trademark law

Introduction

Saudi Arabia will join the Madrid System on October 8, 2026, three months after depositing its instrument of accession with the World Intellectual Property Organization (WIPO). Foreign owners will then be able to include the Kingdom in a new international application or extend an existing international trademark to Saudi Arabia. Saudi businesses will, in turn, be able to seek protection across other Madrid System members.

The accession centralizes filing and portfolio management within a system whose geographical reach now extends to 133 countries. It does not create a worldwide trademark or guarantee registration: the Saudi Authority for Intellectual Property, or SAIP, will examine each designation under Saudi law.

What is the Madrid System?

Following the Madrid Agreement from 1891, and administered by the WIPO, the Madrid System allows a trademark proprietor to seek trademark protection in several countries through a single international application. The application is filed through the applicant’s Office of origin and must be based on a national or regional application or registration.

The system centralizes filing, fee payment, renewal and the recordal of certain changes, including changes of ownership or address. It does not, however, create a single worldwide trademark: each designated Office examines the request under its own law and may grant protection, limit it or issue a provisional refusal. An international registration therefore operates as a bundle of territorial rights administered through a centralized framework.

For further background, read our article on international trademarks and new members of the Madrid Protocol.

An accession opening the Saudi market to the Madrid System

According to WIPO’s official announcement, Saudi Arabia becomes the fifth of the six Gulf Cooperation Council countries to participate in the Madrid System, after Bahrain, Oman, Qatar and the United Arab Emirates. This development supports more coordinated regional filing strategies.

For businesses already pursuing an international filing strategy, bringing the Saudi market within this framework will simplify the coordination of applications, deadlines and recordals. Saudi Arabia may be included in a new international application or added to an existing registration, while portfolio administration remains centralized through WIPO.

How can Saudi Arabia be designated in an international trademark registration?

Including Saudi Arabia in a new international application

From October 8, 2026, an eligible owner may designate Saudi Arabia in an international application based on a qualifying basic application or registration. A French business will generally file through the INPI or the EUIPO, depending on the trademark for which it seeks to obtain international protection, after which WIPO will conduct a formal examination before transmitting the designation to SAIP.

Extending an existing international registration

The owner of an international registration may also file a subsequent designation where Saudi Arabia was not covered initially. Any protection will take effect from the date assigned to the extension and will not be retroactive to the original international registration date.

Using Saudi Arabia as the Office of origin

Owners having the required connection with Saudi Arabia will be able to use SAIP as their Office of origin and, on the basis of a Saudi trademark, seek protection in several Madrid System members through one application.

Which Saudi-specific features should trademark owners anticipate?

An 18-month provisional refusal period

WIPO Information Notice No. 35/2026 confirms that SAIP will have 18 months to notify a provisional refusal. A refusal based on an opposition may, in the circumstances provided by the Protocol, be notified later. The absence of an early objection should therefore not be treated as final acceptance.

An individual fee that remains to be published

Saudi Arabia will receive an individual fee for applications, subsequent designations and renewals in which it is designated. The applicable amount will be published by WIPO in a separate notice. The budget will therefore need to be confirmed at the time of filing, particularly where several classes are involved.

No division or merger resulting from division

Saudi law does not provide for division of a trademark registration. SAIP will therefore not request division of a Saudi designation or merger of registrations resulting from division. Precise drafting of the specification will be particularly important where an objection affects only some goods or services.

International designation or national filing: which strategy should be chosen?

Preparing the designation before filing

The centralized Madrid route does not remove the need for local clearance. Before designating Saudi Arabia, we recommend that businesses:

• Conduct prior art searches in Latin characters and, where appropriate, for Arabic transliterations or equivalents;
• Confirm the owner, representation of the trademark and specification against the intended commercial strategy;
• Anticipate Saudi examination, publications, oppositions and response deadlines; and coordinate the designation with existing Saudi rights, licences and launch plans.

Choosing the route according to the portfolio structure

The Madrid System is particularly suitable for businesses protecting the same trademark in several countries and seeking centralized administration. A national filing may remain preferable where Saudi Arabia is the only target market, the trademark requires local adaptation or the owner seeks an independent right.

During the five-year period following its registration, an international registration depends on the basic trademark, and loss of that trademark may trigger corresponding cancellation. Where a Saudi national registration already exists, the Article 4bis replacement mechanism may also be considered.

In this regiard, we invite you to read our article: ‘International trademarks: leverage Article 4bis of the Madrid Protocol’.

Conclusion

Saudi Arabia’s integration into the Madrid System will create a new protection route in a strategically important market from October 8, 2026. Foreign owners will be able to designate the Kingdom in an application or subsequent designation, while Saudi businesses will gain easier access to other Madrid System members.

The new route should be supported by clearance searches, careful specifications and an understanding of SAIP practice.

Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Q&A

Should the list of goods and services be adapted to the Saudi market?

Particular care should be taken when drafting the specification. It should accurately reflect the goods and services genuinely intended for the Saudi market and take account of SAIP’s examination practice. This is especially important because Saudi law does not provide for the division of a registration where an objection concerns only some of the designated goods or services.

What happens if SAIP issues a provisional refusal?

The owner will be required to respond within the applicable time limit, generally through a locally authorized representative entitled to act before SAIP. Depending on the grounds raised, the response may involve submitting legal arguments, restricting the list of goods and services or challenging the existence of a likelihood of confusion with an earlier right.

Does using the Madrid System remove the need to instruct local counsel in Saudi Arabia?

The Madrid System simplifies the filing and administrative management of the trademark, but it does not replace local assistance where SAIP raises an objection, an opposition is filed or enforcement action must be taken against a third party. Local counsel may also provide valuable assistance before filing by assessing the availability of the sign and adapting the protection strategy to the requirements of the Saudi market.

What risk arises from the international registration’s dependence on the basic mark?

During the first five years of the international registration, the protection obtained through the Madrid System remains dependent on the basic application or registration. If the basic mark is refused, cancelled, restricted or removed from the register, the international designations may be affected to the same extent. The strength and stability of the basic mark should therefore be assessed before implementing an international filing strategy covering Saudi Arabia.

Does a trademark refused in Saudi Arabia remain valid in the other designated countries?

A refusal issued by the Saudi Authority for Intellectual Property (SAIP) does not affect the protection of the trademark in the other States designated in the international registration. Each national office examines the application independently and decides whether to grant protection in its own jurisdiction.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.

Introduction

The ® symbol does not create trade mark rights. In France and the European Union, protection derives from the registration of the sign for specified goods and services—not from adding a symbol to packaging, a website or an advertising campaign.

This does not make the ® symbol insignificant. Where a trade mark is validly registered, we recommend using it as a legal communication tool, a commercial notice and a component of an organised evidence strategy. Judgment of the General Court Les Éditions Albert René v EUIPO (T-24/25) of May 2026, concerning the OBELIX trade mark, demonstrates that this apparently minor graphical feature may affect the assessment of how the public perceives a sign.

The symbol must nevertheless remain consistent with the underlying registration. It cannot extend protection to unregistered goods, enlarge the geographical scope of the rights or compensate for the absence of genuine use.

