Compensation for trademark infringement cannot be claimed if previously compensated in other proceedings for intellectual property infringement (“Pasapalabra”)

1. The litigation that has arisen in Spain in connection with the television programme "Pasapalabra" is well known to the public, having been widely reported in the mass media. Very briefly, the details of the dispute were as follows: The owner of the television format authorised a third party to produce and broadcast a programme in accordance with that format. However, the third party unilaterally withdrew from the agreement and brought an action in a Madrid Companies Court to have it declared void. The foregoing in turn gave rise to a counterclaim in which the other party brought an action for breach of contract, as well as actions for infringement of intellectual property over the format of the programme and its title "Pasapalabra". All these actions gave rise to various rulings at first instance and on appeal and to a Supreme Court judgment in which - without going into further detail - the counterclaim and the infringement of the exclusive right in the format and title of the programme were upheld and payment of a certain amount of compensation was ordered.

2. It so happens, however, that while those proceedings were being conducted, the proprietor of the television format brought a subsequent action to the European Union Trademark Court, invoking the provisional protection of the EU trademark application relating to the sign “Pasapalabra”, to which another action for infringement of that EU trademark was subsequently joined, once that distinctive sign had been granted.

In the context of these joined trademark proceedings, the Supreme Court (Civil Division) has recently pronounced itself in its interesting judgment no. 144/2024 of 6 February (ECLI:ES:TS:2024:482)

3. Two points in particular stand out from the content of this judgment:

a) Firstly, the High Court confirms the rejection of the lis pendens exception raised in relation to the first lawsuit (and, insofar as a final and conclusive judgment has already been handed down therein, the Court also refers to the non-existence of res judicata). This is because, although the parties are identical and the facts can also be considered substantially the same, the cause of action (causa petendi) is not. In the first proceedings, the counterclaim is filed for infringement of copyright in the television programme format and title, whereas in the second proceedings, the actions brought are based on infringement of trademark rights (first of the application and subsequently of the trademark already granted). In the words of the Supreme Court, "the actions brought in this second lawsuit are different from those brought in the first, insofar as the exclusive right infringed by the same conduct is different; and it so happens that they could not be joined to the counterclaim in the first lawsuit", "because the Madrid Court lacked subject matter jurisdiction, since, as a European Union trademark was involved, a special venue, that of the European Union Trademark Court, applied".

b) Secondly, the Supreme Court judgment referred to above is important because it states that, although the facts of the case involve both infringement of intellectual property rights and infringement of trademark rights, the losses claimed in both lawsuits resulting from those infringements is the same. Therefore, "once the claim for compensation under intellectual property rights has been upheld, in which the account of profits was the chosen remedy, it was not possible to later repeat a compensation award for the same "losses" under trademark rights, even if calculated on another basis (hypothetical royalties). Reparations are already covered by the order in the first lawsuit (TV programme format and title)".