by Kerry concerning the Board of Appeal’s analysis of the likelihood of confusion, the General Court holds as follows:

  • The examination of the likelihood of confusion carried out by the EUIPO necessarily entails an abstract assessment, which is based not on the circumstances in which the goods are marketed, but on the “objective” arrangements for the marketing of the goods covered by the marks in conflict and, therefore, the way in which the earlier mark is used is irrelevant for the purposes of analysing the likelihood of confusion and the Board of Appeal was not obliged to take into consideration the evidence invoked by Kerry.
  • In any case, even if taking that evidence into consideration would have enabled the Board of Appeal to conclude that the term “kerry” had Irish connotations for the relevant public, mere connotations cannot suffice to determine that the relevant public as a whole perceives the term “kerry” as a geographical indication when it is used in relation to the goods covered by the earlier mark, given that to make that determination it would be necessary for there to be a sufficiently direct and specific link between the sign and the goods to enable the relevant public to immediately perceive, without further thought, a description of the goods in question or of one of their characteristics.
  • The judgment by the Court of Justice of 7 January 2004, Gerolsteiner Brunnen (C-100/02, EU:C:2004:11), invoked by Kerry, is not applicable to the case at hand, given that on reading the judgment, it does not appear that the Court of Justice examined whether the term “kerry”, associated with the goods in question, would be understood by the relevant public as an indication of their geographical origin.
  • The Board of Appeal did not err in disregarding the judgments of the Provincial Appellate Court of Alicante and the EU Trade Mark Court issued in the infringement proceedings brought by Ornua, given that the EUIPO is not bound by the decisions of an EU trade mark court delivered in actions for infringement, in the context of the exercise of its exclusive jurisdiction over registration of EU trade marks and, in particular, when, in so doing, it examines oppositions filed against applications to register EU trade marks.
  • With regard to the alleged peaceful coexistence of the marks at issue, contrary to Kerry’s claims, the burden of proof lies with the party claiming that there is peaceful coexistence and, moreover, when the opposition to the registration of an EU trade mark is based on an earlier EU trade mark, the coexistence must be proved for the entire territory of the European Union.

In light of the above, the General Court concludes that the Board of Appeal correctly held that there was a likelihood of confusion on the part of the non-English speaking part of the relevant public between the mark applied for and the earlier mark, within the meaning of Article 8(1)(b) EUTMR, in relation to the goods at issue.

Author: Ana Sanz

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Somalia. Somali trademark registrations are now possible

Mapa, bandera, Somalia

After almost 30 years since the Somalia Intellectual Property Office was closed, as a result of the very serious civil war, and thanks to a very slow but essential process of reconstruction of a failed state, the Somalia Intellectual Property Office (SIPO) has been established in Mogadishu.

During the years of inactivity and lack of protection in intellectual property matters, African experts advised against devoting efforts and financial investment in the protection of trademark rights in this country, as the insecurity and scarcity of safeguards of all kinds have been total. In the absence of legal and effective options, some stakeholders published cautionary notices in English and Somali-language newspapers, an informal practice of little effectiveness in the highly complex Somali context.

Despite the opening of the Register, there are still some reservations about the legal basis and underpinnings of the Somali trademark system. However, African experts are already open to offering this jurisdiction in the internationalisation processes on the continent. Positive developments are said to be underway, a certain stability and recognition of the pre-federal constitution is beginning to emerge, and SIPO has clear objectives. All indications are that there could be a new intellectual property law in 2021 (although timelines are uncertain in contexts such as Somalia’s) and that a simple, modern trademark registration system with English as the official language and an opposition procedure could be introduced. It seems that a past of difficulties will turn into a modern administration.

Regardless of the above, there are still many difficulties and connotations in the region that will have to be assessed when the time comes to protect IP rights in this country.

Author: Cristina Arroyo

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Mahou wins “Radler Cinco Estrellas” battle against Heineken

La primera Radler Cinco Estrellas, publicidad mahou, cartelera

The court dismissed Heineken’s claim, finding that the advertising of the Spanish brand defended by ELZABURU was not misleading and did not constitute unfair competition.

Judgment no. 9/2021, of 18 January 2021, by Section 28 of the Provincial Appellate Court of Madrid upheld the dismissal of the unfair competition complaint lodged by Heineken against its competitor Mahou in relation to the advertising for the launch of Mahou Cinco Estrellas Radler in the summer of 2018.

The advertisements in that campaign launching the new product included the phrases “La primera Radler Cinco Estrellas” and “La primera Radler Cinco Estrellas con zumo natural de limón”, together with the image of the bottle or can of the beer in question.

Anuncia Radler Cinco Estrellas, Mahou


In its complaint, Heineken argued that the words “la primera” [“the first”] within the phrase could only be interpreted in two ways: in a chronological sense, as the first “Radler” [shandy] type beer to launch in the marketplace, or in the sense of superior quality, with respect to the rest of the “Radler” type beers. Given that, according to Heineken, neither interpretation was accurate, it would constitute misleading advertising, as prohibited under Articles 5 and 7 of the Unfair Competition Act.

However, the message conveyed by the disputed advertising was different to the only two interpretations put forward by the complainant. The prominent image of the Mahou beer bottle or can, with its famous Mahou Cinco Estrellas trademark on the front, informed the consumer targeted by the advertisement that it was the first ever “Radler” type beer or beer with lemon launched by the brand in the marketplace. Therefore, the advertisement did have a chronological meaning, but it was relative rather than absolute, and it was specifically with reference to Mahou’s well-known Cinco Estrellas beer.

This was the finding of both Mercantile Court No. 12 in Madrid, in the first instance ruling, and the Provincial Appellate Court in the appeal. Both courts applied the principle established in settled case law that advertisements must be considered as a whole to determine whether they may be misleading.

The analysis put forward by Heineken, which excluded the main visual element of the advertisement (the image of the advertised beer), was flawed, leading to a distorted interpretation of the message conveyed.

The conclusion drawn in the court’s ruling was supported, moreover, by a market study submitted in the proceedings by Mahou in which only 3% of the respondents spontaneously interpreted the advertisement in one of the ways suggested by Heineken, compared with the 20% of respondents who understood it as advertising for the Mahou brand’s first “Radler” type beer.

Access the article published in Expansión Jurídico [in Spanish].

Author: Carlos Morán

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