BALDER Welcomes EUIPO Decision in Favor of Mediaset

The Board of Appeal of the European Union Intellectual Property Office (EUIPO) has ruled in favor of Mediaset / Reti Televisive Italiane (RTI), upholding the invalidity of the PASAPALABRA European Union trademark registration owned by ITV Studios on the grounds that the application was filed in bad faith.

BALDER represented Mediaset / RTI in these proceedings, which concern one of the most recognizable names in Spanish television and have significant implications for trademark protection in the context of prior commercial relationships.

In its decision dated October 13, 2026, the Board of Appeal dismissed ITV Studios’ appeal and upheld the EUIPO Cancellation Division’s earlier decision, which had already declared the registration invalid in September 2025.

Background of the Dispute

The dispute dates back to the late 1990s and the exploitation in Italy of the British television format The Alphabet Game.

Against this backdrop, Reti Televisive Italiane began broadcasting Passaparola in 1999. The name was created and developed by RTI specifically for the Italian market, where it achieved considerable recognition.

In 2009, ITV Studios subsequently applied to register PASAPALABRA as a European Union trademark, thereby seeking protection throughout the EU, including Italy.

RTI filed an application for a declaration of invalidity, arguing that the trademark had been registered in bad faith.

EUIPO Upholds the Finding of Bad Faith

The Board of Appeal has now confirmed RTI’s position.

In its decision, the EUIPO found that ITV Studios was aware of RTI’s prior use of PASSAPAROLA and of the origin of the name within the parties’ existing commercial relationship.

The Board concluded that the registration sought to monopolize the PASAPALABRA designation throughout the European Union, including Italy, and to capitalize on the recognition that the PASSAPAROLA brand had achieved in that market.

The EUIPO therefore found that ITV Studios’ conduct was inconsistent with honest commercial practices and upheld the invalidity of the trademark registration on grounds of bad faith.

A Case of Particular Significance in Spain

The decision is especially significant given the widespread recognition of the PASAPALABRA brand in Spain.

For decades, the name has been associated with one of the country’s best-known television game shows and continues to be used in broadcasts on Spanish television.

The EU proceedings also form part of a broader series of trademark applications, oppositions, and disputes in Spain and across the European Union, making this one of the most significant trademark conflicts in the audiovisual sector in recent years.

Implications Beyond the Audiovisual Industry

The legal significance of this case extends well beyond television.

The decision highlights the importance of the commercial relationship between the parties prior to the filing of a trademark application when assessing whether that application was made in bad faith.

Among other factors, the EUIPO may consider:

• The applicant’s prior knowledge of the sign;
• The origin and development of the designation;
• The contractual or commercial relationship between the parties;
• The economic and commercial rationale for seeking registration;
• The territorial scope of the protection sought; and
• The intention to obtain an unjustified exclusive position at the expense of a former business partner.

These considerations are particularly relevant to disputes involving licensors and licensees, distributors, agents, business partners, franchisors, joint ventures, and former collaborators.

The case also underscores the importance of aligning contractual arrangements with a comprehensive trademark protection strategy from the outset of any international commercial relationship.

BALDER Represents Mediaset / RTI

BALDER represented Mediaset / Reti Televisive Italiane in the proceedings before the EUIPO, which have resulted in the Board of Appeal upholding the invalidity of the PASAPALABRA European Union trademark registration on grounds of bad faith.

The decision remains subject to appeal before the General Court of the European Union.

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