Accused of infringing a trade mark: how to defend yourself

The case, in five lines

What is brought

Defence against the trade mark infringement action under articles 34 and 41 of the Trade Mark Act: the non use plea of article 41.2, the limits of articles 36, 37 and 41 bis, and a counterclaim for invalidity (arts. 51 and 52) or revocation (art. 54). Before litigation, an application for revocation or invalidity before the OEPM (the Spanish Patent and Trademark Office), a protective letter against interim measures, or a negative declaratory action of non infringement.

Before which court

The sección de lo mercantil (commercial section) of the Tribunal de Instancia (the first-instance court); for trade marks, the one in the city where the Tribunal Superior de Justicia (High Court of Justice) of the defendant's autonomous community sits or, at the owner's choice, that of the place of infringement. If the mark relied on is an EU trade mark, the EU trade mark courts seated in Alicante. Direct applications for invalidity or revocation go to the OEPM.

Deadline

The owner's action prescribes five years from when it could have been brought (art. 45.1 of the Trade Mark Act), and in continuing sales each act opens its own period; damages only reach the five years before the claim (art. 45.2). For you, the unforgiving deadline is procedural: twenty working days from service to file the defence and any counterclaim (arts. 404 and 406 of the Civil Procedure Act). There is no statutory deadline to answer the burofax, but from the day it arrives you may owe damages (art. 42.2 of the Trade Mark Act).

Who can bring it

The claimant is the owner of the registered mark, or of an unregistered well known mark (art. 34.7), against whoever uses the sign in the course of trade: manufacturer, importer, distributor or online shop; the injunction may also be directed at intermediaries (art. 41.3). You may counterclaim for invalidity or revocation and, before any claim, apply for them before the OEPM as an aggrieved party (art. 58.1.a); relative invalidity can only be sought by the owner of the earlier right on which it is based.

Financial risk

If you lose: injunction, withdrawal and destruction of the marked goods, publication of the judgment at your expense, damages with a minimum of 1% of the turnover made with those goods without any proof (art. 43.5 of the Trade Mark Act) and, as a rule, the other side's costs. If the judgment orders you to change your company name and you do not do so within a year, the company is dissolved by operation of law (seventeenth additional provision of the Act). If you win but refused to negotiate without good cause, you may be denied your costs.

The burofax is not a lawsuit, but it already has effects against you

Nobody is obliged to answer a burofax within the time the sender chooses, and the ten days usually given have no basis in any rule. But it would be a mistake to read it as a mere letter. Article 42.2 of the Trade Mark Act provides that anyone who neither affixes the sign to the product nor is responsible for its first placing on the market is liable for damages only if sufficiently warned by the owner, with the mark identified and a demand to stop, if they acted with fault or negligence, or if the mark has a reputation. That burofax is precisely that warning: every sale made afterwards goes into the calculation.

Moreover, the burofax is probably the attempt at negotiation that Ley Orgánica 1/2025 requires of the owner before suing. Its article 5 makes prior recourse to an appropriate dispute resolution method a condition for admitting declaratory civil claims, and treats it as met by direct negotiation between the parties or between their lawyers, provided the subject matter matches that of the future case. It does not apply, however, to applications for interim measures before the claim or for preliminary inquiries, nor before the OEPM, which is an administrative route. And refusing has a cost: the Civil Procedure Act, amended by that same law, bars a costs award in favour of a party who, without good cause, refused to take part in the method to which it was effectively invited.

That is why the reply is neither improvised nor skipped. It is sent within a reasonable time, without admitting the infringement or the sender's right, asking it to identify the registration number, the goods or services relied on and the date from which it says the use exists, and leaving a genuine negotiation open, which protects your position on costs. What is not done is to show your hand: if the other mark is vulnerable for non use, announcing it in the reply only prompts its owner to start using it before you apply for revocation.

Before arguing about confusion, check which mark is being asserted and for what

Article 34.1 makes the exclusive right arise from registration, not from use or from the burofax. The first step is to obtain the mark's history from the OEPM or, if it is an EU or international mark, from the relevant register: filing date, date the registration became final, goods and services granted, renewals and current owner. It is common for the demand to rely on an application not yet granted, a mark registered for goods other than yours, an unrenewed mark, which the OEPM must declare revoked under article 54.3, or an owner who is no longer the one signing.

