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Domain name and trademark conflicts

The registration of domain names is governed by its own national and international legislation (depending on the type of domain) and is not among the competencies of the Spanish Patent and Trademark Office. Conflicts relating to both types of domain name should be dealt with by International Arbitration Organisations or the Courts.

General information on this matter (taken from the web page of the Intellectual Property Register):


The temporal priority of the corresponding sign is of significance

A) Priority trademark or trade name: the registered holder can begin legal action in the Courts of Justice against anyone who subsequently adopts the same name or one that could be confused with their name for the same or similar business activities and, among other measures, may request that the company ceases to use the distinctive sign (section. 34.3.d. Trademark Act) and that they change their corporate name. Furthermore, the registration bodies responsible for granting or verification of names of incorporated entities will refuse the name or company name requested if it coincides or may lead to confusion with a famous or well-known trademark or trade name in the terms established under the Trademark Act, without authorisation of the trademark or trade name holder (Fourteenth Additional Provision of the Trademark Act).

Against those who use that distinctive sign as a domain name, together with the possibility of going to the Courts of Justice (section. 34.3.f. Trademark Act), they can turn to to make use of the administrative procedures or verification and cancellation if the domain name in question meets the criteria for such action.

B) Previous corporate name: an entity that has duly registered their corporate name can follow administrative channels to oppose any attempts by third parties to register their corporate name as a trademark or trade name, under the circumstances provided for in art. 9.1.D of the Trademark Act and can also go to the Courts of Justice to request the nullification of said registration. They can also defend their rights against those parties who register their company name as domain name in the terms described under A) above.

C) Previous domain name: anyone with a duly registered domain name can go to the Courts of Justice to take action against those who register said name as a trademark, trade name or corporate name, claiming unfair competition, bad faith (art. 51.1.B Trademark Act) and any other legally founded claims. These types of legal actions are particularly difficult.

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