OBELIX Case: the ® symbol in the assessment of trade mark reputation

Facts

A Polish undertaking had obtained registration of the EU word trademark Obelix for goods in Class 13, including weapons, ammunition and explosives. Les Éditions Albert René applied for a cancellation action on the basis of its earlier OBELIX mark, relying in particular on its reputation under Article 8(5) and Article 60(1)(a) of the EU Trade Mark Regulation.

The EUIPO Board of Appeal dismissed the application. It considered that most of the evidence concerned the expression “Asterix & Obelix” or the popularity of the character, without sufficiently demonstrating that the public perceived OBELIX as a trade mark with a reputation. It also ruled out a link between the marks, relying mainly on the differences between the goods, market sectors and relevant publics.

Decision

The General Court annulled the Board of Appeal’s decision. It recalled that reputation must be assessed in the light of all relevant factors and that an accumulation of evidence may establish the necessary facts even where each item, considered individually, would be insufficient.

In particular, the Board should have considered materials on which the ® symbol appeared to the right of the word “Obelix” or “Obélix”. For members of the relevant public purchasing the goods, that presentation indicates that the term is a registered trade mark and serves as an indication of commercial origin. The Court also clarified that an earlier mark need not be used independently: where ASTERIX and OBELIX appear together and each is separately accompanied by the ® symbol, they may be perceived as two distinct trademarks.

Finally, the existence of a link between the marks required a global assessment. The Board could not focus solely on the differences between the goods and the absence of overlap between the relevant publics; it also had to examine the other relevant factors, including the exceptional distinctive character of the earlier mark.

Significance

The judgment does not itself recognise the reputation of OBELIX or declare the contested mark invalid. It annuls the Board’s decision because the evidence and the link between the marks were assessed incompletely; EUIPO must therefore reconsider those issues.

Its practical significance is nonetheless important: the ® symbol may be a relevant indicator of how the public perceives a sign. It is not autonomous or decisive proof, but it cannot be disregarded where it forms part of a coherent body of materials showing how the trade mark is commercially presented.

Consistent presentation may become relevant evidence

A trade mark is frequently used alongside product names, slogans, corporate names, characters and descriptive wording. In a dispute, it may therefore be difficult to establish whether the public perceived the relied-upon sign as an autonomous trade mark.

Placing the ® symbol immediately after the registered sign may make that function more visible. It may be relevant in opposition and cancellation proceedings based on an earlier mark; cases requiring proof of reputation or enhanced distinctiveness; trade mark counterfeiting and unfair competition actions; domain name and social media disputes; takedown requests submitted to platforms, hosting providers or online marketplaces.

The ® symbol cannot make a descriptive sign distinctive

The addition of the ® symbol does not render a descriptive, commonplace or non-distinctive sign distinctive. Nor is it sufficient, by itself, to demonstrate that the sign is being used as a trade mark, that is to say, to identify the commercial origin of goods or services.

The General Court reiterated this in its judgments in Cystus of 14 February 2017 (T-15/16), I-cosmetics of 7 July 2021 (T-205/20) and Genussländer of 28 January 2026 (T-46/25). The presence of the ® symbol constitutes only one element among others and cannot be accorded decisive weight.

The OBELIX judgment does not call this approach into question. It merely clarifies that, when placed within a coherent body of evidence, the ® symbol may contribute to showing that the public perceives the sign as a trade mark.

The ® symbol does not prove genuine use

A registration may become vulnerable to revocation where the mark has not been put to genuine use for the registered goods or services during the relevant period. The presence of the ® symbol does not establish sales volumes, duration of use, geographical coverage or genuine commercial activity.

Evidence of genuine use must address the place, time, extent and nature of the use. According to article L714-5 of the Intellectual Property Code, the registered trade mark symbol is consequently no substitute for invoices, sales records, advertising materials, dated screenshots and distribution evidence.

How should the ® symbol be used in a trade mark strategy?

The ® symbol should be used consistently and only in relation to a duly registered trade mark.

• Place it immediately after the first prominent occurrence of the trade mark: TRADE MARK®.
• Use a discreet presentation, either in superscript or in a reduced size.
• Ensure that it clearly refers to the relevant trade mark, particularly where several signs appear together.
• Harmonise its use and retain dated evidence of the trade mark’s commercial use.

In the OBELIX case, placing the ® symbol separately next to each sign contributed to their being perceived as distinct trademarks.

Conclusion

It is recommended using the ® symbol to protect and enforce a registered trade mark, provided that the validity and territorial scope of the registration have first been verified. The symbol does not generate protection. Its value lies in making the trade mark function more visible, discouraging generic or unauthorised use and supporting the consistency of evidence submitted in a dispute.

The OBELIX decision demonstrates that a graphical detail may have evidential significance when it forms part of a coherent commercial presentation.

Dreyfus Law Firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus Law Firm works in partnership with a global network of attorneys specializing in Intellectual Property.

Q&A

Can the ® symbol be used before a trade mark is registered?

A pending application is not yet a registered trade mark. The symbol should normally be adopted only once registration has been granted and only in territories where that registration is effective.

Is the ® symbol mandatory in France or the European Union?

No. Failure to use the symbol does not remove the rights arising from registration. Its use is nevertheless advisable as a means of clarifying the status of the sign and supporting a consistent trade mark protection policy.

What is the difference between ™ and ®?

The ® symbol refers to a registered trade mark. ™ generally signals that a business claims a sign as a trade mark, although registration may not have been obtained. The legal implications of both symbols vary between jurisdictions.

Where should the ® symbol be placed?

It should normally appear immediately after the registered mark, often in superscript: TRADEMARK®. On longer materials, using it after the first prominent occurrence may be sufficient, depending on the applicable brand guidelines.

Can a licensee use the ® symbol?

Yes, provided that the trademark owner has authorised such use and that the trademark is duly registered for the relevant goods, services and territories. The licence or distribution agreement should regulate this use, including the exact form of the trademark, the placement of the symbol, ownership notices and the authorised materials. This helps reduce the risk of presenting the trademark’s legal status inaccurately.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.

One application can protect a trade mark across the 27 Member States of the European Union. That unitary reach explains why a change in EUIPO practice can alter the risk profile of a filing, opposition or revocation action across the entire EU.

In force since 1 July 2026 under Decision EX-26-09, the new edition is not legislative reform. It is, however, the operational reference used by examiners and practitioners. It requires a fresh look at clearance scope, the validity of earlier rights, specifications, procedural calendars and evidence.

The EUIPO’s official summary of the 2026 edition reveals seven changes with particular significance for trade mark portfolios.

Geographical indications: the principal methodological change

Ex officio review extending beyond comparable goods

Following legislative reforms and T-239/23, NERO CHAMPAGNE / Champagne, the EUIPO has clarified examination under Article 7(1)(j) EUTMR. The Office may raise an objection beyond identical or comparable goods and related services where the available information indicates exploitation, weakening, dilution or detriment to the reputation of a geographical indication.

Clearance can no longer stop at trade mark registers. It should cover agricultural, wine, spirit, craft and industrial GIs, generic terms, the European consumer and the composition of processed goods. Regulation (EU) 2023/2411 extends this vigilance to sectors including textiles, glassware, jewellery, porcelain and furniture.

