The Supreme Court recently issued two judgments on the interpretation of the 'actual knowledge' concept set out in Article 16 of the Information Society Services and Electronic Commerce Law in order to provide exemptions to service providers that carry out data hosting services.
The Supreme Court has departed from its previous doctrine regarding the enforcement of national and international trademarks against third parties owning later trademarks. A mark owner can now prohibit third parties from using its mark or a similar mark in the trade, regardless of whether they hold a later registered trademark – the later mark need no longer be declared invalid first.
Section 8 of the Alicante Court of Appeal, in its capacity as the Community Trademark Court of Appeal, has partially confirmed the position of Mattel Inc against Erjutoys, SL in a case involving trademark and design infringement and unfair competition. The case centred around Mattel's Community trademarks and designs for its MONSTER HIGH dolls.
The Barcelona Commercial Court No 2 has dismissed a lawsuit filed by Fotoprix, SA against Vistaprint España, SL for infringement of the trademarks FOTOLIBRO and FOTOPRIX and for unfair competition. The court also upheld the counterclaim for partial invalidity and partial cancellation of the FOTOLIBRO trademark brought by Vistaprint against Fotoprix in the same proceedings.
In a recent judgment the European Court of First Instance decided on the capacity of the three-dimensional shape of the well-known Lego toy brick to be protected as a trademark. It applied Article 7(1)(e)(ii) of the Community Trademark Regulation, which provides an absolute ground of refusal for signs which consist exclusively of the shape of the product needed to obtain a technical result.
The Supreme Court has recently issued a judgment on the use of geographical indications as trademarks and whether it may be considered fair use. Among other things, the court held that the use of the trademark FORMENTOR by the defendants could not be considered fair use as the defendants' products and services had no connection with the geographical origin of Formentor on the island of Majorca.
Act 19/2006 has recently implemented the EU Enforcement of IP Rights Directive. The new act has led to the amendment of the Civil Procedure Act and of the IP acts. Among other things, the Civil Procedure Act now allows persons affected by the infringement of IP rights to request that the court demand information on the origin and distribution networks of the infringing goods or services.
A trademark may lose its distinctive character if it becomes the common name for the products or services which it is intended to identify. The Barcelona Court of Appeal recently ordered the cancellation of the trademarks BIO and GANCHITOS based on the fact that - due to the acts or inactivity of their owners - they had become the common name in trade to refer to the products for which they were registered.