What are the limits as regards the use of a well-known trademark to promote a contest? In two similar circumstances, two Spanish courts have reached different conclusions. In this article, we will analyze the circumstances of the legal proceedings and the dissonant approach taken by the Spanish courts: INDITEX v BUONGIORNO In this case, the…

The Royal Decree-Law (link) implementing the European Trade Marks Directive 2015/2436 was published in the Official State Gazette on December 27. The main part of this legislation amending the Spanish Trade Mark Law will come into force on January 14, 2019. The main points to be highlighted are as follows: Competence of the Spanish Patent…

The debate about the traditional terms, such as “torta”, has occupied Spanish case law for a long time and now the saga continues on an EU level. The main discussion is about whether the expression “torta” can be classified as a Traditional Designation. Background: The Regulatory Body for the Protected Designation of Origin of Queso…

On 17 January 2018, the French Supreme Court (Cour de cassation) held that affixing a prior trademark, without consent, to products exclusively intended for export to and lawful sale in China constitutes trademark infringement. The dispute involved the French wine company Castel Frères, owner of a number of French and European trademarks for alcoholic beverages and…

On the occasion of World Anti-Counterfeiting Day on 30 June 2017, the annual report on counterfeit goods seizures carried out by national law enforcement agencies and the Inland Revenue Office in Spain in 2016 was presented at the Spanish Patent and Trademark Office. In 2016, a total of over 4 million counterfeit products were seized…

The Alicante Court of Appeal has concluded that the use of comparison lists in the marketing of smell-alike perfumes constitutes an unlawful form of comparative advertising, even when it is the consumers themselves that are making use of these lists at a sales website. This latest case ruled on new forms of using comparison lists…

The Spanish Supreme Court has concluded that it is not appropriate to waive the Court jurisdiction from the defendant’s domicile (in this case Italy), which had ruled against the claimant, by creating a link with another entity that it is domicile in another European country (in this case Spain), when that connection is not sufficiently…

The Spanish Supreme Court has held that there is no risk of confusion between the word trade mark “Toro” (owned by Osborne Group, S.A., the notorious beverage company) and the word trade mark “Badtoro” (owned by Jordi Nogués, S.L., and filed for goods and services in classes 25 and 35 – relating to clothing-). Firstly,…