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The judicial defence of trademarks in Spain: Competent Court

  • 29 June 2011
  • Articles

In the field of trademarks, the judicial route has been shown to be an effective means to resolve disputes; nevertheless, in most cases, the proceedings are long and costly. However, on many occasions, either the claim of one of the parties is unaffordable to the other, or it is the last resort to avoid the damage that it would involve.

In this case, resolving the when, it may be asked where, which will depend on the different forms of territorial trademark registration which is the main object of the litigation and of the claims which are to be brought.

Thus, in the event of a claim for trademark infringement, if it is Spanish or international but effective in Spain, the competent court will be for the claimant to choose among the commercial courts of the city where is located the seat of the High Court of Justice of the Autonomous Community where the defendant resides, the competent courts would be the same courts but in the place where the trademark infringement had taken place, and in those where its effects had occurred.

A different case is that of the court where the questions of a Community trademark are resolved, which, in fulfilment of Council Regulation (EC) No. 207/2009 on the Community trademark, establishes a special jurisdiction for those cases, among others, of infringement of this type of trademarks.

In the case of Spain, the competent courts are, at first instance, the Community trademark courts of Alicante, the seat of the Office of Harmonization for the Internal Market (OHIM), the second being the community trademark Court of the same city.

In the same way, the same courts are competent for all the claims for annulment or expiration, with a single specialism regarding Community trademarks, except in cases of counterclaims against a claim for trademark infringement, the claim will be brought directly before the administrative body which granted the contested trademark, that is, the OHIM.

For claims brought for unfair competition, the competent courts will be the commercial courts of the place where the defendant has his premises or residence or, if the claimant so chooses, where the unfair act took place.

Given that it is normal to accumulate several claims, which could decide the choice of one court or another, it becomes more important to have prior professional advice to decide the strategy to be followed, and if it is recommendable, and it is, to assess the possibility of seeking a negotiated solution which avoids the burdensome judicial route.

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The judicial defence of trademarks in Spain: Competent Court