Log in


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

Want to receive Class 46 by email?
Click here subscribe for free.

Who we all are...
Anthonia Ghalamkarizadeh
Birgit Clark
Blog Administrator
Christian Tenkhoff
Fidel Porcuna
Gino Van Roeyen
Markku Tuominen
Niamh Hall
Nikos Prentoulis
Stefan Schröter
Tomasz Rychlicki
Yvonne Onomor
Registration as a defence in Spain: the Supreme Court's DENSO ruling

As you informed in the past, under the Spanish Trade Marks Act and its related case law, a trade mark titleholder had the right to use its trade mark. In practice, this meant that a trade mark could only be enforced against a later registered mark following a request to invalidate the later mark, whether that request was made earlier or at the same time.

However, it seems that the Spanish Community Trade Mark Court of Alicante did not agree with this and requested the the Court of Justice of the European Union (CJEU) to make two preliminary rulings in this regard (Cases C-488/10 Celaya Emparanza and C-561/11 Fédération Cynologique Internationale). As is now well known, the CJEU declared that, under the Community Designs and Trade Marks Regulations, rights in later-registered later designs and trade marks do not protecting their titleholders against an infringement action or against potential liability to pay damages in the case of an infringement.

Up to now, this doctrine was limited to the application of the Community Trade Mark Regulation (CTMR) (and Community Design Regulation). However, the Spanish Supreme Court has dramatically changed this scenario (and its own case law doctrine) in a recent judgement of 14 October 2014 ("Denso"), based on the following grounds:

* The CJEU ruling in Case C-561/11 Fédération Cynologique Internationale stated that CTMR entitles trade mark owners to enforce their rights against an earlier infringing registered trade mark.

* Articles 9 and 12 of the CTMR are practically identical to Articles 5 and 6 of the Trade Marks Directive..

* Following the case law of the CJEU, national courts should interpret the wording of national law in the light of the wording and purpose of EU directives in order to achieve the result intended by those directives (Judgment of the CJEU in Case C-106/89 Marleasing).

* Accordingly the interpretation of the Spanish Trade Mark Act in the light of the Trade Marks Directive requires that the Spanish Courts follow the law as stated by the CJEU in Case C-561/11 Fédération Cynologique Internationale, with regard to the enforcement of earlier trade marks against later registered ones.

To sum up, Spanish trade marks won’t ever protect their titleholders against the enforcement of earlier trade marks, irrespective of the fact that the infringing trade mark holder was aware of the existence of the earlier trade marks.

This post has been kindly prepared by Álvaro Porras Fernández-Toledano (thanks!)

Posted by: Blog Administrator @ 16.50
Tags: Spain, registration as a defence,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA3956

MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

The Class 46 Archive








+44 (0)116 2747355
+44 (0)116 2747365

Unit Q, Troon Way Business Centre
Humberstone Lane, Leicester


Ingrid de Groot
Internal Relations Officer
Alessandra Romeo
External Relations Officer
James Nurton
Newsletter Editor
Robert Harrison

Signup for our blogs.
Headlines delivered to your inbox