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 be invalid.

The filed appeal for dismissal was not allowed. The defendant’s appeal was based on three grounds invoking interest in reversal:

  1. Based on Article 51(1)(b) of the Trade Mark Law, insofar as the defendant’s bad faith for the filing and registration of his trade marks, Pedro Morago, had not been proven. He claims the recurrent lack of effective and genuine use of the trade marks and no connection between the goods covered by the defendant’s trade mark and the goods of the plaintiff’s trade mark, since the trade mark has not existed since 2002.
  2. Based on Article 51(1)(b) of the Trade Mark Law and the case-law which has interpreted it, insofar as the judgment under appeal did not take into consideration case-law concerning the abuse of process.
  3. Based on Article 7.1 of the Civil Code and case-law which has interpreted it, insofar as the plaintiff acted in bad faith given his delay in sending notices to the plaintiff and in filing the claim.

The first ground for reversal should not be allowed because the appellant leaves out the facts that are proven in the judgment of the lower court, which concludes that there was bad faith and that the forfeiture of the trade mark simply because it is not renewed does not prevent a declaration of absolute invalidity of a later trade mark where the filing of said trade mark was in bad faith, citing the Supreme Court judgment of 30 June 2009.

Likewise, the second ground cannot be allowed either because the judgment under appeal did find that the defendant acted in bad faith in registering the trade marks object of the proceeding.

And finally, the third ground cannot be allowed either as it fails to respect the reasoning behind the decision and the proven facts, given that the defendant did not prove that the plaintiff was aware of the existence of the trade mark and did nothing about it for a period of five years.