Background of the case

On 5 July 2019, Murcia Commercial Court No. 2 issued a judgment in the lawsuit brought by the company Aznar Zamora against Exigrup J. Guerrero for infringement of its exclusive rights due to the defendant Exigrup J Guerrero SL’s use of the sign “EXIGRUP”. The defendant opposed as well as requested the dismissal of the claim, the nullity of the plaintiff’s trademark on the grounds of bad faith when it was registered as it coincides with the term that corresponds to the defendant’s company name and it was used to identify it in the course of trade, and because the timeframe to file such actions was expired.

This claim was partially upheld, declaring the plaintiff’s exclusive right to use the EXIGRUP trademark, and considering, therefore, that Exigrup J. Guerrero S.L. had carried out acts of infringement of the trademarks of Aznar Zamora S.L. through the use of the EXIGRUP trademark.

An appeal was lodged against that judgment.

Decision of the Murcia Provincial Court

Firstly, it is considered that although the defendant invokes acts of unfair competition, the dispute is reduced to a trade mark matter, since the specific acts are not argued neither mentioned in the plea of the claim.

Secondly, in the Appeal it is stated the trade marks should be cancelled due to lack of proof of use, which this Court declares to be untenable because this point was not included in the response to the claim and counterclaim.

As for the use of the word “EXIGRUP” as a company name, the court does not see any likelihood of confusion, as it is used as a trade name or trademark, identifying the company and its services and denoting a link between it and the product or service, which allows us to affirm that we are dealing with a sign that identifies and distinguishes these on the market, in other words, a use as a trademark.

In order to clarify the issue of the invalidity of trademarks on the grounds of bad faith, it is recalled that this applies when it appears that the owner of a trademark does not file the application for registration of said trademark with the aim of participating fairly in the competitive process, but with the intention of harming, in a manner not in accordance with fair practices, the interests of third parties or with the intention of obtaining an exclusive right for purposes other than those corresponding to the functions of the trademark. It is further stated that, in order to assess the existence of bad faith, account must be taken of the fact that the applicant knows, or ought to know, that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product which is liable to give rise to confusion with the sign in respect of which registration is sought. It is common ground that Aznar Zamora was aware of the existence of the defendant´s commercial name, and since they were undertakings competing in the same field, thus it is clear that the registration of the marks in question was not intended to serve their own purpose, but rather to hinder and prevent their use by a competitor, since the plaintiff had not withdrawn the name EXIGRUP J. GUERRERO, as initially requested by the defendant.

In conclusion, the Provincial Court dismissed the claim brought by Aznar Zamora S.L. and partially upheld the counterclaim brought by Exigrup J. Guerrero, declaring the national trade marks on which the claim brought by the plaintiff was based to be invalid.

Judgment 189/2021 of Section 4 of the Murcia Provincial Court of 25 February 2021.