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DeutschThe use of a generic term in a domain name. Trademark infringement or acts of unfair competition. TAXI PALAMOS
Background of the case On 7 November 2019, the plaintiff filed a lawsuit based on a trademark infringement action as well as unfair competition acts. Hereinafter, and as a response to the lawsuit, the defendant opposed in its entirety to all the claims and in addition, filed a counterclaim requesting the nullity of the trademark based on bat faith. The disputed facts are the following: the defendant and counterclaimant acquired the domain name taxispalamos.es, being the plaintiff the owner of…
Ranking WTR 1000
World Trademark Review has appointed Cristina Hernández Martí as recommended individual for trademark enforcement and litigation in Spain. The WTR 1000 ranking highlights that she has “a keen understanding of the fashion industry, where her experience in designing portfolio strategies and identifying potential risks is beyond exemplary”. Ir a WTR ➞
Trade marks and freedom of expression in US and EU law
Cristina Hernandez-Marti Perez has recently published an article in European Intellectual Property Review in relation to trademarks and freedom of expression. This article compares the regulatory framework under US and European trade mark law in relation to the absolute prohibition grounds of registration that are contrary to the public order or morality. Even though the legal framework concerning freedom of expression and absolute prohibitions does not differ substantially, there are…
The descriptive character of the Trademark EL CLASICO
Background of the case. On February 17, 2017, the National Professional Football League filed an application for the following International Trademark with the EUIPO for Class 41. Following the analysis of the application, the EUIPO considered that it was to be refused both at first instance and finally by decision of the Board of Appeal in October 2019 on the grounds that the mark was considered to be non-distinctive and descriptive in relation to the services applied. In particular, the…
Decision following sanction procedure by the Spanish Data Protection Agency (AEPD)
Background On May 9, 2019, a complaint was filed before the AEPD (Spanish Agency of Data Protection), claiming that the respondent sent emails (with and advertising content) without blind copy, disclosing the email accounts of all of them. After carrying out the appropriate actions, the AEPD agreed to initiate disciplinary proceedings against the respondent for the alleged infringement of Article 5.1.f) of the GDPR. Legal grounds and decision The reported facts entail a breach of the principle…
The threshold of subcategories in proving genuine use. The SYRENA case.
Background of the case On 6 July 2010, Mr Arkadiusz Kaminski filed an EUTM application, seeking for the registration the word sign SYRENA for the goods in Class 9, 12 and 28. On 2016, Polfarmex filed an application for revocation against all the goods covered by the referred trademark. The matter reached the Board of Appeal, where it was found that it was solely shown genuine use for “cars” in Class 12. In short, it considered that that despite the lack of evidence of the actual sale of goods,…
Misleading brands and the Cava Appellation of Origin. Newcase-law doctrine.
Background of the case On 22 December 2016, DEEPSEACAVA was filed as a Spanish trademark application for sparkling wines under the denomination of origin cava. The Cava Regulatory Board filed an opposition against this application which was rejected by the OEPM. This decision was Appealed before the High Court of Justice in Madid, and entirely upheld by this Court. The Court agreed to reject the subject application on the grounds that it had not been authorized by said entity and therefore it…
The monopoly of the X-sign. There is no trademark infringement when well-known trademarks add it.
Background of the case Munich S.L. is the owner of several national trade marks, which contain an X or a blade as a main element. This entity filed a lawsuit against J. Ballvé Sports SL based on trademark and design infringement including as well unfair competition actions. The defendant argued the lawsuit claiming that its trademark NOX, is a well-known trademark in the paddle industry, the trademarks have coexisted in the past without entailing likelihood of confusion. The NOX paddle only…
The prohibition of the shape or appearance of the product under the scope of a Protected Designation of Origin. The average consumer and the relevance of the element. Morbier Case.
Background of the case The Société Fromagère du Livradois SAS, manufactured "Morbier" cheese without mentioning the Protected Designation of Origin (PDO) until 11 July 2017. It was then replaced by the name "Montboissié du Haut Livradois". In August 2013, the Syndicat interprofessionnel de défense du fromage Morbier (hereinafter the Syndicat), brought an action against the aforementioned company for having committed acts of unfair and parasitic competition by producing and marketing a cheese…