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 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 registered name was used as a distinctive sign of its business activity; b) later, the plaintiff filed for and obtained the trademark registrations for similar signs; and c) finally, the defendant also obtained the registration of similar signs. It should be noted that the defendant did not file a counterclaim requesting invalidation of the plaintiff’s trademarks, so that issue is not addressed in the proceeding.

The claim was allowed based on the plaintiff’s trademark rights, and accordingly, infringement by the defendant was declared, as well as the invalidation of the defendant’s trademarks, the registration for which was obtained, as we have seen, after the plaintiff obtained its trademarks.

The proceeding may have turned out otherwise had the defendant filed a counterclaim, asking the Court to declare the plaintiff’s trademarks invalid, instead of simply objecting to the claim to declare trademark infringement and invalidation.

Judgment issued by Commercial Court No. 3 of Valencia, 13 November 2018.