Restricting the specification is not always enough

Restricting a specification to goods complying with the relevant product specification may create a favourable presumption where the GI is used for identical goods or related services. The presumption can be rebutted. It will not cure an objection where the GI is evoked for other goods or services, or where a protected product is an ingredient, part or component of a processed product.

In opposition, Union registers and extended GIview data may make a GI easier to substantiate. The Guidelines also incorporate T-406/24, PriSecco / Prosecco, and clarify the treatment of craft and industrial GIs. For collective EUTMs consisting of a GI product-specific logo required by the relevant product specification, the Office will no longer object systematically on the basis that the sign will be perceived as a GI rather than a collective mark.

A sound European Union trade mark filing and enforcement strategy must therefore test the sign, specification, GI registers and message conveyed to the public before filing.

Geographical indications and trade marks: examination extends beyond identical goods.

Opposition: checking the right, calendar and procedure

The Court of Justice judgment of 5 February 2026 in C-337/22 P, Ape tees / DEVICE OF APE HEAD, confirms that an earlier right relied upon in opposition must remain valid until the decision. A missed renewal, cancellation or poorly documented chain of title can therefore undermine pending proceedings.

The new edition also changes the treatment of certain grounds. Where an opponent relies on a right that is ineligible under Article 8(4) EUTMR, the opposition will now be rejected as inadmissible rather than unsubstantiated. This classification allows the file to be closed earlier.

A second or subsequent request for an extension no longer requires supporting evidence as a matter of course. The request must still be reasoned and based on exceptional circumstances. After an initial six-month joint suspension, a further joint request triggers an automatic extension of 18 months, up to the two-year maximum, with either party able to opt out. Reduced documentary formality does not reduce the need for precise deadline management.

Comparison of signs: typography does not create a new right

For two word marks, the use of upper-case or lower-case letters no longer affects the comparison. “ORION”, “Orion” and “orion” must be treated as the same word sign. A non-stylised or slightly stylised single letter is considered to have weak inherent distinctive character.

For short signs, a structured trade mark similarity analysis should distinguish the legal identity of the sign, visual proximity and the overall impression created by its graphic elements.

Evidence and genuine use: building the file before the dispute

Part A now includes new guidance on evidence and the burden of proof. Each party remains responsible for establishing the facts relied upon through an intelligible evidential chain that can be tested by the other party.

For genuine use, the 2026 edition provides more detail on independent subcategories. Use shown for certain products will not necessarily maintain protection for an entire category. Invoices, catalogues, website captures, distribution data and advertising must be tied to the sign used, period, territory and goods concerned. Volume does not repair a missing evidential link.

Genuine use should be monitored through an evidence matrix recording, for each product, the item, date, territory, sales channel and version of the sign.

Filing, evidence of use and proceedings: three connected levels of review.

Revocation and conversion: measuring the effects before filing

A non-use revocation application may be inadmissible for abuse of law or process, but only in the exceptional circumstances identified in R 2445/2017-G, Sandra Pabst. A commercial objective or related dispute is not enough to establish abuse.

Requesting an earlier effective date of revocation does not require a legitimate interest, although that date may affect agreements, completed acts or parallel proceedings. R 1508/2019-G, Zara, also governs conversion following revocation where the applicant relies on genuine use under the law of a Member State. Any invalidity or revocation strategy before the EUIPO should therefore address national law and territorial evidence before the application is filed.

Finally, following decision R 1508/2019-G, Zara, Part E of the Guidelines clarifies the examination of a request for conversion filed after a European Union trade mark, or an international registration designating the European Union, has been revoked for non-use. Where the proprietor requests conversion for a Member State on the ground that the mark has been put to genuine use in that State, the question must be assessed under the national law of that Member State. The applicable national law and the territorially relevant evidence of use should therefore be anticipated within the conversion procedure itself, rather than, as a general rule, before any invalidity or revocation action is brought.

Collaboration between lawyers and patent and trade mark attorneys

Two complementary workstreams converging into one coherent, usable file.

The lawyer defines the legal basis, procedural strategy and relationship with national litigation. A patent and trade mark attorney who also acts as a court-appointed expert brings a technical reading of the register, specification, signs and evidence. This division of work avoids building a legally sound argument on an unusable factual record.

Composite case study, provided solely for illustration. A company has six weeks to prepare the European launch of a tableware range under a name evoking a region. The trade mark search reveals no decisive obstacle. Joint review nevertheless identifies a craft or industrial GI and a risk of evocation that the proposed restriction would not cure. The lawyer characterises the risk under Article 7(1)(j) EUTMR, while the attorney checks GIview, the claimed goods and available alternatives. A new name is selected before filing and the specification narrowed to the activities actually planned. The launch remains on schedule without waiting for an objection or rebranding after the campaign has started.

For the instructing lawyer or legal department, recording the analysis, sources and rejected alternatives also strengthens decision traceability and professional risk management.

Frequently asked questions

Do the 2026 Guidelines apply to pending proceedings?

They describe Office practice from 1 July 2026. The relevant act, transitional rules, applicable regulations and case law must be checked for each file. Earlier practice does not automatically create an acquired right.

What happens if the earlier right expires during an opposition?

The right relied upon must remain valid until the decision. Its status, renewal and ownership should therefore be monitored throughout proceedings, not only when the opposition is filed.

Can a restricted specification always overcome a GI objection?

No. A restriction may create a favourable presumption, but it can be rebutted. It may remain insufficient where the sign evokes the GI or a processed product incorporates the protected product.

Is a second extension granted without reasons?

No. Supporting evidence is no longer required systematically, but the request must be reasoned and based on exceptional circumstances. The Office retains discretion.

How should genuine use be secured for a broad category?

Each item should be tied to a product, period, territory and the sign used. It must then be determined whether the evidence supports the entire category or only an independent subcategory.

Why instruct Dreyfus

Nathalie Dreyfus is a French patent and trade mark attorney and is included in the 2026 national list of experts approved by the French Court of Cassation, under category E-09.02 “Trade marks”. She is also listed as an expert with the Paris Court of Appeal for 2026. Her entry can be verified through the French National Council of Court Experts directory.

This combined experience in trade mark strategy and expert evidence anticipates how a specification, earlier right or item of evidence may be challenged before the Office and, if necessary, a court.

Turning the Guidelines into verifiable decisions

The 2026 edition does not overturn the principles of the European Union trade mark. It does impose greater discipline: search beyond trade marks, maintain the rights relied upon, reason procedural requests and build evidence by product and territory.

To audit the effect of these changes on a filing, opposition or existing portfolio, contact Dreyfus for an initial confidential discussion.

Dreyfus & Associés law firm partners with a global network of lawyers specializing in Intellectual Property.

Official sources

• EUIPO, entry into force of the 2026 edition of the Guidelines
• EUIPO, trade mark Guidelines, 2026 edition
• Regulation (EU) 2017/1001 on the European Union trade mark
• Regulation (EU) 2023/2411 on geographical indications for craft and industrial products

Introduction

China adopted a substantially revised Trademark Law in June 2026. The new legislation, comprising 87 articles, is expected to enter into force on 1 January 2027. It addresses malicious filings, trademark hoarding, deceptive signs, excessive enforcement practices and misconduct by trademark agencies.

