Probatio Diabolica

Carmenchu Buganza

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Lawyers often use this expression, when a situation where it is virtually impossible to prove a fact or intention need to be faced. However, this does not constitute an impediment to defence, as our legal system provides mechanisms for solving this problem. A good example is the judicial presumptions foreseen in article 386 of the Civil Procedure Law (LEC).

The use of presumptions was prove very effective to show the intentionality in a trademark dispute, in which the defendant was faced to prove that it had not infringed the exclusive right of the plaintiff, the proprietor of the registered trademarks. In addition, the defendant had to prove that the plaintiff had applied for registration of its trade marks in bad faith.

The dispute was solved by the Commercial Court nº 2 of Barcelona, in the Sentence nº 221/2019, of 11 June, applying the requirements emanating from the Jurisprudence of the Court of Justice of the European Union (TJUE), exposed in the case C-529/07. The national judicial body to carry out the analysis of all the pertinent factors of the case at the time in which the application was made for the registration of a sign as a trademark. Those factors were: (i) the fact that the applicant knows or should know that a third party is using an identical or similar sign, which is likely to be confused with the sign to be registered. (ii) The applicant’s intention to prevent the third party from continuing to use the sign. (iii) The degree of protection enjoyed by the prior sign of the third party and the sign applied for (paragraphs 37, 38 and 53).

In our case, the main challenge was to prove the first premise: the applicant’s prior knowledge of the use of the sign by a third party. Because the term was created for an advertising campaign and that was disclose after the application for registration of trademarks. Therefore, it was necessary to demonstrate that, somehow, the applicant for registration was aware of the preparation of the advertising campaign before its dissemination and took advantage of this information to apply for registration of word marks with the name of the product being advertised: “Bocapincho / Bocapintxo”.

In his reasoning, the Magistrate took into consideration all relevant factors and, in particular, the facts established with the evidence provided:

  • The creation and development of the defendant’s advertising campaign, prior to the registration of the marks in question, which used the same word.
  • The possibility that the applicant for the trademarks obtained the information in two different ways. (i) By an employee of the defendant who began working with the plaintiff one day before the application for the marks; or (ii) through one of the plaintiff’s franchisees, who is also a franchisee of the defendant, as he received all the information relating to the advertising campaign days before the disclosure of the same.
  • The identity of the term used in the advertising campaign with the word registered as a trademark.
  • The attitude of the plaintiff, who once the trademarks were registered, sent several requests to the defendant requesting the cessation of the use of the registered sign and the fact that it did not provide proof of the use of the registered sign.

Although prior knowledge was a challenge since we did not have an undoubted proof, it was possible to establish a presumption uniting the accredited facts and putting them in relation to the three requirements that according to the jurisprudence of the TJUE, accredit the existence of bad faith. It is worth adding that the defendant accredited all the requirements. The impeditive intention of the applicant and the protection of the sign by copyright, although the Judgment does not contain an express pronouncement, this circumstance was alleged as one of the causes foreseen in the Trademark Law, which oppose the registration of a sign when the existence of a prior right is accredited.

The Judgment of first instance has appealed, so we must still await the pronouncement of the Court of appeal of Barcelona

Working on this issue has been enriching and has made us reflect on the importance of reasoning, since our job is not only to provide evidence or cite judgments, but also to weave together a logical and well-founded argument.

Carmenchu Buganza