On 30 March 2011, Walton International LTD (hereinafter ‘Walton’) was granted the Spanish trademark ‘Giordano’ for goods and services in classes 18 and 25, relating to the fashion industry. However, Walton was not making an effective use of its trademark on the Spanish market. Although the products were offered in Spain, the trademark’s website was solely in English, it did not accept euros as a payment currency (until 2016) and it did not provide any means of contact or after-sales service in Spain. Furthermore, during a short period of time following the granting of the trademark, Walton opened two ‘pop-up’ shops at street markets and two high-street shops in Madrid. None of these remained open for more than 60 days and generated a total turnover of €9,086. From 2012 to 2015, Walton’s online sales in Spain were less than 100 euros per month.

On the contrary, Verweij Fashion BV (hereinafter ‘Verweij Fashion’) had been using the ‘Giordano’ trademark continuously since 1997, through Verweij Retail International, BV Branch in Spain (hereinafter ‘Verweij Spain’) as well as through distribution agreements with Enta Benada 2014, S.L. (hereinafter ‘Enta Benada’), Mensgranch, S.L. (hereinafter ‘Mensgranch’), and Sir Moda, S.L. (hereinafter ‘Sir Moda’). These companies distributed and marketed in Spain products bearing the “Giordano” trademark, which is identical to the trademarks registered by Walton, without the required authorisation. The products were sold through a network of retail stores operating under the name “Baileys.”

On 29 March 2016, the day before the grace period for the ‘Giordano’ trademark was due to expire, Walton took legal action against Verweij Spain, Enta Benada, Mensgranch and Sir Moda for trademark infringement. In response to the claim, the defendants argued that Verweij Fashion had been making a peaceful and uninterrupted use of the trademark since 1997 and that the claimant was not exploiting the trademark in Spain. Consequently, they filed a counterclaim seeking a declaration of revocation due to non-use. Prior to the filing of the claim, Verweij Fashion had already brought a claim against Walton seeking the revocation of the ‘Giordano’ trade mark on the grounds of non-use, which was joined to the present proceedings.

The judgment at first instance dismissed the main claim and upheld the application for revocation brought by Verweij Fashion and the counterclaim brought by the defendants, finding that Walton had not made genuine and effective use of the trademark during the five years following its registration, and consequently the trademark was revoked.

Walton appealed against the previous judgment, and the Provincial Court partially upheld the appeal. The second instance judgment confirmed the revocation of the ‘Giordano’ trademark, as the counterclaim had been filed after the grace period had expired. However, the trademark infringement claim had been brought while the grace period was still in force. Consequently, the infringement of the trademark during the grace period had to be assessed, leading to the conclusion that the claimant should be financially compensated for the trademark infringement that occurred during the grace period.

The defendants appealed against such judgment before the Spanish Supreme Court, on the grounds that, once the trade mark had been revoked for non-use, any infringement action should be dismissed, as the exclusive right to the trademark is conditional upon its actual use.

The Spanish Supreme Court upheld the appeal, concluding that Walton had committed procedural fraud by deliberately waiting until one day before the end of the five-year grace period before bringing the claim. This was an attempt to circumvent the application of Article 41(2) of the 2001 Trademarks Act (proof of genuine use). This conduct was therefore contrary to the requirements of good faith in legal proceedings. Consequently, having failed to prove the actual and effective use of the trademark, Walton could not claim damages arising from the trademark infringement.

Judgment of the Spanish Supreme Court (Section 1) No. 633/2026, 27 April 2026.