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.
Click here subscribe for free.
Who we all are...
Spain – FORD scores at the Spanish CTM Court.
The very useful OHIM's online listing of decisions from several European CTM Courts has just published a judgment favourable to the Ford Motor Company (“Ford”) before the Spanish CTM Court.
In brief: Ford filed a trade mark infringement action against a Spanish undertaking that sold automobile spare parts bearing the FORD oval logo.
The respondent alleged in its defence that it included it as affixed its own trade marks to the challenged products, so Ford could not oppose its exclusive rights to what respondent considered a “fair use” of Ford's mark.
The merit of the dispute was, as readers would have surely anticipated, the limits to trade mark rights as per the terms of Section 37(c) of the Spanish Trade Mark Act (parallel to section 12 of the CTM Regulation), which reads:
“The right granted by a trade mark shall not allow its owner to prohibit use in economic transactions by third parties, provided that such use complies with fair industrial or commercial practices:
(…)
(c) of the trade mark, where this is necessary for indicating the purpose of a good or a service, in particular as accessories or spare parts.”
After reviewing the ECJ doctrine in this respect (specifically, Case C-102/07) and referring to other case law handed down by the same Spanish CTM Court (Case no. 631/2006 Daf Trucks v Talleres Sureste Automocion), the Court found that the respondent was liable for trade mark infringement since the use of Ford’s trade marks went beyond the acceptable “fair use” in the sale of spare/compatible parts.
The Court ordered the respondent to cease use of the FORD trade marks, to remove the infringing products and marketing materials, to pay the claimant Euro.- 22,034 as damages and to publish the judgment in a specialised magazine.
As far as this Class 46 member can tell, no appeal has been brought against this judgment.
An interesting point: the claim was filed early September 2008, and the judgment is dated September 1, 2009. This clearly shows that the two operating Spanish CTM Courts (both based in Alicante) are still a fast venue, despite the current backlog (829 pending cases according the reported Judgment).
Those wishing to know more, please find the 20 pages-long judgment here (in Spanish).
Posted by: Ignacio Marques @ 10.04Tags: Spain, infringement.,
Sharing on Social Media? Use the link below...Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA1498
