The Barcelona Court of Appeal recently recognised the well-known nature of the DINOSAURUS trademark owned by Galletas Artiach and its infringement by La Flor Burgalesa for using the GALLESAUROS sign applied to biscuits. This article provides a summary of the legal basis of the Barcelona Court of Appeal's judgment.
The Supreme Court recently declared a Madrid Court of Appeal judgment to be final, confirming the cancellation of Carrefour's CONTINENTE trademarks and recognising Modelo's right to register and use its CONTINENTE mark in Spain. The decision supports the previous case law criterion that protection cannot be sought for trademarks which are no longer used on the market.
Registered trademarks that are cancelled due to non-use in the market should not prevent rights holders of a subsequently registered mark from using it in the same market, as this is not considered to be an infringement of IP rights or an act of unfair competition. In a recent case, the Madrid Court of Appeal recognised a company's right to use its registered CONTINENTE trademark after confirming the cancellation of CONTINENTE trademarks that had previously been registered in the same sector.
The Supreme Court has dismissed La Vallesana and Deva's extraordinary appeals for procedural infringement and cassation against a Barcelona Court of Appeal judgment which dismissed the invalidity of Cointreau's International Trademark 553.499, as claimed by the two companies. The appellants claimed that Cointreau's 'naked bottle' mark lacked distinctiveness and had not been used.
Barcelona Commercial Court No 1 has upheld a lawsuit filed by Marina Calafat SL against Calafat SA for the invalidation of trademarks and dismissed the infringement counterclaim for infringement brought by Calafat. The court found that Calafat had registered the marks in the knowledge that the sign was used by Marina Calafat and with the purpose of obstructing that use.
In proceedings brought by Cointreau SA against several parties, the Barcelona Court of Appeal declared that the defendants had taken unfair advantage of the well-known character of Cointreau's international three-dimensional registered trademark, which protects the shape of its liqueur bottle without any other elements (a so-called 'naked bottle'). In doing so, the court revoked the first instance judgment.
A Barcelona commercial court recently issued a non-final judgment, dismissing a claim of IP rights infringement, invalidity of trademarks and compensation for damages filed by Pasozebra Producciones SL and Daniel Díez Rodríguez against Nutrexpa SA in relation to animated character 'Benito'. The dispute arose from a transfer of exploitation rights between entities during a change in ownership.
The General Court recently ruled on the registration of the Community word mark ESPETEC. This decison was on appeal from the Office for Harmonisation in the Internal Market, which had ruled that the Catalan word espetec was descriptive and devoid of distinctiveness, and therefore could not be registered as a word mark. The General Court confirmed this and denied the application.
The Alicante Court of Appeal (acting as a Community trademark court) has nullified Leku-Ona's DUNFLEX trademark, declaring that it had been applied for in bad faith. It further held that the defendant's use of the DUNFLEX mark prior to the declaration of nullity constituted infringement of the DUNLOP trademark.
In a recent decision the Madrid Court of Appeal upheld a lower court's finding that Secret Spot had infringed Sao Paulo Alpargatas's HAVAIANAS trademarks, but revoked a declaration of nullity in relation to Fashion Import's BAHIANA trademark. In so finding, the appeal court disagreed with criteria set down by the Opposition Division of the Office for Harmonisation in the Internal Market in an earlier case.
In a recent judgment the Barcelona Court of Appeal denied the right to collect the private copying levy when digital reproduction equipment, devices and media suitable for recording are purchased by companies and professionals. Sociedad General de Autores y Editores had filed a suit against the owner of an establishment which markets digital storage equipment claiming payment of the private copying levy.
A recent Supreme Court judgment has confirmed earlier decisions in unfair competition proceedings initiated by Ariete SpA and Ariete Hispania SL against Comelec Import-Export SL. The court held that Comelec's importing and selling of juice makers which were slavish copies of the plaintiffs' products (which the plaintiffs first introduced into the Spanish market) constituted unfair competition.
A Madrid commercial court has ruled that in order to find that there has been slavish imitation of a product, it must be shown both that (i) the original product has a unique, distinctive competitive feature, and (ii) any likelihood of association with the original product or exploitation of its reputation could have been avoided.
A recent Burgos Court of Appeal decision constitutes a precedent on two levels. First, it is the first appellate court decision that expressly takes into consideration the prosecution history of a chemical process patent to construe the patent claims. Second, the decision sets out what should be understood as an 'offer' of the patented product in order for it to infringe the patent.