The Court of Justice of the European Union (CJEU) has just answered the question referred for a preliminary ruling by the Spanish Supreme Court in the context of infringement proceedings concerning the trademark ZARA, which have been pending before the Spanish courts for more than 10 years. In fact, the process started so many years ago that the provision invoked as a defence has undergone [significant] changes after having been reworded in Directive 2015/2436. Perhaps, it is this change of the precept that will tip the balance in favour of Inditex, who, until now, had lost in every instance.
A bit of context
In 2010, the online and mobile subscription company Buongiorno MyAlert launched an advertising campaign in which, for contracting one of their services, they raffled €1 000 in cash. However, they immediately after stated “I would like to win it like this: €1,000 ZARA gift cardâ€. This promotion was advertised in banners on websites and social media, reproducing the ZARA brand both in its word version and in the representation of a “gift cardâ€.
Inditex filed a lawsuit before the Commercial Court of Madrid for infringement of its famous trademark. However, neither the Commercial Court nor the Provincial Court of Madrid accepted the plaintiff’s claims, considering that the limitation of article 6(1)(c) of Directive 2008/95 transposed to Spanish law in article 37(1)(.c) of the Trademark Act (TA) -legal framework which applies here for temporary reasons- came into play.
