Spain - Damages and trade mark infringement actions: when (and how) to start shooting.

In the Judgment of the Supreme Court (Civil Chamber - 94/2006), the Court ruled that the exclusion faculties deriving from a registered trade mark start not from the date of the administrative decision granting the application, but with the publication of the said decision in the Intellectual Property Gazette. This is the "dies a quo" (starting date) from which full enforcement in trade mark infringement can be claimed. According to the Court, it is unfounded to claim damages from acts happening before the publication.

The Supreme Court takes the occasion to remember that section 38.1 of the Spanish Trade Mark Act ("Temporary Protection") confers trade mark application certain level of protection. This section, that apparently was not cited by claimants, reads along these lines:

The right granted by the registration of a trademark may only be exercised in relation to third parties from the time of publication of the grant of the trademark. Nevertheless, a trademark registration application shall provide its owner, from the date of its publication, with temporary protection consisting of the right to request compensation that is reasonable and suited to the circumstances where a third party has, between that date and the date of publication of the grant, undertaken use of the trademark which, following that period, would be prohibited.

Posted by: Ignacio Marques @ 09.37
Tags: Spain, infringement, damages.,
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