Conflicts between company names and trademarks / trade names are quite often in practice.

The Spanish Supreme Court stated in such disputes that the right holder was only allowed to prohibit the use of a company name of a company (and request its modification) when while matching with the registered sign a use as a trademark/trade name has been evidenced.

However, this doctrine has been tempered by the Supreme Court. A refreshed example of it, is the April 12, 2013 decision issued by its Civil Chamber. Although in some cases there could not be a trademark use per se, an infringement may happen if according to the circumstances, a likelihood of confusion arises amongst consumers.

In the case at hand, the conflict took place between two wineries belonging to different designations of origin (Ribera del Duero and Rioja), confirming that even operating in different territorial areas, a trademark / trade name infringement of the complainant (“VALSARDO”) occurred because of the defendant (BODEGAS VASALCRO, S.A.) created a reasonable risk of linkage between both companies.

The decision also rules out to consider the use of the own name and address (Article 6.1 of Directive 89/104/C CTM) as a limit to trademark rights because such use cannot be understood as a fair practice when the sign is confusingly similar to another one previously  registered by a third party.

This line of jurisprudence acts as a classification criterion in complex cases in which it is difficult to establish the border between company names and trademarks and trade names.