On the power of owners of Spanish trademarks to file infringement action against owners of later identical or similar trademarks
It was only a matter of time before the Spanish Supreme Court decided to follow the doctrine established, first in the field of industrial designs and then in trademarks, by the Court of Justice of the European Union (CJEU), according to which the exclusive right of the owner of a prior trademark (or design) to prevent all third parties from using, in the course of trade, signs identical or similar to its own mark extends to the third party owners of later rights, without the need to obtain a prior declaration of invalidity of such trademark or industrial design right.
It should be reminded that the CJEU provided the above interpretive twist in the judgments issued on 16 February 2012, C-488/10 «Celaya Emparanza» – handled by this law firm – and on 21 February 2013, C-561/11 «Fédération Cynologique Internationale», in the field of Community design and trademark respectively.
Despite a long tradition of the Spanish Courts to reject trademark infringement claims against third party owners of later trademarks, with the exception of those claims that were accompanied by a simultaneous invalidity request, the Spanish Supreme Court decided to modify the jurisprudence when ruling on the cassation appeal lodged against the decision of the Appeal Court in Barcelona by the German company Denso Holding GmbH & Co., owner of a series of International trademarks with effects in Spain. The decision was aimed at avoiding that the protection of the owners of prior rights is different from one Member State to another, contrary to the letter and spirit of the Directive 2008/98/CE of the European Parliament and of the Council of 22 October 2008, according to which national legislations of the Member States shall be interpreted.
Referring to the Judgment of the CJEU issued in the Case C-561/11 «Fédération Cynologique Internationale», the Supreme Court decided in favor of the appellant and admitted that the owner of a trademark protected in Spain is entitled to prevent all third parties from using, in the course of trade, identical or similar signs, without the need to obtain a prior declaration of invalidity, like in the case of patents and industrial designs.
On the other hand, the interpretation of the Court on the circumstances that determine the existence or not of the consent of the owner of a prior trademark to the use of a later identical or similar sign is also worth mentioning.
In particular, the Court understood that if one company is obliged, pursuant to the statutes, to follow the instructions of another company with which it maintain a close commercial relation and which granted the latter a license to manufacture its products in another territory, it means that it is subject to a conditional consent that disappears as soon as the relation between the two companies comes to an end as a result of the change in the shareholdings, which is the reason why the position of the dependent company is considered to be left without any support.
The link to the commented Ruling no. 5089/2014 of 14 October 2014 of the Civil Chamber, Section 1 of the Supreme Court (RJ/2014/6128) can be found in CENDOJ (ECLI:ES:TS:2014:5089).
Related Posts:
- The Donna Karan Case or “How the Spanish Supreme Court re-construes its doctrine on damages in cases of infringement involving previously valid registered trademarks”
- Four Recent Judgments of the Spanish Supreme Court in the Field of Trademarks (II): “Masaltos I”
- The use of trademarks as adwords cannot be considered as taking unfair advantage from a third party´s reputation
- Four Recent Judgments of the Spanish Supreme Court in the Field of Trademarks (I): “Cointreau”