The plaintiff brings an action for trademark infringement committed by the defendant prior to the date on which the defendant obtained ownership of the trademark by virtue of a revindicatory action. The questions raised by this judgment:

  1. a) Whether the upholding of a trademark revindicatory action allows the new owner to bring an action for trademark infringement against the licensee who used the sign during the period prior to the judgment declaring the claimant’s ownership of the mark.
  2. b) Whether 2.3 TM is not intended to fully regulate all the effects of a revindicatory action, so that it can be concluded that an action for trademark infringement is admissible against licensees or holders of limited rights for acts carried out prior to the attribution of the trademark to the new trademark owner by virtue of the revindicatory action.

The action was dismissed on the ground that the acquisition of ownership of a trade mark by virtue of a revindicatory action has no retroactive effect. In dismissing the appeal, the Supreme Court did so on the following grounds:

It is not possible to infer the ex tunc effects of the recognition of the revindicatory action of the trade mark. Although in law it is called a revindicatory action, its legal configuration does not correspond to the revindicatory action for ownership of Art. 348 CC. It is, as the doctrine states, an improper or sui generis claim. The plaintiff does not do so on the basis of ownership in order, on the basis of the recognition of his right of ownership, to recover the rights inherent to ownership, including possession. In this case, the plaintiff, when he does so, is not the owner of a domain over a registered trademark, but has a better right over the person who registered the trademark in bad faith or fraudulently, which legitimises him to request and obtain subrogation in the ownership of the registration. However, the rights of the owner of a trademark are only acquired after the effective subrogation by means of the registration of the judgment upholding the claim, in view of the constitutive nature of the registration (art. 2.3 TM).

In order to exercise ius prohibendi through trademark actions, apart from the exception of Art. 34.7 of the LM (the trademark well known in Spain within the meaning of Art. 6 bis of the Paris Convention), it is necessary to be the holder of the registration of that trademark. This also means that these infringement actions can only be brought for infringing acts subsequent to the acquisition of ownership, which occurred with the registration of the judgment upholding the claim; which, moreover, led to the loss of the licensee’s right to use the mark. In such a way that, properly speaking, the new registrant has no infringement actions in respect of a use prior to the registration of his ownership.

Prior to registration, due to its constitutive nature, the dominant right over the trade mark does not arise. That “better right” is not an ius in re. Only with registration does the ius in re arise, which attributes to its holder the right to use it exclusively and the effect of opposability “erga omnes”, with the inherent ius prohibendi regulated in art. 34 TM. However, prior to registration, there is a legal situation in fieri (in formation), which translates into a personal right with a “vocation to a right in rem”, a sort of ius ad rem, which will only translate into full real ownership of the domain of the mark with registration. But even before registration, that right in formation with a vocation to a right in rem could have patrimonial value and economic content, and represent a legal interest worthy of protection by the legal system.

legal system. Therefore, the fact that trademark actions cannot be brought in respect of acts of use of the trademark prior to the registration of the judgment upholding the revindicatory action should not prevent other actions, contractual or non-contractual, from being brought in the event of unjustified damage to the aforementioned legal interest, in order to claim damages that the new owner may suffer as a result of the collusion of the licensee with the person who fraudulently registered the trademark in his favour, due to the use made of the trademark.

Supreme Court Judgment of 22 December 2022.