Filing activity must reflect a legitimate business rationale

Chinese authorities are seeking to distinguish commercially justified filings from speculative accumulation. Bad faith may be inferred from repeated imitation of third-party signs, large numbers of unexplained applications, appropriation of public resources, infringement of prior rights or systematic squatting.

A company should therefore no longer file extensive lists of marks and goods without being able to justify their utility. We recommend documenting the following at the time of filing:

• the intended use of each mark;
• the relationship between the specification and the planned activity;
• how the sign was selected;
• which clearance searches were performed;
• whether distributors, manufacturers or local partners had prior access to the brand.

These records may become important where an application pattern is challenged as excessive or inconsistent with genuine commercial needs.

Brand owners must supervise enforcement agents

Recent case law also demonstrates that enforcement cannot be outsourced without governance. In a Shanghai case, a trademark owner had issued blank authorizations to an agency and law firm that brought repetitive, profit-driven claims. The owner was held jointly liable because it had failed to exercise reasonable care.

Representatives should identify the relevant infringements, permitted measures, settlement authority, reporting obligations and internal approval thresholds. A brand protection program should remain targeted, documented and proportionate.

A rigorous assessment of a trademark’s validity by the courts

Chinese case law takes a more stringent, but also more fact-based, approach to absolute grounds for refusal.

First of all, deceptive trademarks require an objective misleading effect. Article 10 prohibits signs capable of misleading the public as to the quality, origin or characteristics of goods. However, an assumed association or promotional suggestion does not necessarily establish deception.

MAMBA FOREVER, filed for computer game software, was accepted after the CNIPA refusal was overturned. Although “Mamba” was associated with Kobe Bryant, the expression did not misdescribe an inherent characteristic of the software or objectively mislead purchasers.

Similarly, promotional wording included in a mark for baby nappies was accepted because it remained within ordinary consumer expectations.

The outcome was different for a tea mark combining “1837”, prestige-related French expressions and “THE FINEST TEAS OF THE WORLD”. The sign conveyed potentially inaccurate claims regarding history and exceptional quality. Continued use later resulted in an administrative fine of RMB 400,000, illustrating that an absolute-ground objection may create a use-related compliance risk rather than merely prevent registration.

Second of all, contemporary public perception is increasingly important. A linguistically neutral term may acquire an unlawful or damaging market meaning. The Chinese term BIQUGE had become associated in the online literature sector with piracy-based reading platforms. Its registration was invalidated because that established meaning adversely affected copyright administration and public interests.

Clearance work should therefore cover platform terminology, sector-specific slang, social-media usage and meanings that may have developed after filing.

Penalties for bad faith and trademark squatting

Combating trademark brandjacking in China remains a priority, but the courts are now seeking to ensure that this policy does not penalize bona fide trademark owners.

Knowledge of a trademark acquired through a relationship with a distributor may constitute bad faith. Subsequent commercial use, even if prolonged, does not necessarily validate a fraudulent registration. However, when a trademark initially registered in bad faith is subsequently repurchased by its true owner, some rulings refuse to hold the owner liable for the consequences of the original fraud.

One particularly significant ruling ordered the fraudulent applicant to withdraw its pending applications and have its registrations canceled. This civil injunction could reduce trademark owners’ reliance on a series of administrative opposition, invalidation, and appeal proceedings.

New forms of counterfeiting to anticipate

Virtual and physical goods may be considered related. In the G. Patton case, a car trademark was used on virtual vehicle skins in a video game. The court considered that the absence of a physical product did not automatically exclude similarity. The commercial relationship between the goods and the likelihood that consumers would assume a common source remained decisive.

Businesses in the automotive, fashion, sports, entertainment and luxury sectors should review their protection for virtual objects, gaming content, avatars and immersive environments.

Classification does not override marketplace reality. In the Jinwei dispute, an alcoholic beverage was compared with a well-known non-alcoholic drink. Despite their classification differences, the court examined packaging, sales channels and target consumers and found a significant likelihood of confusion.

Watching only identical goods within the same class will therefore fail to identify material commercial risks.

Upcycling may fall outside trademark exhaustion. A company transformed second-hand luxury bags into new products while retaining visible monograms. The court held that exhaustion did not apply after substantial alteration. Recycling does not authorise a trader to make a third party’s famous mark the central selling point of a materially different product, particularly without a prominent disclaimer.

The effective remedies in China

A coordinated Chinese enforcement strategy may combine:

• trademark infringement claims;
• unfair competition proceedings involving imitations of product presentation, trade names, and parasitic conduct;
• copyright or design rights for certain graphic elements;
• Criminal proceedings in cases of organized counterfeiting
• Customs measures and local administrative actions

Courts are showing greater willingness to award punitive damages where infringement is intentional and serious.

Criminal protection has also expanded. The 2025 judicial interpretation issued by the Supreme People’s Court and Supreme People’s Procuratorate clarified the handling of criminal intellectual property cases, including the protection of service marks.

Conclusion

Recent developments in trademark law in China confirm four key trends: stricter regulations on trademark applications, a practical assessment of the market, a diversification of legal remedies, and more deterrent penalties. A regular audit of the Chinese trademark portfolio should therefore cover registered trademarks, pending applications, Chinese translations, digital assets, local partners, and evidence of use.

Dreyfus Law Firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Q&A

Should a Chinese-language version of the trademark be filed?

This is strongly recommended where consumers, distributors or the media use a transliteration or translation of the mark. Otherwise, a third party could appropriate the name used locally.

How can a trademark filed in bad faith be cancelled?

The rights holder may consider opposition proceedings, invalidation proceedings, an action based on prior rights or, depending on the circumstances, a civil action for unfair competition. Evidence of prior dealings and the applicant’s knowledge of the mark will be decisive.

Can a registered trademark be cancelled if it is not used?

Yes. A trademark may be subject to cancellation where it has not been used for three consecutive years without a legitimate reason. The owner must then be able to provide dated and geographically relevant evidence of use directly linked to the goods or services covered.

Which documents should be retained to prove use of a trademark in China?

It is advisable to retain invoices, distribution agreements, customs documents, catalogues, advertisements, screenshots from online sales platforms and photographs of packaging. These materials should show the trademark, the goods concerned, the dates of use and, where possible, the Chinese territory.

Can a company take action against the use of its trademark in a Chinese company name?

Yes. The incorporation of an earlier trademark into a company or trade name may be challenged where it creates a likelihood of confusion or reveals an intention to benefit from the reputation of the rights holder. An unfair competition action may supplement remedies based on trademark law.

This publication is intended for general public guidance and to highest issues. It is not intended to apply to specific circumstances or to constitute legal advice.

Introduction

Trademarks are no longer limited to names or logos. Companies now increasingly seek to protect more innovative elements of their brand identity, such as sounds, colours, animations, shapes, distinctive patterns or even audiovisual sequences. These signs, commonly referred to as non-traditional trademarks, play an increasingly important role in branding strategies, particularly in the luxury, technology and digital sectors.

Although French law now allows such signs to be protected, their registration remains subject to strict conditions, especially in terms of distinctiveness. Recent French and European case law shows that protecting non-traditional trademarks requires a particularly rigorous legal strategy.

