Until recently, the Spanish judges considered that an infringer could not even be deemed as such because he was simply making use of his own trade mark right ("qui iure sue utitur neminen laedit" or "no harm comes from the use of a proprietary right"). Unless and until the infringing trade mark was declared invalid, the registration represented a good defence for the infringer, who would only be so declared and eligible for damages provided he filed his trade mark in bad faith. 

We know that that April and June 2012 were inspirational months for the Spanish Supreme Court as its Judges laid down a fresh interpretation of the ancient civil law and its application to trade marks. Under the new doctrine, settled by the decisions rendered on 4 April 2012 (Gabrielle Studio, Inc. and The Donna Karan Company LLC v. Grupo KNY Exchange S.L., Cebai Accessories S.L. y D. Leoncio, RJ 2012\5735) and 29 June 2012 (Allergan Inc. and Allergan S.A.U. v. Cosmética Técnica, S.A. RJ2012/9322), the filing an invalidity claim along with the infringement claim would permit the Judge to declare that the defendant did never have a right that could use (ex tunc or retroactive effects), thus clearing the way to declaration of infringement and damages irrespective of the defendant’s intention when filed the contested trade mark.

Although still not matching entirely with the opinion of the Advocate-General Mengozzi —he thinks there is no need of a nullity claim for declaring infringement — this is an step forward that has been even taken further by the Community Trade Mark Court of Alicante in the case brought by Hugo Boss Trademark Management GmbH & Co. KG (trade marks BOSS and B055), which included a preliminary injunction against the defendant. We still need to wait until the ruling is advertised to analyse in detail its interesting contents. In the meantime, from Carlota Viola of Grau & Angulo (Spain) comes a note in the World Trademark Review confirming that the Alicante Court 

"rejected the defendant's allegation that its trademark registration prevented the prima facie analysis of the trade mark infringement claim in the interim injunction proceedings" and 

"had no objection to the possibility that the final judgment in the main proceedings could declare that the plaintiff's mark had been infringed during the period within which the defendant used its own trade mark".

If a good trade mark strategy has always included a chapter on clearances, now it has become vital for applicants of trade marks filings with effect in Spain.