With the title in hand, the dispute is read through article 34.2. If your sign is identical and the goods are too, confusion need not be proved. If there is only similarity, the owner must establish a likelihood of confusion, which includes the likelihood of association, and that assessment is global: the overall impression both signs make on the average consumer of the sector, reasonably well informed and reasonably observant, their visual, aural and conceptual similarity, and how close the goods really are. The Tribunal Supremo (the Supreme Court) and the Court of Justice of the European Union agree that sharing a descriptive element, or one commonly used in the sector, carries little weight: a weak mark has narrow protection.

The exception is the mark with a reputation. Point c) of article 34.2 protects it even where the goods are not alike, if use without due cause takes advantage of or harms its reputation, and article 42.2 allows damages to be claimed for its infringement even without a prior warning. It is worth distinguishing, without self deception, whether the sender really is a mark known to the general public or an ordinary mark presenting itself as one: reputation must be proved by whoever relies on it, and it is not presumed from the tone of the burofax.

Proof of use: the defence that brings down the most claims

Article 41.2 is the defendant's most effective tool. The owner may prohibit your sign only to the extent that its mark could not be declared revoked for non use when the claim is filed and, if you so request, it will have to show that it put the mark to genuine use during the five years before the action was filed, for the goods or services on which the claim relies, or that there were proper reasons for non use. The condition is that the registration had become final at least five years before the claim. It is not a defence the judge raises on its own motion: it must be expressly requested in the defence.

The use that counts is genuine use under article 39: real use, aimed at creating or keeping a market outlet for the goods, not token sales staged to save the registration. The Court of Justice of the European Union has consistently held so, and the Spanish courts apply it. If the owner only proves use for part of the registered goods, the claim stands only on that part, which often moves the comparison away from what you sell.

The five year window is counted backwards from the claim, not from the burofax, and that has a consequence almost nobody notices: an owner you warn that its mark is dormant can start using it and, by the time it sues, already have use within the period. That is why, when the other mark has gone unused for years, the move is not to argue it by letter but to apply for its revocation before the OEPM before the claim arrives. In that procedure, the Regulation implementing the Trade Mark Act gives the owner two months to prove use and, if it fails to do so, revocation is declared.

Once sued, the mark can only be attacked by counterclaim, and within twenty days

Since 14 January 2023, the first additional provision of the Trade Mark Act divides jurisdiction: invalidity and revocation are sought directly before the OEPM, and before the civil courts only by way of counterclaim. Article 61 bis.5 closes the middle door: once the infringement claim has been filed, the defendant can no longer defend itself by applying to the OEPM for invalidity or revocation, and must bring a counterclaim before the same court. Arguing that the mark is invalid as a mere plea in the defence, without counterclaiming, leaves the other side's title untouched.

The counterclaim goes in the same document as the defence, within the twenty working days of the ordinary proceedings, and rests on three families of grounds. Absolute invalidity under article 51, where the sign should never have been registered because it lacks distinctiveness or is descriptive, unless it acquired distinctive character through use before the counterclaim, or where it was applied for in bad faith; in both cases the action is not subject to any time bar. Relative invalidity under article 52, if you held an earlier right. And revocation under article 54, for non use, for having become the common name of the product, or for misleading the public. Bad faith, which we cover in its own guide, is usually the trump card when the sender registered the name knowing you were already using it.

Two rules make the counterclaim a single shot. Article 52.4 prevents anyone who has already sought relative invalidity from bringing another claim based on an earlier right it could have raised the first time, so all prior rights are relied on together. And article 61 bis.3 allows the court, at a party's request, to stay the infringement case if the mark was already under challenge before the OEPM, so an application for revocation filed after the burofax and before the claim can halt the proceedings until the Office rules with finality.

The substantive defences the law gives you, and where they fail

Article 37 sets limits the owner cannot get around: use by a natural person of their own name or address, use of indications concerning the kind, quality, intended purpose, value, geographical origin or time of production of the goods, and use of someone else's mark to identify the owner's goods or indicate their intended purpose, such as accessories or spare parts. Two nuances decide these cases. Since the reform that came into force in 2019, the own name limit only protects natural persons, not a company name. And all these uses are allowed only if they accord with honest practices in industrial or commercial matters: a spare part advertised as compatible passes; one that copies the get up of the original does not.