Why have non-traditional trademarks become strategic?

Trademark protection is no longer confined to names or logos. In sectors such as luxury goods, fashion, cosmetics, digital services and entertainment, companies are increasingly seeking to protect sensory or visual elements capable of immediately identifying their products or services: a jingle, a colour, an animation, a packaging shape, a pattern or an audiovisual sequence.

The French legal framework applicable to non-traditional trademarks

This development has led French law to progressively recognise non-traditional trademarks, in particular following the reform resulting from Directive (EU) 2015/2436, transposed into French law by the PACTE Law of May 22, 2019.

Article L.711-1 of the French Intellectual Property Code no longer requires a sign to be represented graphically: it is sufficient for the sign to be represented in the register in a manner that is clear and precise. This reform has made it possible to register sound trademarks, motion trademarks, multimedia trademarks and holograms through new accepted formats.

However, this broader approach does not mean that any original sign can automatically be protected. French and European courts remain particularly demanding when assessing the distinctive character of such trademarks.

French law adopts a broad definition of a trademark. Article L.711-1 of the French Intellectual Property Code allows the protection of any sign capable of distinguishing the goods or services of one undertaking from those of its competitors.

The main categories of non-traditional trademarks include:

• sound trademarks;
• colour trademarks;
• three-dimensional trademarks;
• position trademarks;
• pattern trademarks;
• motion trademarks;
• multimedia trademarks;
• holograms.

The main difficulty lies in public perception. Unlike a traditional word trademark, consumers do not spontaneously perceive a colour, a shape or a sound as an indication of commercial origin.

Trademark offices and courts therefore apply particularly strict scrutiny in order to avoid allowing one economic operator to monopolise elements that are necessary for competition or merely decorative.

Sound trademarks: accepted protection, but subject to strict requirements

Sound trademarks have grown significantly with the development of digital platforms, voice assistants, and mobile applications. Today, a strong sonic identity can be just as recognizable as a logo.

Applications are generally filed in the form of an MP3 file. However, not all sounds are eligible for trademark protection. A sound or sequence of sounds that is too short, commonplace, or functional cannot be registered as a trademark.

This was illustrated in the Ardagh Metal Beverage case of July 7, 2021, concerning an application to register a combination of sounds produced when opening a can of carbonated beverage (General Court of the European Union, July 7, 2021, Case T-668/19). In that case, the Court refused registration of a sound consisting of the opening of a can followed by a fizzing sound. It found that consumers would perceive the sound as a functional noise inherent to the product itself, rather than as a trademark.

This decision highlights a fundamental principle: a sound must be perceived as an indication of commercial origin, rather than as a merely technical or customary feature.

By contrast, original jingles or sonic signatures that are used consistently may benefit from effective trademark protection.

Colour trademarks: particularly restricted protection

Colour trademarks are among the most difficult categories of trademarks to protect. Courts generally consider that colours should remain available for use by competitors.

The litigation concerning Christian Louboutin’s application for a semi-figurative trademark representing a red shoe sole is one of the most emblematic examples.

Initially, the Paris Court of Appeal and subsequently the French Supreme Court (Cour de cassation, Commercial Chamber, 30 May 2012, No. 11-20.724) invalidated the trademark on the ground that its representation lacked sufficient precision. Following a new application identifying a specific Pantone shade and clearly defining the position of the colour on the shoe, the courts ultimately recognised the validity of the trademark.

This case shows that a colour may be protected where it is:

• precisely defined;
• applied consistently; and
• perceived by the relevant public as a commercial signature.

Case law also confirms that a colour trademark may lose its distinctive character. In the “Pink Pantone 212” case (Cour de cassation, Commercial Chamber, 10 July 2007, No. 06-15.593), the French Supreme Court revoked the trademark on the ground that the colour had become commonplace in the dairy sector.

Three-dimensional trademarks: the difficulty of protecting a shape

Three-dimensional trademarks protect the shape of a product or its packaging. They are frequently used for perfume bottles, beverage bottles, cosmetic containers and certain food packaging.

However, courts generally consider that consumers perceive a shape as the product itself, rather than as a trademark. The shape must therefore depart significantly from the norms and customs of the sector.

The Guerlain case perfectly illustrates this requirement. In its judgment of July 14, 2021, the General Court of the European Union upheld the protection of Guerlain’s famous lipstick shape, due to its particularly unusual and immediately memorable appearance (General Court, July 14, 2021, Guerlain v EUIPO, T-488/20).

By contrast, shapes dictated by a technical function remain excluded from trademark protection under Article L.711-2 of the French Intellectual Property Code. Even strong reputation cannot overcome this prohibition.

Position, pattern and multimedia trademarks

Position trademarks protect the specific placement of a sign on a product. They are particularly used in the luxury and fashion sectors.

The Louboutin case demonstrates that the validity of such a trademark largely depends on the precision of the filing and the consistency of commercial use.

Pattern trademarks raise similar issues. Courts seek to determine whether the pattern is perceived as a genuine commercial signature or as a mere decorative element.

In the decision regarding the trademark registration for the Burberry tartan, the Paris Court of Appeal recognised the distinctiveness of the pattern due to its specific geometric arrangement (CA Paris, October 26, 2011, n°09/24801). However, the court strictly limited the scope of the monopoly in order to avoid excessive appropriation of checked patterns.

Multimedia and motion trademarks are also growing rapidly with the development of digital interfaces, streaming platforms and audiovisual content. Such signs may now be protected, provided that the animation or audiovisual sequence is perceived as an indicator of commercial origin.

The difficulties of protecting and enforcing non-traditional trademarks

Despite recent developments in European law, olfactory trademarks remain practically impossible to register.

In the Sieckmann decision (Court of Justice of the European Union, December 12, 2002, Case C-273/00), the Court held that a scent could not be represented with sufficient clarity and precision by means of a chemical formula, a written description, or a physical sample.

This position was confirmed in the “ripe strawberry scent” case (General Court of the European Union, October 27, 2005, Case T-305/04), in which the judges considered that olfactory perception remains fundamentally subjective.

In practice, companies therefore tend to rely on other protection mechanisms, such as:

• trade secrets;
• unfair competition;
• copyright;
• contractual strategies.

How to effectively secure rights in non-traditional trademarks

The protection of non-traditional trademarks requires a comprehensive approach combining intellectual property, marketing strategy and litigation anticipation.

Before filing, it is essential to carry out in-depth searches in the INPI, EUIPO and WIPO databases in order to identify any prior rights.

Companies should also prepare evidence of acquired distinctiveness at an early stage, including:

• advertising investments;
• marketing campaigns;
• consumer studies;
• surveys;
• sales figures;
• evidence of intensive use.

In practice, an effective strategy rarely relies on a single trademark. Companies generally combine several complementary tools: word trademarks, designs, copyright, unfair competition and parasitism claims.

Conclusion

The protection of non-traditional trademarks in France is now a major strategic tool for companies seeking to strengthen their brand identity. However, French and European case law shows that these signs remain subject to particularly strict scrutiny, especially regarding distinctiveness.

The Louboutin, Guerlain and Burberry cases show that courts systematically seek to strike a balance between protecting marketing innovation and preserving freedom of competition.

