The loss of profit calculation in Copyright (databases) and trademark infringement when deleting the pictures watermark

The claimant entity, Schibsted (a web portal aimed to the creation, management and exploitation of websites publishing advertisements, and in particular, the website Coches.net), filed a lawsuit against the entity Autodescuento because of copyright and trademark infringement and unfair competition acts.


The shape of a guitar to designate musical instruments: lack of distinctivness

On June 16 2010, the applicant, Gibson Brands Inc., filed an application for a tridimensional EU trademark which represented the shape of a guitar body as follows


Prior mark registered with a disclaimer. Effect of the disclaimer on the scope of protection of the prior mark.

In 2007, the Swedish Company Norrtelje Brenneri Aktiebolag, obtained the registration for alcoholic beverages in Class 33 of the Nice Classification as a national mark, for the following denominative and figurative sign


ADIDAS three vertical parallel black stripes: lack of distinctiveness

The ADIDAS group, filed an application for a figurative EU trademark dated December 18, 2013 which represents three vertical parallel black stripes


DISPUTE REGISTERED NAME AND TRADEMARK “TOTPRINT”

The matter of the proceeding relates to the use by the defendant of its registered name Tot Print Maestrat, S.L., as a trade name (including as internet domain www.totprint.es) for covering the sales activity relating to certain goods and services, which the plaintiff also covers on the same relevant market by means of trademarks (“Totprint”) similar to said registered name of the defendant. The following facts stand out: a) prior to the plaintiff’s trademark registrations, the defendant’s…


INDUSTRIAL DESIGN. PROCEEDING STAGE TO CHOOSE THE METHOD FOR CALCULATING DAMAGES

Although the time for declaring the criterion selected for quantifying damages may be deferred to the allegations stage, it cannot by any means jeopardize the rights to claim, defense, and submission of evidence corresponding to the other party to the proceeding.


El titular de una marca cuya infracción ha sido declarada en un proceso judicial, puede promover un segundo proceso para que el infractor entregue toda la información sobre la red de distribución de los productos.

Article 8.1 of Directive 2004/48. Judgement of the Court of Justice (Ninth Chamber), 18 January 2017, in Case C-427/15 NEW WAVE CZ, a.s. & ALLTOYS, spol. s.r.o.


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.