Revoked trademark held to have been infringed


In an April 9 2015 decision, Section 15 of the Barcelona Court of Appeal partially upheld an appeal, declaring that the plaintiff's trademark should be cancelled for lack of use and that the defendant's trademark was invalid. However, it also found that the plaintiff's revoked trademark had been infringed by the defendant.

Britanica Investimentos E Consultadoria LDA owned the LIBERTO trademark for clothes in Class 25 of the Nice Classification. Carrson Mod SL owned a newer trademark that protected the same LIBERTO sign in Class 25, and marketed clothing under this trademark.

Britanica filed a lawsuit against Carrson before the Barcelona Commercial Court No 8, claiming that:

  • the defendant's LIBERTO trademark was invalid because of the incompatibility with its earlier trademark (double identity under Article 6.1(a) of the Trademark Act); and
  • the earlier LIBERTO trademark was infringed due to the defendant's use of the LIBERTO mark to market products in Class 25.

Britanica sought cessation of the infringing acts and compensation for damages.

In its defence Carrson:

  • argued that it had behaved in good faith based on the assurance that Britanica's trademark was to be revoked for lack of use; and
  • filed a counterclaim seeking revocation of Britanica's trademark in Class 25 based on lack of use of the trademark for clothing.

The first instance court dismissed Carrson's counterclaim and upheld Britanica's claim, considering that:

  • Carrson's use of the LIBERTO mark infringed Britanica's trademark; and
  • Carrson's LIBERTO trademark was invalid due to its incompatibility with Britanica's earlier trademark.

The court ordered Carrson to cease its use of the LIBERTO mark and to pay damages.

Carrson appealed on the following grounds:

  • Use of Britanica's trademark during the previous five years was proven only for footwear and headgear, and not for clothing (the goods for which the trademark was registered);
  • Footwear and headgear could not be considered to be clothing, even if the goods were in the same class; and
  • No damage had been caused.

The Barcelona Court of Appeal partially upheld Carrson's appeal, as follows:

  • The court revoked Britanica's LIBERTO trademark due to lack of use for the relevant goods during the pertinent period. The period to be taken into account in such cases is the five-year period before the suit is filed. Thus, in this case, use carried out before September 2 2007 was irrelevant. Britanica's trademark was registered for clothing in Class 25 and the evidence of use related to different goods. The court declared that Britanica's use of the mark for footwear and headgear (although these goods were also in Class 25) could not be taken into account as real and effective use of the trademark for clothing, following the Court of Justice of the European Union's IP TRANSLATOR decision.
  • The court declared invalid Carrson's LIBERTO trademark because it fells under the double identity prohibition set out in Article 6.1(a) of the Trademark Act. After the court declared the revocation of Britanica's trademark, it analysed whether that mark could be revoked at the time when Carrson applied for its mark. It had been proven that, in 2007, Carrson had bought stock from a licensee; thus, Britanica's trademark was still in use when Carrson applied for its mark. Therefore, it fell under the double identity prohibition.
  • Regarding infringement of Britanica's LIBERTO trademark, the court upheld the first instance decision. It stated that the revocation of a trademark is not incompatible with its infringement if the infringing acts were carried out during the period of validity of the trademark. Thus, the court also upheld the order to pay damages.
  • The court overruled the order that Carrson cease use of the LIBERTO mark. It considered such order to be nonsensical as the cessation of use can take place only after the ruling and revocation of the trademark removes the rights holder's rights in the mark.

Julia Carretero, Grau & Angulo, Barcelona

Get unlimited access to all WTR content