An effective strategy therefore requires a rigorous approach, combining precision in the filing, consistency of use, evidence of distinctiveness and coordination with other intellectual property rights.

Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Q&A

Is the purchase or assignment of a non-traditional trademark subject to specific rules?

Unlike a word trademark, the assignment of a non-traditional trademark, such as a colour, shape or sound, must be accompanied by strict continuity in the conditions of use that enabled the sign to acquire distinctiveness. A substantial change in use by the new owner may weaken the validity of the sign or even expose the trademark to revocation proceedings.

How long does the registration procedure for a non-traditional trademark take?

It is generally longer than a standard trademark filing, as the examination of distinctiveness is more thorough. The procedure may take several months, or even more than a year in the event of objections from the office or opposition proceedings.

What is the cost of filing a non-traditional trademark in France?

The cost varies depending on the type of sign and the complexity of the matter, particularly where evidence of distinctiveness must be prepared. Overall, official filing fees remain comparable to standard trademark filings, although additional costs may arise in the event of examination objections or disputes.

Can a non-traditional trademark lose its protection after registration?

Yes. Like any trademark, a non-traditional trademark may be subject to revocation, in particular for non-use during a continuous period of five years or for becoming generic where the sign becomes the usual name of the product.

Can a company oppose the registration of a non-traditional trademark considered too close to its own?

Yes. Any company holding an earlier right may file an opposition if it considers that the filed sign infringes its rights.

This publication is intended to provide general guidance to the public and to highlight certain issues. It is not intended to apply to specific situations or to constitute legal advice.

INTRODUCTION

EU Trademarks is entering a more demanding phase. With the 2026 edition of the EUIPO Guidelines entering into force on 1 July 2026, businesses can no longer rely on broad, generic or strategically vague wording when protecting brands in the European Union. The message is clear: precision, evidence and consistency are becoming central to EU trade mark strategy. The EUIPO Guidelines are not legislation, but they are the Office’s main practical reference for users, examiners and professional representatives, and they reflect the Office’s current examination practice.

The 2026 EUIPO Guidelines affects how businesses should define, file, defend and enforce EU trade marks.

AI, virtual goods and Web3: broader terms are no longer enough

The EUIPO’s current practice confirms that virtual goods must be specified with clarity and precision. The term “virtual goods” alone is not accepted unless the type of virtual goods is identified, for example “virtual goods, namely virtual clothing.”

This approach is particularly important for businesses active in AI, SaaS, Blockchain, digital assets, gaming, virtual marketplaces and Web3 environments. A filing for “AI software” or “virtual goods” may appear commercially flexible, but it is legally fragile. The EUIPO expects the applicant to describe the function or category of the product or service. A stronger specification would identify the operational use of the technology: “AI-based software for medical image analysis,” “downloadable virtual cosmetics for use in online virtual environments,” or “software for authentication of digital assets using blockchain technology.”

The same logic applies to the comparison of goods and services. The EUIPO Guidelines state that virtual goods are digital content and are generally classified in Class 9, rather than in the class of the corresponding physical goods. The Office also recognises that real-world goods and their virtual equivalents may be perceived similarly in certain circumstances, but the assessment remains case-by-case.

Slogans: distinctiveness must be demonstrable

Advertising slogans remain registrable as EU trade marks, but the decisive issue is whether the slogan functions as a badge of origin rather than as a promotional message. The EUIPO Guidelines recall that slogans should not be subject to stricter criteria than other signs, in line with Court of Justice case law. However, in practice, a slogan made up of ordinary commercial language will be vulnerable where consumers perceive it only as praise, encouragement or a marketing statement.

The new CP17 common practice on the distinctiveness of slogans, adopted in November 2025, forms part of the EU convergence movement on how slogans are assessed.

Businesses should therefore avoid filing slogans in isolation without evidence of brand use, market recognition or a distinctive conceptual element. A slogan such as “Better Future, Better Business” may be too generic for many services. A slogan that contains an unusual structure, paradox, memorable linguistic tension or strong link to a specific brand universe is more likely to survive examination.

Geographical indications: a new risk area for EU trade marks

One of the most significant developments concerns geographical indications, particularly after the creation of an EU-level protection system for craft and industrial products. Regulation (EU) 2023/2411 established protection for geographical indications for craft and industrial products, and from 1 December 2025, producers in and outside the EU can apply for such protection.

This is a major shift. Until recently, geographical indication strategy was mainly associated with agricultural products, wines, spirits and foodstuffs. It now extends to products such as jewellery, textiles, glass, porcelain and furniture.

For trade mark applicants, this creates a new clearance obligation. A sign may be refused not only because it conflicts with an earlier trade mark, but also because it conflicts with a protected geographical indication or evokes a protected origin. The EUIPO Guidelines include specific chapters on trade marks in conflict with geographical indications under Article 7(1)(j) EUTMR and opposition based on geographical indications under Article 8(6) EUTMR.

Practical example: a luxury accessories brand using a regional name to evoke craftsmanship may unintentionally create a risk if that name corresponds to, or strongly recalls, a protected geographical indication. Clearance searches must therefore include trade mark databases, GI registers and sector-specific product terminology.

Opposition, proof of use and bad faith: stronger procedural discipline

The 2026 practice also matters once a litigation begins. In opposition proceedings, proof of use remains a central procedural weapon. EUIPO practice confirms that proof of use must be requested by the applicant and operates as a defence plea in opposition proceedings.

This rule requires a well-thought-out procedural strategy. The initial response to an opposition should not be drafted mechanically. It must allow for an assessment of whether the opponent can actually demonstrate genuine use of its earlier trademark, for the relevant goods and services, in the territory in question, and during the applicable period.

Bad faith is another area of growing importance. The EUIPO Guidelines confirm that bad faith is examined in cancellation proceedings under Article 59(1)(b) EUTMR and is aimed at preventing abusive registrations contrary to honest commercial and business practices.

This is particularly relevant in cases involving defensive filings, repeat filings designed to avoid proof of use, parasitic registrations, trade mark squatting or filings intended to block a competitor rather than identify genuine commercial origin.

EUIPO Boards of Appeal: updated procedural rules

The revised Rules of Procedure of the EUIPO Boards of Appeal do not alter the substantive conditions for trade mark protection, but they have a practical impact on the conduct of appeal proceedings, particularly as regards time limits, suspensions, mediation and costs.

Under the revised rules governing the EUIPO Boards of Appeal, if all prior rights on which an opposition or application for invalidation is based have ceased to exist, the opposition or application for invalidation may be dismissed as unfounded, with consequences regarding costs.

The revised rules also align the practice of the Boards of Appeal with the EUIPO’s first-instance practice for joint requests for extensions and suspensions. Joint requests for extensions may now be granted for a period exceeding six months. The first joint suspension is granted by default for six months, while subsequent requests are granted for 18 months, or for the remaining period up to a maximum of two years per instance, with the possibility of unilateral opt-out.

In practice, these changes underscore the importance of strict management of time limits in appeals. When a time limit is suspended due to mediation, it continues to run once the proceedings resume, without starting over from the beginning. The parties will also need to clearly formalize their agreements on costs, as a simple, unsubstantiated unilateral statement will no longer be sufficient to prevent the Board of Appeal from ruling on costs on its own initiative.

