Trademarks and Technology: The Limits of the Principle of Specialization as Applied to the Digital Ecosystem

September 14, 2026

On September 4, 2026, three separate opinions were issued by the Twentieth Collegiate Administrative Court of the First Circuit regarding the principle of trademark specialty as applied to technology and digital markets. All together, they hold that the rapid evolution of the digital ecosystem precludes a broad interpretation for trademark registrations that would automatically include categories of goods and services that emerge subsequently.

The key interpretive points:

First, opinion 2032596 establishes that new digital categories will not automatically be covered by prior registrations. Broad descriptions must be interpreted in accordance with the context of the existing technology at the time of registration, without being converted into open-ended coverage of future innovations. Second, opinion 2032591 holds that the complementary nature between software and hardware cannot be presumed merely because of their compatibility or technical interaction—the necessary relationships of economic and commercial dependence must be established. Third, legal opinion 2032590 requires a dynamic application of the principle of specialty; similarity must be analyzed based on the nature, function, and commercial reality of the products, not merely on shared uses or their technical interaction.

These criteria limit the potential retroactive expansion of historical registrations and raise the burden of proof for invalidity actions and infringement proceedings that are based on the complementarity of technological products. Mere functional convergence is not enough to demonstrate similarity or a likelihood of confusion. Meanwhile, the possibility of coexistence for distinctive signs is strengthened because the goods could belong to different commercial categories within the digital market.

We recommend trademark holders to review and update their registration protection strategies in the technology and digital sectors based on these opinions. Obtaining specific registrations for new categories of goods and services is advised, rather than relying on broad interpretations of historical coverage. Concrete evidence regarding marketing channels, consumers, function, nature, and economic dependence of the goods in question should be established to uphold the arguments presented during litigations and disputes.