SPAIN Law and Practice Contributed by: Marina Gómez, Arochi & Lindner
8.2 Effect of Registration The owner of the intellectual or industrial prop - erty right will be presumed to be the person in whose favour the right is registered. 8.3 Costs of Litigating Infringement Actions The costs of infringement proceedings will
use, the term becoming generic or the sign becoming misleading; • substantive grounds – where the alleged infringer holds a prior right or exhaustion; and • procedural grounds – the exceptions of lis pen - dens or of res judicata, expiry of the time limit to exercise the infringement action or lack of legal standing to bring an infringement action. 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) The following applies in accordance with the provisions of Articles 36 and 37 of the TM Act: • The right conferred by the registration of a trade mark will not entitle its proprietor to prohibit a third party from using it for goods put on the market in the European Economic Area under that trade mark, by the proprietor or with their consent (exhaustion of rights). • A trade mark will not entitle the proprietor to prohibit a third party from using it in the course of trade, if the use by the third party is in accordance with honest practices in indus - trial or commercial matters, and from using – (a) their name or address, where the third party is a natural person; (b) signs or indications that are devoid of distinctive character, and that are neither descriptive nor suggestive; or (c) the trade mark, for the purpose of desig - nating goods or services as correspond - ing to the owner of that trade mark or referring to them. Furthermore, the authorisation of the copyright holder will not be necessary in the following cas - es (Articles 31 to 39 of the RLD 1/1996 IP Law): • provisional reproductions and private copy - ing;
depend on (among other things): • the complexity of the case; and
• the volume and type of evidence to be adduced by the parties and the opposing party.
9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement The following grounds of defence may be raised by way of non-infringement: • lack of identity between the signs and/or the goods and services at issue; • the signs and/or goods and services at issue are dissimilar, and there is no likelihood of confusion among the relevant public; and • the alleged infringer is not using the sign as a trade mark, and the alleged infringer is not using the sign in the course of trade. In addition to non-infringement, the following grounds of defence can be invoked: • in a counterclaim – owing to invalidity of the registered trade mark on which the infringe - ment claim is based; • revocation of the registered trade mark on which the infringement claim is based, among others – owing to absence of genuine
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