In a recent judgment, the Barcelona Court of Appeal confirmed the judgment of Barcelona Commercial Court 6 which dismissed a trademark infringement action brought against Hilfiger Stores Spain (HSS), SL. The appeal court partially upheld HSS's counterclaim against the plaintiff's trademark – which was registered for goods in Class 25 (ie, clothing, footwear and hats) – for cancellation on grounds of non-use. The trademark was revoked for clothing and footwear but remains registered for hats.
The Alicante Commercial Court 1, acting as the European Union Trademark (EUTM) Court 1, recently granted an ex parte preliminary injunction, which had been filed by a German association for infringement of its EUTM. The court considered that the necessary requirements to adopt such exceptional measures, with effect throughout the European Union, had been met, since the defendant had used a distinctive sign similar to the plaintiff's well-known trademark to issue European conformity certificates.
During the national state of alarm caused by the COVID-19 outbreak and its related health crisis management, measures were adopted affecting IP matters, including the suspension and official interruption of certain deadlines and judicial and administrative actions. Having overcome the exceptional state of alarm, the Spanish courts and administrative bodies have now resumed full activity and the courts have been reinforced to ease the situation.
Barcelona Commercial Court 6 recently dismissed an action for trademark infringement brought against Hilfiger Stores Spain, SL and upheld its counterclaim, declaring partial revocation for non-use of the plaintiff's Spanish trademark registered for clothing, footwear and hats (Class 25) and leaving it registered exclusively for occasion hats and women's formal party hats.
A recent European Court of Justice judgment is good news for EU designers as it confirms what has already been stated by some Spanish courts – namely, that a design need not have artistic merit, aesthetic value or a particular visual attraction to qualify for copyright protection. Although the judgment was issued in response to a ruling by the Portuguese courts, it will undoubtedly have clear consequences throughout the European Union. This article examines the decision in view of the Spanish legal framework.
In December 2018 the EU Trademark Court of Appeal declared that the Ibiza Beach drink marketed by Productos Ibicencos, SL and Aromáticas de Ibiza, SL – whose bottle was highly similar to the well-known Malibu bottle – infringed The Absolut Company AB's (TAC's) 3D and graphic trademarks which protect the shape of such bottle. Among other things, the court held that the defendants had taken unfair advantage of TAC's trademarks, as their product was very similar in appearance.
The Council of Ministers recently approved a preliminary draft law which will partially amend the Trademark Act in order to incorporate the EU Trademark Directive. Ahead of the parliamentary approval procedure, various consulting bodies provided their opinions on the draft text. In this regard, the Economic and Social Council and the General Council of the Judiciary both highlighted certain aspects of the preliminary draft law which they believe could be improved.
The Constitutional Court recently upheld in part an action challenging the constitutionality of certain taxes relating to the administration of justice, including those which must be paid in civil and contentious administrative proceedings regarding IP matters. The court considered that the disproportionate values of the taxes violated the fundamental right of citizens to effective judicial protection and deterred them from turning to the courts to exercise this right.
A new act has come into force which reforms the consolidated text of the Copyright Act, as well as a particular provision of the Civil Procedure Act. The main purpose of the reform is to adapt the Spanish IP legislation to the social, economic and technological changes of recent years, and to bring it into line with EU law.