Unfair Competition. Misleading Advertising.

The claim leading to the lawsuit between two undertakings in the tool sector suggests the existence of acts of deception consisting of the press release issued by Bellota, one of two undertakings in the case, claiming that it was the first undertaking in the sector to obtain the “Q de oro” award.


Is a trade mark proprietor entitled to oppose the removal by a third party of all the signs identical to that trade mark and the affixing of new signs on goods identical to those for which the trade mark has been registered with a view to importing or placing them on the market in the European Economic Area (EEA)?

Mitsubishi, established in Japan, is the proprietor of a number of trade marks, including the EU word mark MITSUBISHI, for, inter alia, goods in Class 12 of the Nice Agreement, including motor vehicles, electric vehicles, and forklift trucks.


C3 SYSTEMS Case. Action for unfair competition. Revocation due to inconsistency.

The company C3 Systems S.L. brought an action against the trading company Vejuma on the grounds of infringement of its EU trade mark and Spanish trade mark, and, in addition, an action for the declaration and the cease of acts of unfair competition. The factual grounds for both the action for trade mark infraction and the action for unfair competition consisted of the use by the defendant of the Seeglass and C3 Systems trade marks in the Google Adwords search system. None of this has been…


The imprescriptible character of an action for absolute invalidity on the grounds of a trade mark registered in bad faith

Supreme Court Ruling of 6 June 2018 (ECLI:ES:TS:2018:6050A) The enterprise Confecciones Córdoba registered Spanish trade marks no. 2858007 and no. 2774328, “Pedro Morago,” for clothing and footwear. Luis Manuel filed a claim requesting the absolute invalidity of the registration of said trade marks as they were registered in bad faith. Both the judgment of the lower court and the judgment of the Court of Appeal allowed the claim and declared the trade marks registered by Confecciones Córdoba to…


Damages calculation for trade mark infringement in Spain

Cristina Hernández Marti Pérez has recently published a book on damages calculation for trade mark infringement in Spain. The book has been published by Tirant Lo Blanch and is currently just available in Spanish.


What is required for a database to be granted copyright protection?

Judgment No. 23/2018 of the Provincial Court Of Barcelona of 19 January (ECLI: ES: APB:2018:187). Intellectual property: legal protection of databases: “sui generis” right. Protection requirements. Originality.


Is it possible to force upon an intermediary the duty to cooperate in ceasing an infringing conduct?

Judgment No. 115/2018 of the Provincial Court of Barcelona of 20 February (ECLI:IS:APB:2018:1317). Intellectual property. Action for an injunction against internet service intermediaries. Defendant’s standing.


Three parallel stripes on a shoe vs. Two parallel stripes on a shoe

Judgment of the General Court of 1 March 2018 ECLI:EU:T:2018:108 “EU trade mark. Application for EU figurative mark consisting of two parallel stripes on a shoe. Earlier EU figurative mark representing three parallel stripes on a shoe. Damage to reputation.


Period for submitting evidence in the EUIPO proceeding

Sentencia del Tribunal De Justicia (Sala Primera) de 24 de enero de 2018 Marca denominativa FITNESS. Solicitud de nulidad. Plazo presentación pruebas en el procedimiento ante la EUIPO. NESTLE obtuvo el 30 de mayo de 2005 el registro de la marca denominativa de la Unión “FITNESS” para productos de las clases 29,30 y 32 del Arreglo de Niza.


La mafia SE SIENTA A LA MESA

Judgment of the General Court of 15 March 2018 ECLI:EU:T:2018:146 “Trade mark of the European Union – Invalidity proceedings – EU figurative mark La Mafia SE SIENTA A LA MESA – Absolute ground for refusal – Whether contrary to public policy or to accepted principles of morality – Article 7(1)(f) of Regulation (EU) 2017/1001”


Application of National Law by the OHIM

In the case OHIM/National Lottery Commission (C-530/12 P) the Advocate-General Mr. Yves Bot submitted his conclusions on 28 November 2013, and the hearing before the Court of Justice is planned for the next March 27. The interest in this case is evident because it deals with the possibility that national laws can be considered as European Community Law, by studying thoroughly the doctrine of the judgment given by the Court of Justice on July 2011 (Edwin/OHIM).


The “burden of proof” of a trade mark to defend its distinctiveness

The Court of Justice will soon pass a decision on the preliminary ruling submitted by the Austrian Court of Patents and Trade Marks, in a case of trade mark revocation for the loss of its distinctiveness (case C-409/12 Backaldrin Österreich The Kornspitz Company GMBH against Pfahni Backmittel GmbH). These notes are written according to conclusions already presented by the Advocate-General.