STS of 26 October 2021

The facts giving rise to the judgment are, in summary, the following:

Boungiorno Myalert offered services and downloads of entertainment content through its WAP services and SMS services for mobile telephones and launched a campaign for subscription to the service for the forwarding of multimedia content via SMS which it marketed under the name “Club Blinko”, in which “it offered, on certain web pages accessed through banners with the ZARA sign inserted on other web pages, on Facebook and Hotmail, participation in a prize draw in which the prize consisted of a ZARA gift card for the sum of 1000 euros”.

Inditex filed a lawsuit against Boungiorno for the use it had made of the ZARA sign in the aforementioned advertising campaigns. In the lawsuit, trademark actions were brought, on the understanding that the exclusive rights of the ZARA trademark had been infringed, under both art. 34.2.b) of the LM, for likelihood of confusion, and art. 34.2.c) of the LM, for taking advantage of the reputation of the trademark and detriment to its renowned character. In the alternative, it also brought unfair competition actions based on articles 12 and 22.6.b) LCD.

Inditex’s claims were dismissed at all instances. The Supreme Court reasoned in its judgement that the basis for the lawfulness of the use of another’s trademark with a reputation was, as the lower court had already reasoned, the fact that it was a descriptive use of the ZARA trademark protected by art. 37 of the LM. Even though in the appeal the defendant disputes whether the unlawfulness of the use of the mark required the condition that it entailed impairment of the functions of the mark (as had also been reasoned by the judgment of the lower court) or whether that requirement was not such, but rather a feature of any of the infringements of the trade mark with a reputation (art. 34.2.c) of the LM, the judgment does not consider it necessary to assess that question as it would not lead to the appeal being upheld, given that the basis of the descriptive use of the mark remains unaltered.