Furthermore, a series of amendments also governs appeals relating to geographical indications protecting craft and industrial products, particularly with regard to procedural, linguistic and representation-related aspects.

What businesses should do

Businesses should adapt their EU trade mark strategy immediately. A robust approach should include:

• Precise drafting of goods and services, especially for AI, software, digital assets and virtual environments.
• Enhanced clearance searches, including EU trade marks, national marks, company names, domain names and geographical indications.
• Evidence planning, including screenshots, dated use, sales figures, advertising materials and consumer-facing brand documentation.
• Slogan assessment, focusing on whether the sign truly identifies commercial origin.

Portfolio audits, to detect overly broad, vulnerable or unused registrations. Anticipate oppositions by assessing the actual use of the prior rights asserted.

Conclusion: EU trade mark law in 2026 rewards preparation

The key development in EU trade mark law is the move from broad protection by default to protection based on precision, evidence and legal coherence. Companies filing in the European Union should no longer ask only whether a sign is available; they should ask whether the filing strategy is sufficiently precise to withstand examination, opposition and future enforcement.

Dreyfus Law Firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

What is the risk of filing for digital activities with traditional wording only?A company that only protects traditional goods or services may find that its registration does not clearly cover new digital uses. This is particularly relevant for virtual goods, online environments, blockchain-related services and AI-based tools.

Can a trade mark strategy now require both physical and virtual protection?Yes. For some sectors, especially fashion, cosmetics, luxury goods, entertainment and retail, it may be useful to protect both physical products and their digital equivalents. However, the wording must be carefully adapted to each category.

Why should geographical indications be checked before filing a trade mark?Because a sign may be refused or challenged if it conflicts with a protected geographical indication. This risk is now broader because EU protection extends to certain craft and industrial products, not only to food, wine or agricultural products.

Why are the new rules on suspension and mediation important?They affect the timing of appeal proceedings. Parties should be careful when requesting suspensions or entering mediation, because the remaining time limits do not restart when proceedings resume. This makes deadline management particularly important.

Why is it important to pay special attention when comparing physical products and virtual goods?

Because virtual goods are not automatically considered similar to their physical equivalents. The analysis will depend, in particular, on the industry in question, market practices, and public perception.

In the highly competitive world of wine production and distribution, standing out often hinges on building a distinctive identity—from the name of your winery or vineyard to the label on each bottle. In the United States, securing a trademark for your wine brand is one of the most effective ways to protect this identity. However, navigating the trademark system can be challenging, particularly when dealing with additional regulations related to wine labeling and geographical indications.

This article provides a detailed look at the trademark registration process for wines in the U.S., highlights frequent legal and regulatory pitfalls, and offers practical tips to safeguard your brand from costly conflicts. Whether you produce a Napa Valley Cabernet Sauvignon or a Willamette Valley Pinot Noir, a robust trademark strategy is vital for long-term success.

Why protect your wine brand or winery name?

Legal imperatives

• Exclusive right to use the mark: By registering your trademark with the United States Patent and Trademark Office (USPTO), you gain nationwide priority over the use of the mark for the goods and services specified in your application.
• Litigation leverage: Should a competitor attempt to adopt a similar name or label, holding a federal trademark registration bolsters your position in court. It allows you to potentially recover damages and attorneys’ fees, and it offers a legal presumption of validity and ownership of the mark throughout the U.S.
• Protecting an intangible asset: Your brand is intellectual property that can be licensed, sold, or used as a valuable business asset. According to various industry reports, strong brand recognition can increase a winery’s overall valuation and attract investors, distributors, or joint-venture partners.

Economic stakes

• Credibility for buyers and importers: Wine buyers—including restaurants, retailers, and wholesalers—gravitate toward well-branded products. A registered trademark signals professionalism and provides assurance that you take your business seriously.
• Investor appeal: Private equity and other investors in the wine sector look favorably on wineries and wine brands that have protected their names. This is because a clear trademark strategy mitigates the risk of future legal complications.
• Facilitating international expansion: With the U.S. as one of the largest wine-consuming nations in the world, many producers also aim to export. Having a federal registration can be a strong basis for filing in other countries through the Madrid System managed by the World Intellectual Property Organization (WIPO).

(Stat Note: According to the Wine Institute (wineinstitute.org), U.S. wine sales—domestic and imports—have consistently exceeded 400 million cases per year, reflecting robust demand and heightened competition in branding.)

Marketing and brand equity

• Differentiating your AVA or winery story: American Viticultural Areas (AVAs) such as Napa Valley, Sonoma County, Willamette Valley, and Finger Lakes are integral to a wine’s identity. A trademark allows you to highlight unique qualities while avoiding consumer confusion with other wineries in the same region.
• Long-term consumer loyalty: Once consumers come to trust a wine brand, they tend to become repeat buyers, seeking out new vintages or related labels under the same trademark.
• Consistent branding across channels: A trademark gives you the foundation to unify your online presence, labeling, packaging, and promotional materials under a single, well-protected identity.

Trademark law and regulatory bodies in the U.S.

The USPTO

The United States Patent and Trademark Office (USPTO) is the primary federal agency for trademark registration. Once granted, a federal trademark registration offers protection across all 50 states and U.S. territories.

• Term of protection: Initially valid for 10 years and renewable indefinitely, provided you file timely maintenance documents and demonstrate continued use.
• Filing method: Online submission through the Trademark Electronic Application System (TEAS) is the standard.

State trademarks

In addition to federal registration, some wine producers opt for state-level trademarks (e.g., California Secretary of State for wineries in Napa). However, these provide limited geographic protection. For wineries hoping to sell across state lines, a USPTO registration is more robust.

TTB labeling regulations

The Alcohol and Tobacco Tax and Trade Bureau (TTB) (ttb.gov) oversees wine labeling and advertising. While TTB approval is separate from trademark registration, certain TTB regulations intersect with trademark considerations:

• Brand name approval: The TTB might reject a label if it includes misleading geographic claims or references.
• Appellation of Origin: Using names like “Napa Valley” or “Sonoma Coast” requires adherence to specific TTB and state-level rules regarding the percentage of grapes sourced from those regions.
• Misleading terms: Terms that falsely imply certain winemaking practices or locations can run afoul of both TTB rules and trademark law.

Key steps for registering a wine trademark

Conducting a comprehensive clearance search

Before filing an application with the USPTO, it is crucial to perform a trademark clearance search.

• USPTO Database: Search the TESS (Trademark Electronic Search System) to check for identical or similar marks.
• Common Law Databases: Not all trademarks are registered. Many wineries rely on common law rights, so also search corporate names, domain names, and wine competition listings.
• International Databases: If you plan to export, consider searching the databases of the EUIPO (European Union Intellectual Property Office) and the WIPO (World Intellectual Property Organization).

(Industry Stat: The USPTO receives tens of thousands of trademark applications per month across all industries. In the wine and spirits sector, the volume has been steadily increasing, reflecting the rise of boutique and craft producers.)

