Background

JUDGMENT: Supreme Court of September 28, 2007 (Roj: STS 6154/2007, Nº de Recurso: 4050/2000 – JUR.315456), DTI case

This decision of the Supreme Court, upheld the appeal we filed on behalf of DISTRIBUCION DE TECNOLOGIA INTERNACIONAL S.A. (DTI) invoking its trademarks and company name, revoked the decision of the Audiencia and ordered to DEPARTAMENTO TECNICO INMOBILIARIO S.L. to cease the use of the acronym “DTI” and the sign “DEPARTAMENTO TECNICO INMOBILIARIO” as trademark and/or company name identifying real estate services and/or other services, products and/or activities related to the real estate business. And in summary, based on Law 3/1991 on Unfair Competition:

1. it declared the concurrence of confusion determining unfair competition when a behavior is observed in the market that creates in consumers the risk of association with respect to the origin of the service, that is, the idea of the same business origin (art. 6º ), and it is considered unfair (art. 12 ) the undue advantage, for one’s own benefit or that of others, of the advantages of the industrial, commercial or professional reputation acquired by another in the market, and specifically, as in the case, using the distinctive sign of another; and
2. ordered the defendant:
   1. To cease immediately and for the future in the use of the names “DTI” and/or “DEPARTAMENTO TECNICO INMOBILIARIO” as a trademark and/or company name identifying real estate services and/or other services, products and/or activities related to the real estate business, or any other substantially confusing or associable with the name or acronym “DTI”; 2º To withdraw from the market the posters, catalogs, advertisements, advertising brochures, letters and corporate correspondence that use the trademark and/or company name “DTI” and/or “DEPARTAMENTO TECNICO INMOBILIARIO”.
   2. To deliver for destruction all printed models, packaging, advertising material, labels, and any other documents incorporating the name “DTI” and/or “DEPARTAMENTO TECNICO INMOBILIARIO”;
   3. To the publication at the defendant’s expense of the judgment (…) in two newspapers of provincial circulation and in two others of regional scope, as well as in all those social media that the defendant had used to advertise such distinctive signs;
   4. To modify its corporate name within a maximum period of two months (…), replacing it with another non-confusing one that does not incorporate the name or the initials “DTI”;
   5. To the payment of the costs caused in this proceeding“.

On the other hand, it ruled out the award of damages for lack of sufficient evidence.