If you resell genuine goods, article 36 lays down exhaustion: the owner cannot prohibit use of its mark for goods put on the market in the European Economic Area by the owner or with its consent. It has two limits worth knowing before relying on it. It does not cover genuine goods placed on the market outside the European Economic Area and imported without consent, and it gives way where there are legitimate reasons, especially if the condition of the goods has been changed or impaired after they were marketed. This defence is won or lost on the documentary traceability of your supplier.

What does not protect you, although almost everyone believes it does, is the mere passing of time. Acquiescence under article 52.2 only bars an application to invalidate a later registered mark that has been used for five consecutive years with the earlier owner's knowledge, unless it was applied for in bad faith, and article 41 bis then prevents that owner from prohibiting its use. If you never registered your sign, that defence does not exist: all that is left is the prescription period in article 45, which in continuing sales runs afresh with each act, and the rule that damages only reach back five years before the claim.

What is at stake: interim measures, damages and even the company

The owner does not need to wait for judgment. It can apply for interim measures, even before the claim and without hearing you, and for those article 5.3 of Ley Orgánica 1/2025 does not require the prior attempt at negotiation. The preventive defence exists and is rarely used: the Patents Act, applicable to trade marks under the first additional provision of the Trade Mark Act, allows anyone who fears an application for interim measures without a hearing to file a protective letter (escrito preventivo) with the competent court to set out its position. After a burofax that threatens interim measures, it is the way to make sure the judge hears you before deciding on your shop.

If you lose, article 41 allows you to be ordered to stop, to withdraw goods, packaging and advertising from the market, to destroy them at your expense and to publish the judgment. Damages under article 43 are calculated, at the owner's choice, on the profit it lost, the profit you made, or the royalty of a notional licence, plus investigation costs, and paragraph 5 grants it in every case, without proof, 1% of the turnover you made with the marked goods. That base is those goods, not your whole business: keeping separate accounts for the disputed line limits your exposure.

There are two consequences people discover too late. The seventeenth additional provision of the Trade Mark Act provides that, if the judgment requires a change of company name and it is not made within one year, the company is dissolved by operation of law and the Registrador Mercantil (Companies Registrar) cancels it of its own motion. And the burofax changes your criminal exposure: article 274 of the Criminal Code punishes certain uses of a registered mark for commercial purposes and with knowledge of the registration, and from the moment you receive it that knowledge is hard to deny. That is why the strategy is decided in days, not when the claim arrives.

How we run the case, step by step

1. 1

   Fixing the date and freezing your own evidence

   We keep the burofax with its delivery receipt, which marks the date from which you may owe damages, and today we gather the evidence of your use: first invoices, domain registration, archived versions of the website, catalogues and dated posts, before anyone changes anything.

2. 2

   X-raying the other side's title and use

   We obtain the registry history of the mark relied on (goods, date the registration became final, renewals and owner) and investigate its real use on the market, with a private investigator if needed, to know whether there is proof of use to demand and revocation to seek.

3. 3

   A measured reply and a protective letter

   We reply without admitting anything, asking for precise identification of the right and opening a genuine negotiation that meets the LO 1/2025 requirement and protects your position on costs. If the burofax threatens interim measures, a protective letter is filed with the competent court.

4. 4

   Attacking the mark before the claim arrives

   If the mark is dormant, descriptive or was registered in bad faith, we apply now for its revocation or invalidity before the OEPM, while that is still possible, so that a stay of the infringement case can be sought later. If what you need is certainty, we prepare the negative declaratory action after formally requiring the owner to take a position and letting one month pass.

5. 5

   Defending and counterclaiming within twenty working days

   Once served, we file a defence expressly requesting proof of use under article 41.2, raising the defences of articles 36, 37 and 41 bis and, where missing, the lack of a prior attempt at negotiation, and in the same document we counterclaim for invalidity or revocation, relying on all earlier rights at once.

