AGILER cancellation case heard by Alicante court

The Alicante Community Trademark Court has issued a judgment in a trademark cancellation and infringement case, which raised various issues of interest (Case 391/2006, March 12 2007).

The plaintiff, Agilent Technologies Inc, brought a cancellation action against Leodata SL's mark AGILER registered in Spain in Class 9 of the Nice Classification. Agilent based its action on its prior Community trademark rights in AGILENT registered for similar products in Class 9. Agilent also filed an infringement action seeking:

• to enjoin Leodata from using the AGILER mark and the domain name 'agiler.es';
  
  
• the removal from the market of any material bearing the AGILER mark; and
  
  
• indemnity for damages.

Before the proceedings at the Alicante court began, Leodata opposed before the Office for Harmonization in the Internal Market (OHIM) a second AGILENT Community trademark which Agilent sought to register in Class 9. Leodata's opposition was based on its alleged prior rights in the Spanish trademark AGILER.

Examining Agilent's cancellation claim, the court considered that the AGILER mark was likely to cause confusion with the AGILENT mark. The court next assessed the issues of bad faith and damages, which are linked under the Spanish Trademark Law in cancellation actions.

With reference to bad faith, the court noted the contradiction, on the one hand, between Leodata's plea in its opposition action before OHIM that there was a risk of confusion, and its defence to the Alicante court action that there was no such risk. The court added that Leodata's registration of the domain name 'agiler.es' after filing the opposition before OHIM could also be construed as evidence of bad faith. The court added that the existence of bad faith determines whether the plaintiff is entitled to be indemnified for damages.

Turning to the question of damages, the court observed that Agilent had invoked Section 43.5 of the Spanish Trademark Act of 2001. This section establishes the trademark owner's automatic right to be indemnified with 1% of the infringer's turnover. This right operates even without evidence of actual damage. In the proceedings at hand, Agilent had applied for 1% of the turnover from the annual accounts of Leodata for three years; the implication being that all of Leodata's commercial activity involved use of the AGILER mark. As Leodata did not challenge this assertion the court ordered the payment of damages based entirely on Agilent's argument.

One other point worth highlighting is the timeframe of the decision. The claim was filed in November 2006 and the judgment was issued in March 2007, which means that the judicial proceedings lasted less than six months in the first instance. This was due to the fact that the case was resolved without the need to go to full trial. The Spanish Law on Civil Procedure allows the possibility of a quick decision after the preliminary hearing. This option is available if the judge considers, after hearing the arguments, that the resolution of the case depends only on legal issues or if the only proofs admitted are documentary proofs.

The judgment has been appealed by Leodata.

Pedro Merino, Grau Baylos & Angulo, Madrid