The enormous backlog in the Courts does generally prevent their judges from analyzing deeply and extensively the facts and questions of law that may arise from a claim. However, from time to time, a Judge decides to sit down and devote her precious time to a case in order to explain meticulously the reasons of its decision, the applicable law and how this is construed by other Courts, resulting in an important piece in the case-law in the corresponding field of law. This post relates to one of these decisions, handed down by the Appellate Court of Barcelona on 4 December 2013 (Rec. 261/2012) (Consultorio Dexeus and Fundació Santiago Dexeus Font v. Instituto Santiago Deseus S.L.P, Mr. Teodoro Miguel and Fundación Escuela Dexeus) that discusses extensively on a bunch of important trademark issues, and in particular: (i) the well-known character of the mark, generated by efforts both from the claimant and defendant; (ii) the own name defence; (iii) the dominant element in complex marks; (iv) the registration of non-used confusingly similar domain names; (v) the damages ex re ipsa and moral damages; and (vi) the advertisement of the Judgment with an aim to remove effects of the infringement.

In essence, the claimants, Consultorio Dexeus, owns a number of Spanish trademark and trade name registrations for medical services comprising the word DEXEUS since 2003; a word –--DEXEUS-- which has been used in connection with maternity medical services and medical education since 1930 by the ancestors of the current shareholders of Consultorio Dexeus. After being excluded from the claimant company, the defendant (Mr. Jesus Luciano) and his son (Mr. Teodoro Miguel) set up in business in the field of maternity medical services and medical education by, inter alia, incorporating a company called Instituto Santiago Dexeus S.L.P. Defendants obtained registration of two Spanish trademarks comprising the word DEXEUS ("Escuela Santiago Dexeus" and Centre Ginecòlogic Santiago Dexeus") for medical services and educational services, and a collection of domain names comprising the word DEXEUS.

Defendants argued that, since at least one of them founded the claimant company and contributed extensively for years to its commercial success, the goodwill associated to the word DEXEUS did also belong to them, and so they were legitimate users of the said mark despite being separated from the claimant's company. They added that the word DEXEUS was part of their company name, so they were entitled to use their own name as long as it was not contrary to honest practices and in industrial and commercial matters. Last, damages could not be generated automatically out of the infringement: the fact that the claimant is exempted from evidencing up to 1% of the amount of damages does not prevent the claimant to demonstrate that the damage did actually exist.

Appellate Court of Barcelona dismissed arguments from defendants and provided victory for the claimant to all its claims except moral damages and cancellation of non-used domain names, as did the Juzgado (court of first instance) from which the case came in appeal.

First, it regarded irrelevant that the defendant had contributed to generate goodwill under the name prior to its registration by the claimant. Therefore, use and/or registration of marks that would be deemed confusingly similar with prior marks could be subject to invalidation.

Second, it agreed that companies should be able to run its business under its own name and rely on the own name defence as individuals would do (C-245/2002 Anheuser-Busch, and C-17/2006, Céline). However, the Court admitted that in practice it is easy to cross the line and have the company name being used in the course of trade as trademark or in a way that it establishes a link with the goods and services provided by its owner and the goods and services of the prior trademark owner. In the instant case, the Court gave relevance to the well-known character of the prior trademark, that would pave the way for this confusion or association, as well as certain facts that deemed conclusive (e.g. the company name appearing in the receipts of credit card payments).

Third, it considered that the claimant could not ask for cancelation of a domain name that was not actually being used on the Internet by directing to specific contents. Although the Spanish trademark might consider as infringing the domain name confusingly similar to a prior trademark law, the Court reminded the requisite by which this domain name should be used in the course of trade. Thus, a mere registration did not amount to such an use.

Fourth, it dismissed the defendant's view in relation to the ex re ipsa damages doctrine and considered that, once established the trademark infringement, a damage was then caused and so a percentage of 1% on the turnover derived from the infringing use was due to the claimant. Notwithstanding, moral damages –that should not be confused with reputational damage-- were not deemed to be in play: for the claimant to have obtained moral damage, a psychical stress on shareholders strictly derived from the trademark infringement and enforcement should have been evidenced. The Court consider that this stress might be existing, but probably generated from the issues regarding the exclusion of one of the most prominent family members of the claimant company. 

Fifth, advertising of the decision –but just partially- was deemed necessary to prevent confusion, given the actual instances evidenced by the claimant, the well-known character of the prior trademark and the massive advertising of the infringing trademarks.