Sönke Lund participates in the IR Global Jurisdictional Guide to Trademark & Copyright


Intellectual property and the challenges of globalisation 

When the US Supreme Court recently ruled that Booking.com could trademark its domain name, the decision was a game changer for online businesses the world over.

The court decided by an 8-1 ruling that adding a “.com” combination to a generic word is no longer restricted under US trademark law. The US Patent and Trademark Office had initially denied the registration by Booking.com, arguing generic names were ineligible for trademark protection. However, this was overturned by the court which stressed consumers did not view booking.com as a generic term but as a brand offering online hotel reservations. Following the ruling, Booking.com said the decision was a good example of how the legal system can evolve to reflect the complexities of the digital age, heralding the successful conclusion of the case as a victory for any brand owner who has invested to build a global, digital brand.

Although the ruling will have a huge impact on trademarks far beyond the borders of the US, global intellectual property legislation remains a patchwork of interlinked bilateral and multilateral agreements that work in tandem with national laws in different jurisdictions.

Do you see any emerging trends or potential upcoming developments in your country’s trademark law?

Due to the COVID-19 situation it is difficult to see and to measure upcoming trends and developments in Spain. The most relevant legal developments were introduced by virtue of the Royal Decree-Law 23/2018 which amended the Trademark Act and implemented the Directive 2015/2436 to the Spanish legislation.

Among the most significant novelties introduced by the Royal Decree-Law, the concept of a trademark, which is a sign that serves in commercial transactions to distinguish the products or services of a company from those of other companies, remains unchanged. However, an alteration is introduced as to the way in which the intangible property applied for is delimited for registration purposes. From now on, in view of the technological advances, it is only required that the sign must be suitable for reproduction in the Trademark Register, without further requirement and without specifying the means to be used, but requiring that this reproduction needs to be clear, precise, self-sufficient, easily accessible, intelligible, durable and objective and allows the authorities and also the general public to determine the object of the protection granted to the owner. This will make it possible to use in the reproduction of the technology available at any given time and suitable for those purposes.

Two important changes have been introduced by the new legislation, which, although they were already indirectly included in the former legislation, are clearly positioned now: on the one hand, it is established that the trademark right cannot be invoked to exempt its owner from responding to actions against him for the violation of other industrial or intellectual property rights with a prior priority date. On the other hand, the licensee’s power to file trademark infringement actions has been strengthened with special regulations in the case of an exclusive licensee, who may initiate the action if the – on forehand requested – trademark owner does not do so

In your jurisdiction, what options are available to a trademark holder when applying rights or enforcement rights? What protection is there for unregistered names and/or brands?

The Trademark Act provides that all signs can be registered as a trademark provided they distinguish goods or services of different undertakings and the competent public bodies and the public is enabled to determine the protected subject.

In case of infringement, besides bringing criminal actions, the trademark holder or the licensee may bring civil action against the alleged infringer before the competent Commercial Court at the infringer’s domicile. In line with the EUTM Regulation, the exclusive jurisdiction over EU trademark infringement cases, or for revocation or declaration of invalidity of EU trademarks, has the EU Trademark Court in Alicante. Important to know is that in the event of unauthorised threats of trademark infringements, the trademark holder may prohibit acts carried out in the course of trade, as stocking, importing or exporting, or putting on the market, when the risk exists that packaging, labels, tags, security or authenticity features or devices, or other means to which the trademark is affixed, would mean the infringement of trademark holder’s rights.

Further, although under Spanish law discovery or disclosure procedures do not exist, the Spanish Civil Procedural Act establishes a “preliminary proceeding” in which the court, on request of the claimant, may require information about the origin and distribution network of the infringing goods, i.e. identification of any person that has been involved in the commercial process, including wholesalers and retailers, and quantities of the produced or commercially processed goods and prices etc.

 In general, the trademark holder may bring a civil claim searching for the issuance of an injunction, requesting the cease and desist of the infringing conduct. Regarding the calculation of damages, Spanish law – in line with the Enforcement Directive – enables the right holder to claim the loss suffered and lost profits as a result of the infringement. 

The lost profit may be calculated on the grounds of the following alternatives: The infringer’s profit, the right holder’s lost benefits or the amount that the infringer would have paid by entering a license agreement for the use of the trademark. Besides all that, the right holder may claim for any additional measures to avoid the continuation of the infringement, the destruction of the infringing products and the publication of the court decision in the press.

How is global innovation and digitalization shaping the advice you give your clients and what should they be aware of?

Technologies are becoming increasingly important in day-to-day business and boundaries are being broken by the Internet and e-commerce in practice. On the one hand, this means that goods and services advertised over the Internet are offered worldwide, which makes the brand or trademark more vulnerable to attack by third parties. These attacks may be due to the fact that the trademark infringes third-party trademark rights or that it may be exposed to acts of infringement by third parties, provided that trademark protection does not exist in the third country. Therefore, more than ever before, it is important to consider how, where and when goods or services are to be offered via the Internet and how our clients can prevent attacks in international business.

A further decisive aspect to be aware of is the increasing “technologization” of goods and services, whereby it is not always easy to differentiate between competing trademarks and in which classes they are competing. This becomes particularly clear, for example, in the case of Software as a Service or comparable programs, through which algorithms are used to provide a service for the data processing of a software (good), which is not directly related to the good or its production (service).