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DeutschDistinctiveness and Lexicalization of a Well-Known Trademark: The DONUT Case before the Supreme Court
Bakery Donuts Iberia S.A.U. is the owner of the well-known Spanish trademarks ‘DONUT’ and ‘DONUTS’, which designate bakery products included in class 30 of the nomenclature. However, the company Atlanta Restauración Temática S.L. marketed, through its website, doughnuts under the brand name ‘REDONDOUGHTS’ which were identified as ‘donuts’ in the product description. In view of this situation, Bakery Donuts filed a lawsuit against Atlanta for infringing its trademark rights and engaging in…
Pictorial Co-Authorship and Originality in the Execution Phase: Judicial Recognition of the Executor’s Creative Contribution
In the present case, an artist sued the owner of an art studio in order to have her authorship or alternatively her co-authorship, of 221 pictorial artworks recognised. The plaintiff and the defendant collaborated for ten years, during which time the plaintiff painted pictures in the defendant's studio, following the defendant’s instructions and sketches. However, it was the plaintiff who executed the paintings, although the defendant also added some of their own strokes. Furthermore, the…
Rejection of bimbo’s three-dimensional trademark: lack of distinctiveness and non-application of the principle of registration continuity
Grupo Bimbo S.A.B, de C.V took legal action against the decision of the Spanish Patent and Trademark Office (SPTO) dismissing the appeal against the refusal of the three-dimensional trademark application M4153054 for flour or corn tortillas. The application was rejected on the grounds of insufficient distinctiveness, as the trademark’s shape was common for this type of biscuit or snack. The applicant also based its application on its previous three- dimensional trademark rights consisting of…
Concept of informed users and protection of modular systems. Community design. LEGO case.
The Hungarian Court of Justice has referred several questions to the European Court of Justice for a preliminary ruling on the scope of protection of Community designs that fall under the exception provided in the European legislation as the controversial pieces are objects that allow for the multiple assembly or connection of mutually interchangeable products within a modular system. The dispute arose from an action for infringement of a Community design brought by Lego against…
Conflict between trademark and domain name: the case of “mezquitadecordoba.org”
Alhambra Valparaíso Ocio y Cultura S. L. was the owner of the domain name “mezquitadecordoba.org”, which it registered in 2007. This domain corresponded to a website on which the company advertised guided tours of the Mosque of Córdoba, among other tourist activities. Subsequently, The Cathedral Chapter of Córdoba obtained the concession for the word marks ‘Mezquita de Córdoba’ (Mosque of Córdoba). The Chapter also brought arbitration proceedings before the WIPO, which ordered the transfer of…
Cristina Hernández-Martí Pérez – AIPF Board Member
HERNÁNDEZ MARTÍ ABOGADOS is proud to announce that our partner, Cristina Hernández Martí Pérez, has been appointed to the Board of Directors of the Association of Intellectual Property Firms (AIPF) for the 2025–2026 year. The AIPF has announced the appointment of its Officers and Board of Directors, effective September 11th, 2025. The Officers include: President: Carlos Olarte, OlarteMoure, Colombia Vice-President: Blair Barbieri, Hovey Williams, United States Treasurer: Michael Battaglia,…
The supervening revocation of the opponent’s trademark removes the likelihood of confusion
Granados 52 Inversiones S.L. applied to register the trademark WILD CARNAL STEAK HOUSE. But the company Pizza Market S.L., as the owner of the earlier trademark CARNAL, objected to the application, getting the Spanish Patent and Trademark Office (SPTO) to refuse the registration because there was a risk of confusion between the two trademarks. Granados 52 filed a claim against this decision, arguing that there was no risk of confusion. Furthermore, while the claim was being processed,…
Recognition of the Distinctive Character of Short Sound Marks: The Berliner Verkehrsbetriebe (BVG) Case Before the General Court
On 15 March 2023, Berliner Verkehrsbetriebe (BVG) filed a trademark application in respect of a sound sign consisting of a short melody, to cover services in class 39 regarding transports. However, the application was rejected on the grounds that the melody lacked distinctiveness because it was too short and banal, as it did not have resonance or ability to be recognised by consumers as an indication of the commercial origin of the services which it covered.…
Hernández Martí Abogados at INTA Leadership Meeting 2025
Cristina Hernández-Martí Pérez, Partner at Hernández Martí Abogados, will be attending the International Trademark Association (INTA) Leadership Meeting 2025, taking place from November 18–21 in Hollywood, Florida. As a member of INTA’s Anti-Counterfeiting Committee, Cristina will join leading IP professionals from around the world to exchange insights and discuss global strategies to combat counterfeiting and protect intellectual property rights. The INTA Leadership Meeting brings together the…
Genuine use of a trademark through second-hand sales and authenticity certification: the Ferrari TESTAROSSA case
Ferrari SpA owned the international trademark TESTAROSSA in the European Union for class 12 in relation to vehicles and their accessories. However, the trademark was revoked in its entirety due to lack of use. In response to this decision, Ferrari SpA filed an appeal with the General Court of the EU, requesting the annulment of the contested decision on the grounds that the effective use of the trademark had not been properly assessed. The contested decision stated that Ferrari SpA had not…