Supreme Court Ruling 1298/2025, issued on 24 September by the Civil Chamber, marks a significant milestone in industrial property law and in the procedural interpretation of the Spanish Civil Procedure Act (LEC).
This decision declares that the supervening lapse of a registered trademark due to non-use constitutes an exception to the principle of litispendence (Art. 411 LEC), as it deprives the opposing party—holder of the lapsed mark—of legitimate interest. In doing so, the Supreme Court refines the strict application of that principle, introducing the flexibility provided for in Art. 413.1 LEC to address supervening circumstances during proceedings that substantially alter the legitimate interest of the parties in dispute.
The Supreme Court’s ruling focuses mainly on two provisions of the Civil Procedure Act:
- Article 411 LEC: establishes that jurisdiction and procedural prerequisites are determined at the time of filing the claim, implying that subsequent changes are, in principle, irrelevant.
Consequently, the general rule is that the court’s decision must refer to the factual and legal situation existing when the claim was filed.
- Article 413.1 LEC: provides an exception, allowing for subsequent events that remove legitimate interest from the claims made to be taken into account.
In this case, the Chamber recalls its earlier case law (Supreme Court Judgments 701/2022, 569/2022, 241/2013, among others) and concludes that the lapse of a prior trademark is one such circumstance that deprives the defendant of legitimate interest to maintain opposition, since it would have ceased to be the holder of a mark with registration priority during the course of judicial proceedings.
The Court also points out that a reasonable interpretation of Art. 413.1 LEC must prevent the parties from having to initiate a new procedure to allege supervening circumstances that alter the interests in dispute. Requiring a judgment to be issued while ignoring the lapse of the earlier mark would run counter to the right to effective judicial protection (Art. 24 Spanish Constitution).
Doctrinal significance and practical application
The judgment is particularly significant on several fronts:
- Jurisprudential doctrine: the Supreme Court sets precedent by establishing that the supervening lapse of a trademark must be considered by the courts, even if it occurs after the filing of the claim.
- Exception to litispendence: the supervening lapse of the mark is a situation to which the exception under Art. 413 LEC applies.
- Legal certainty: it prevents courts from issuing rulings on extinguished legal situations, ensuring coherence between the process and the factual and legal reality existing at the time of judgment.
- Coordination between administrative and judicial proceedings: the ruling recognises the immediate effect of a lapse declared in administrative proceedings, even when it occurs after the judicial process has begun.
The doctrine established by the Supreme Court has immediate implications. For trademark applicants, it strengthens the position of those whose registration has been refused due to opposition from marks that may later be cancelled for non-use. For trademark holders, it underlines the obligation of genuine use to avoid losing ongoing legal actions based on such marks. Finally, it will also influence procedural practice, as courts now have clear guidance on how to incorporate supervening facts concerning the prior mark into judgments, enhancing procedural economy and effective judicial protection.
Overall, this ruling brings greater legal certainty to economic operators, reinforces system coherence, and opens the door to a more flexible interpretation of the principle of litispendence. Its impact will extend to trademark portfolio management strategies, where consistent and effective use once again proves essential to maintaining exclusive rights.
Teresa González.
IP Lawyer
PONTI & PARTNERS.
