Conflicts between Registered Trademarks and Domain Names. Ruling of the Spanish Supreme Court of March 2, 2017, "La informacion"

Sunday, 23 of April of 2017

The ruling no. 151/2017 of March 2, 2017 of the Spanish Supreme Court (ECLI: ES:TS:2017:726) has put an end to the dispute between LA INFORMACIÓN, S.A. (the claimant in the first instance, referred to as LA INFORMACION) and DIXI MEDIA DIGITAL, S.A (appellant both before the Appeal Court of Madrid and the Spanish Supreme Court, hereinafter as DIXI).

One of the issues discussed between the parties was whether the owner of a trademark registered after the registration of a domain name could ban the use of that domain name in order to promote services identical or similar to those included in the registration at hand.

In particular, DIXI registered in 1998 the domain name www.lainformació domain that was not used until 2009, year in which it began to be used to promote a digital newspaper. On its part, LA INFORMACIÓN registered in 2006 the Spanish trademark 2699728 "GRUPO LA INFORMACIÓN" (word) for several products and services in classes 16,35, 38 and 41 (including the electronic publication of books, magazines and newspapers).

To deny that the ius prohibendi of the trademark of LA INFORMATION reached the use of the terms LA INFORMACION on its domain name, DIXI claimed that - in essence - "everything was a mere matter of priority". Thus, and considering that the domain name at stake was registered in 1998 and the mark in 2006, the second would not be opposable to the first.

The Supreme Court, however, denies the validity of the argument.

What is relevant in this case is the infringing use of the domain (giving access to a digital newspaper), and not the mere registration (which is not associated with any specific products or services).

The infringing activity started in 2009, and as such is later than the registration of the mark of LA INFORMATION (2006). Therefore, if the priority principle should be applied as DIXI claims, the registered trademark of LA INFORMACION has priority over the infringing conduct analyzed, conduct that therefore is fully attackable and punishable.

The decision seems logical and correct. However, and going a step further, we understand that even assuming that such use was prior to the trademark registration, there would be infringement. The acquisition of a domain name (or its use) does not give any type of right or defense of any kind, not to mention that in Spain the figure of pre-use does not exist in trademark law. Thus, we understand that even if the infringing use were prior to the registration of the mark at hand, it would be attackable.