6. 6

   Expert evidence and a negotiated exit

   At the audiencia previa (pre-trial hearing) the decisive evidence is fixed (coexistence of signs, the other side's real use, traceability, isolated turnover) and, at any point, we negotiate a coexistence agreement, a period to sell off stock or an orderly change of sign if the risk calls for it.

The law that applies

• Art. 34 Ley 17/2001 de Marcas. Makes the exclusive right arise from registration and sets what the owner may prohibit in the course of trade: an identical sign for identical goods, an identical or similar sign for identical or similar goods where there is a likelihood of confusion, which includes the likelihood of association, and, if the mark has a reputation in Spain, use without due cause that takes advantage of or harms it even for different goods. All of this is without prejudice to rights acquired before the filing or priority date of the mark. It lists the conduct that may be prohibited, including use as a trade name or company name, in telematic networks and as a domain name. BOE-A-2001-23093
• Art. 37 Ley 17/2001 de Marcas. Limits the trade mark right: the owner cannot prohibit a third party from using its name or address where it is a natural person, indications devoid of distinctive character or concerning the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or services, nor use of the mark to identify the owner's goods or indicate their intended purpose, in particular as accessories or spare parts. It applies only if the use accords with honest practices in industrial or commercial matters. BOE-A-2001-23093
• Art. 41 Ley 17/2001 de Marcas. Lists the owner's civil actions: injunction, damages, withdrawal from trade and seizure or destruction of the means of infringement, destruction or humanitarian transfer of the goods, award of ownership and publication of the judgment. Paragraph 2 makes the prohibition conditional on the mark not being revocable for non use when the action is brought, and requires the owner, if the defendant so requests, to prove genuine use in the five years before the claim, provided the final registration is at least five years old. Paragraph 3 allows the injunction to be directed at intermediaries. BOE-A-2001-23093
• Art. 42 Ley 17/2001 de Marcas. Distinguishes who is liable for damages. Whoever affixes the sign to the goods or their packaging, or to the materials covered by article 34.4, and whoever is responsible for first placing them on the market are liable in every case. Other infringers only pay damages if they were sufficiently warned by the owner of the existence of the mark and its infringement, with a demand to stop, or if they acted with fault or negligence or the mark had a reputation. BOE-A-2001-23093
• Art. 43 Ley 17/2001 de Marcas. Sets damages: losses, lost profits, harm to the mark's prestige and investigation costs. At the injured party's choice, they are calculated on the negative economic consequences, including the infringer's profits, or as a lump sum at least equal to the licence fee the infringer should have paid. It allows production of the liable party's documents to be required and grants, once infringement is declared and without any proof, 1% of the turnover made with the unlawfully marked goods. BOE-A-2001-23093
• Art. 52 Ley 17/2001 de Marcas. Governs relative invalidity, sought before the OEPM or by counterclaim where the mark conflicts with earlier rights under articles 6 to 10. Paragraph 2 lays down acquiescence: the owner of an earlier right who has knowingly tolerated the use of a later registered mark for five consecutive years can no longer seek its invalidity for those goods, unless it was applied for in bad faith. Paragraph 4 bars a second application or counterclaim based on rights that could have been raised in the first. BOE-A-2001-23093
• Art. 61 bis Ley 17/2001 de Marcas. Coordinates court proceedings and the OEPM. The court hearing a counterclaim stays it if validity is already challenged before another court or the Office, and the court hearing the infringement may stay it, at a party's request, while an invalidity or revocation is pending. Once sued for infringement, the defendant cannot go to the OEPM as a defence and must counterclaim. The negative declaratory action cannot be brought together with an invalidity or revocation action. BOE-A-2001-23093
• Art. 5 LO 1/2025, de eficiencia del Servicio Público de Justicia. Makes prior recourse to an appropriate dispute resolution method a condition for admitting civil claims, with the subject of the negotiation matching that of the dispute, and treats it as met also by direct negotiation between the parties or their lawyers. It applies to declaratory proceedings under Book II and special proceedings under Book IV of the Civil Procedure Act, save for the excluded matters, and is not needed for interim measures before the claim or for preliminary inquiries. BOE-A-2025-76

Each article checked against the consolidated text published in the BOE (the Spanish official gazette).

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