Your company has been a victim of a Trademark Law violation and has not been able to solve it through out-of-court settlement. Possibility of choosing Court.
It is well known that the judicial process is an effective way to resolve trademark conflicts, however they are usually long and costly procedures for the parties.
For the above reasons, judicial actions are always recommended as a last resort to resolve a conflict.
Therefore, once your company has decided to go to the Courts, it is necessary to be clear where the trial would take place and based on what trademark records we will carry out such actions.
If the violation is of a Spanish Trademark or an International Trademark with effect in Spain, the competent Courts will be those that the plaintiff decides between:
Mercantile Courts of the city where the Superior Court of Justice of the Autonomous Community of the Respondent’s place of residence is located.
Mercantile Courts of the city where the Superior Court of Justice of the Autonomous Community was located, where the violation occurred or the effects occurred.
It will have the same choice, also the Actions for Unfair Competition, which may be chosen between the Courts of the domicile of the defendant, or the place where the unfair acts occurred.
In contrast, if the violation is a Community Trademark, in accordance with the Community Regulation, there is a special jurisdiction for infringements of the Community trademark as well as in cases of Nullity and Expiration. In Spain, this special jurisdiction corresponds to the Community Trademark Courts located in Alicante, which is the seat of the Office for Harmonization in the Internal Market, OHIM, in other words.
For all of the foregoing, when your company owns both a Spanish and a Community trade mark, and both trademarks have been infringed, it is necessary to establish a strategy regarding which courts to choose, depending on the forum chosen, should be taken into account. Account extra expenses, such as transportation costs.
As an example, a Galician company has repeatedly violated the brand of its company located in Barcelona, and its company owns both Spanish brand and community brand. Your company may decide whether to file the trademark infringement claim in:
La Coruña, basing its demand on the Spanish brand.
Alicante, basing its claim on the Community trademark.
Leaving aside the costs, it is usual not to give the defendant any facility because filing the claim in La Coruña is facilitating the defendant, because apart from the decision, has a proximity to the courts of his city.
It is customary in these cases for the Barcelona company to present the claim based on the Community trademark and thus oblige the Galician company to have to travel to Alicante to pursue the suit.
It is always advisable not to reach these extremes and try to reach a friendly agreement before entering lawsuits, however, come to this scenario, you have to mark the strategy that suits your business.
Source: Abogado Freelance