Classification and identifying goods/services

The USPTO uses International Classes under the Nice Classification System. Wine typically falls under:

• Class 33: Alcoholic beverages (except beers).
• Potential additional classes: If you provide wine club subscriptions (Class 35 for retail services) or tasting events (Class 41 for entertainment services), ensure they are included.

Precision in describing goods and services is crucial. An overly broad description might lead to either refusal or vulnerability to partial cancellation later, while an overly narrow description might limit brand expansion.

Filing the application

This step involves submitting a TEAS form via uspto.gov. Key elements of the application include:

• Owner details: Whether you’re filing under an individual or corporate entity name.
• Basis for filing: Use-based (Section 1(a)) if already in commerce, or intent-to-use (Section 1(b)) if you plan to commercialize soon.
• Specimen (if applicable): If filing on a use basis, you must provide a label, packaging, or marketing materials showing how the mark is used in commerce.

Examination, publication, and opposition

1. Initial review: A USPTO examining attorney checks for compliance with procedural and substantive requirements.
2. Office actions: The examining attorney might issue an office action requesting clarifications, disclaimers, or refusals based on confusing similarity to an existing mark.
3. Publication in the Official Gazette: Upon acceptance, the mark is published. Any party who believes they would be harmed by the registration has 30 days to file an opposition before the Trademark Trial and Appeal Board (TTAB).

Registration and maintenance

If unopposed (or if you win an opposition proceeding), the USPTO issues a Certificate of Registration. The trademark is initially valid for 10 years, with a Section 8 Declaration of continued use due between the 5th and 6th year, and subsequent renewals required every 10 years.

Common pitfalls in wine trademark filings

Geographic misdescriptions and AVA conflicts

Using a protected AVA name like “Napa Valley” or “Santa Barbara County” without meeting the TTB’s sourcing requirements can trigger:

• Refusal by the USPTO: On grounds of deceptively misdescriptive or primarily geographically descriptive if you do not meet TTB criteria.
• Challenges from regional associations: Groups like the Napa Valley Vintners or the Oregon Wine Board vigorously defend their geographic designations.

Likelihood of confusion with existing marks

A slight variation in spelling may not be enough to avoid confusing similarity.

• Example: “Cascade Hills Winery” vs. “Cascade Hill Vineyards” could be considered too close in the eyes of the USPTO if both produce wine in overlapping markets.
• Legal consequences: If your mark is deemed confusingly similar, it can lead to refusal during examination or, worse, an opposition proceeding by the existing mark owner.

Improper use of foreign terms

Wine producers sometimes use French, Italian, or Spanish terms to evoke Old World charm. However, terms that are generic or descriptive in a foreign language can face refusal under the doctrine of foreign equivalents.

• Example: Using “Château” for a U.S. winery might raise descriptive issues unless the overall mark has distinctiveness.

Timing issues and lack of monitoring

• Late filing: Launching a brand in multiple states before filing can allow competitors to preempt your rights.
• No watch service: Failing to monitor the USPTO Gazette or other platforms means missing the chance to oppose similar wine marks within the TTAB’s strict deadlines.

Case studies, statistics, and a hypothetical client

Case study: Green Valley Vineyards

Green Valley Vineyards wanted to expand distribution throughout the U.S. While the owners had used “Green Valley” informally for years, they discovered mid-expansion that a California winery called “Greenvalley Estate” was already registered with the USPTO.

• Result: A TTAB opposition forced Green Valley Vineyards to rebrand to “GV Vineyards” and revise all their labeling and marketing materials—a costly endeavor in the middle of national expansion.

U.S. wine trademark data

A 2025 USPTO annual report noted a 15% year-over-year increase in wine-related trademark applications, highlighting the explosive growth of both boutique wineries and private-label ventures in the U.S. market. This surge correlates with the rise in e-commerce wine sales and direct-to-consumer shipping laws liberalizing in several states.

Fictional client example: Autumn Harvest Wines

Autumn Harvest Wines, based in the Finger Lakes region of New York, decided to register a new brand for their Riesling line—“Autumn Mist.” Through a comprehensive clearance search, they discovered a potential conflict with an Oregon-based brewer that had “Autumn’s Mist Ale.” Their attorney advised minor changes in the label design and the goods description to reduce confusion.

• Outcome: The brand launched smoothly under a slightly altered name, “Autumn Mist Riesling,” circumventing likely opposition from the brewer.

Practical tips for a successful wine trademark strategy

Consult an attorney or IP specialist

Wine law intersects with traditional trademark law, TTB regulations, AVA restrictions, and occasionally import-export rules. An experienced intellectual property attorney or specialized consultant can:

• Conduct a thorough clearance search, including common law and international resources.
• Advise on naming conventions, disclaimers, and label design to comply with TTB and USPTO requirements.
• Manage the entire trademark application process, from filing through potential TTAB proceedings.

Plan for international expansion

Many U.S. wineries eventually reach beyond domestic markets. A federal trademark registration can serve as a basis for Madrid System applications, extending coverage into key wine-consuming nations like Canada, the UK, China, or Japan.

• Avoid brand squatting: Certain countries see opportunistic registrations by third parties who anticipate the future arrival of an American brand, then demand high fees to release the name.
• Consult local counsel: In addition to WIPO filings, each country may have local regulations, especially concerning geographical indications or local labeling laws.

Implement a trademark watch and enforcement program

• USPTO Gazette monitoring: Subscribe to a watch service to track newly published marks in wine, spirits, or related categories.
• Active enforcement: Sending cease-and-desist letters or filing oppositions at the TTAB can deter infringers and demonstrate your commitment to brand protection.
• Periodic audits: Regularly review your own label usage, domain names, and expansions into new products (e.g., wine spritzers, wine-based cocktails) to update your trademark portfolio.

Conclusion

Trademark registration is more than just a legal formality—it is a cornerstone of your brand’s identity, reputation, and long-term market success. In an industry as storied and dynamic as wine, a strong trademark not only shields you from imitators but also fortifies your brand story in the minds of consumers.

By proactively registering and maintaining your trademark, you signal quality, distinction, and credibility. For producers whose goal is to stand out in the crowded aisles of local retail shops or in high-end restaurants nationwide, trademark protection is a non-negotiable step in building a legacy.

Why work with Dreyfus?

• Recognized Expertise: Our team has over 20 years of experience in intellectual property and extensive knowledge of wine law.
• Global Network: We assist clients with international filing strategies, ensuring worldwide protection for brands poised for export.
• Customized Approach: We thoroughly analyze your situation to develop a specialized trademark strategy that fits your unique goals, whether you’re a boutique winery in Oregon or a large-scale producer in California.

The cabinet Dreyfus et Associés is in partnership with a worldwide network of lawyers specialized in Intellectual Property.

Do you need help securing your wine brand?

Contact us to develop a comprehensive plan and safeguard your wine label or winery name for years to come.

• Subscribe to our newsletter to stay informed of the latest legal developments in wine and intellectual property.
• Download our practical guide on “10 Critical Mistakes to Avoid When Trademarking a Wine in the U.S.” (including case studies, expert tips, and a step-by-step checklist).

Useful External Links for Further Reading

• USPTO: uspto.gov
• TTB: ttb.gov
• Wine Institute: wineinstitute.org
• WIPO: wipo.int

Together, let’s protect and elevate your winemaking heritage.