Nike gains ground in long-running NIKE dispute

Spain

In Nike International Ltd v Comercial Ibérica de Exclusivas Deportivas SA, the First Chamber of the Spanish Constitutional Court has overturned a decision of the Supreme Court that had ordered the cancellation of Nike International Ltd's and American Nike SA's (Nike) NIKE marks on the grounds that they infringed Comercial Ibérica de Exclusivas Deportivas SA's (Cidesport) prior registered NIKE mark. The Constitutional Court held that the decision violated various aspects of the Spanish Constitution.

The ruling forms part of a long-running dispute between Nike and Cidesport relating to Cidesport's registration of a figurative trademark featuring the word 'Nike'. In 1993, Cidesport brought legal action against Nike on the grounds that its use of its NIKE marks infringed Cidesport's rights in its prior registered NIKE figurative mark. In response, Nike filed a cancellation action against Cidesport's mark. The Ninth Court of First Instance of Barcelona ruled in favour of Nike and ordered the cancellation of Cidesport's mark on the grounds of non-use. This decision was upheld by the Barcelona Court of Appeal in 1995. Cidesport then appealed to the Supreme Court.

The Civil Chamber of the Supreme Court agreed with Cidesport and overturned the earlier ruling. It declared that Cidesport's NIKE registration was enforceable and ordered the cancellation of Nike's marks on the basis that they infringed Cidesport's prior registered mark. Nike's appeal before the full Supreme Court was rejected and it appealed again, this time to the Constitutional Court. It argued, among other things, that (i) the Supreme Court's ruling violated its constitutional rights to equality in the application of the law and effective judicial protection pursuant to Articles 14 and 24(1) of the Constitution, and (ii) the Supreme Court had failed to consider the effect of the statute of limitations relating to trademark infringement actions in Article 39 of the Trademark Law 1988.

The Constitutional Court allowed Nike's appeal and ordered the Supreme Court to reconsider the case. However, three of the judges noted that, in their opinion, the only aspect of the Supreme Court's decision that was not in line with constitutional principles was its failure to consider Article 39 of the Trademark Law.

Pilar López, Grau Baylos & Angulo, Barcelona

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