Unfair competition law should not be invoked to resolve trademark disputes

In the dispute between Joma Sport SA and Cadena Joma's SL over the use of the JOMA mark, the Spanish Supreme Court has again considered the relationship between trademark rights and unfair competition law (Case 409/2005, October 7 2009).
Cadena manufactures and sells corporate uniforms under the mark JOMA’s UNIFORMES. Joma Sport brought an action for trademark infringement and unfair competition against Cadena before the Court of First Instance of Barcelona based on its earlier Spanish trademarks JOMA, which are registered for sports footwear and clothing.
Joma Sport’s claim was upheld by the court, which found that trademark infringement had occurred. However, the decision was subsequently reversed by the Appellate Court of Barcelona. Surprisingly, the court considered that the goods covered by the earlier JOMA marks were sufficiently different from those designated by the JOMA’s UNIFORMES mark to avoid a likelihood of confusion on the part of the public.
Joma Sport requested that the Supreme Court set aside the judgment of the Appellate Court. The Supreme Court found in favour of Joma Sport and upheld the initial decision of the Court of First Instance of Barcelona. It also ordered that Cadena cease using the JOMA mark and change its company name.
The interest of the decision lies in the way in which the Supreme Court dealt with the claims raised under the Unfair Competition Law (3/91). The court confirmed that the unfair competition legislation should not be invoked to resolve standard trademark infringement disputes. This was, until recently, standard procedure for claimants in trademark infringement proceedings.
This judgment thus confirms recent case law in which it was held that in cases involving only trademark infringement issues, claimants should not consolidate trademark and unfair competition claims. As clarified by the Supreme Court, the Unfair Competition Law does not substitute the Trademarks Law, but rather complements it.
Celia Sueiras, Garrigues, Madrid

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