U-turn in Spanish doctrine: infringement no longer tied to invalidity of later mark


Both Spanish and Community trademark law confer on trademark owners the exclusive right to use their marks in trade (jus utendi). However, the interpretation of this principle by the Spanish courts overtly differed from the case law and doctrine on the subject in several other EU countries, and even from the doctrine of Spain's own Community Trademark Court.

The judgment handed down by the Spanish Supreme Court on October 14 2014 in the DENSO case has substantially changed the existing doctrine. Pursuant to the Supreme Court's ruling, where the holder of an earlier registered trademark files an action for infringement against the owner of a later registered trademark, it will no longer have to seek to invalidate the later mark in separate proceedings, either before or in conjunction with the infringement action.

The history of the Supreme Court's doctrine as it relates to the positive right of use that a trademark confers on its owner will help explain the scope of the Supreme Court's ruling in the DENSO case.

At first, the Supreme Court's position was that the holder of a later mark could not be sued for infringement of an earlier trademark until the registration protecting the holder of the later mark's jus utendi had been ruled to be invalid, except where the later trademark was used in a manner that significantly altered the distinctive character of the trademark as registered.

Subsequently, beginning with its judgment of April 4 2012 in the DONNA KARAN case, the Supreme Court softened its position somewhat, allowing the right of use conferred by a trademark to be bypassed, provided that invalidity proceedings were brought against the later trademark concomitantly with infringement proceedings. Thus, the invalidity of the trademark registration in these cases was held to have an ex tunc effect - that is, the later trademark was deemed never to have had effect and, consequently, never to have conferred any right of use.

The new approach set out in the judgment of October 14 2014 marks the beginning of the end for spurious trademarks as effective instruments in Spain. The Supreme Court noted, directly and without reservation, that the previous case law needed to be amended "to allow the holder of a trademark registered in Spain to prevent a third party from using a sign identical or similar to its mark in trade without first having to obtain a declaration of invalidity, provided that the objectionable sign has been registered later".

By way of justification for this change in case law, the Supreme Court referred, in respect of Community trademarks, to the judgment of the Court of Justice of the European Union in Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza (Case C-561/11). Further, it cited the need to bring Spanish law into line with Community law and to set up a legal framework where the scope of the jus prohibendi and jus utendi conferred by Spanish and Community trademarks are the same.

Jesús Gómez Montero, Elzaburu, Madrid

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