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,…

A recent Supreme Court judgement in the Dalí case shows clear respect for trademarks but raises some questions regarding image. A great many brands have used in their advertising campaigns the images of people who, despite no longer being alive, continue to have considerable selling power. There are even marketing studies which show that advertising…

In a decision of 22 April 2016, the Spanish Supreme Court has clarified the circumstances in which the commercialization of original luxury products through Internet sale platforms outside a selective distribution system could be relied on by the trademark owner as precluding an exhaustion of the trademark rights. The plaintiffs, various companies of the L’Oréal…

The relevance of the graphic element in the comparison of figurative signs and the application of the “principle of continuity of registration”. In two different decisions, rendered within a fortnight of each other, the Spanish Supreme Court decided to accept the registration of the trademark “La Española” plus graphics but deny the registration of the…

 Judgment of the Supreme Court (First Chamber) no. 107/206 of 1 March 2016 The Spanish Supreme Court (SC) in a judgment of 1 March 2016, dismissed the cassation appeal filed by the “Comité Interprofessionnel du vin de Champagne” (joint trade association for Champagne) in respect of registration of the Spanish trademark “Champím” and use of…