This week a Spanish court has made an interesting decision regarding the rights of trade mark holders after the trade mark has been revoked.
The Barcelona Court of Appeal partially upheld an appeal declaring that the plaintiff’s trade mark be cancelled for lack of use and that the defendant’s trade mark was invalid. However, it also found that the plaintiff’s revoked trade mark had been infringed by the defendant.
Britanica Investimentos E Consultadoria LDA owned the ‘LIBERTO’ trade mark for clothing in Class 25.
Carrson Mod SL later registered the same trade mark in Class 25 and marketed clothing under this trade mark.
Britanica filed a lawsuit against Carrson before Barcelona Commercial Court, claiming:
- The invalidity of the defendant’s LIBERTO trade mark because of the incompatibility with its earlier trade mark (double identity under Article 6.1(a) of the Trade mark Act; and
- Infringement of the earlier LIBERTO trade mark due to the defendant’s use of the LIBERTO mark to market products in Class 25.
In its defence Carrson:
- Argued that it had behaved in good faith based on the assurance that Britanica’s trade mark was to be revoked for lack of use; and
- Filed a counterclaim seeking revocation of Britanica’s trade mark in Class 25 based on lack of use of the trade mark for clothing.
The first-instance court dismissed Carrson’s counterclaim and upheld Britanica’s claim, considering that:
- Carrson’s use of the LIBERTO mark infringed Britanica’s trade mark; and
- Carrson’s LIBERTO trade mark was invalid due to its incompatibility with Britanica’s earlier trade mark.
The court ordered Carrson to cease its use of the LIBERTO mark and to pay damages.
Carrson appealed on the following grounds:
- Use of Britanica’s trade mark during the previous five years was proven only for footwear and headgear, and not for clothing (the goods for which the trade mark was registered);
- Footwear and headgear could not be considered to be clothing, even if the goods were in the same class; and
- No damage had been caused.
The Barcelona Court of Appeal partially upheld Carrson’s appeal, as follows:
- The court revoked Britanica’s LIBERTO trade mark due to lack of use for the relevant goods during the pertinent period. The period to be taken into account in such cases is the five-year period before suit is filed. Thus, in this case use carried out before September 2 2007 was irrelevant. Britanica’s trade mark was registered for clothing in Class 25 and the evidence of use related to different goods. The court declared that Britanica’s use of the mark for footwear and headgear (although these goods were also in Class 25) could not be taken into account as real and effective use of the trade mark for clothing.
- The court declared invalid Carrson’s LIBERTO trade mark because it came under the double identity prohibition set out in Article 6.1(a) of the Trademark Act. After the court declared the revocation of Britanica’s trade mark, it analysed whether that mark could be revoked at the time when Carrson applied for its mark. It had been proven that in 2007 Carrson had bought stock from a licensee; thus, Britanica’s trade mark was still in use when Carrson applied for its mark. Therefore, it fell under the double identity prohibition.
- Regarding infringement of Britanica’s LIBERTO trade mark, the court upheld the first-instance decision. It stated that the revocation of a trade mark is not incompatible with its infringement if the infringing acts were carried out during the period of validity of the trade mark. Thus, the court also upheld the order to pay damages.
- The court overruled the order that Carrson cease use of the LIBERTO mark. It considered such order to be nonsensical as the cessation of use can take place only after the ruling and revocation of the trade mark removes the rights holder’s rights in the mark.