Spain: Historical reputation versus lack of use

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2026

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Spain: Historical reputation versus lack of use

Even James Bond can boast about having ridden on one. Hispano – Suiza was one of the world references of luxury and competition cars at the beginning of the 20th century and was affected by the Spanish Civil War – not being able to relaunch in the market despite its fame.

But this trade mark is still very present and it is back in the news. There has been a curious legal dispute over who is the owner of the trade mark and the Spanish Supreme Court has just resolved it after 70 years.

The founder's descendants have kept the trade mark under their ownership but focused on other markets, such as displaying old models or making miniature replicas. Therefore, they tried to prevent a company from registering the trade mark for manufactured automobiles, establishing that the action was looking for an appropriation of the reputation of the previous trade mark. But on February 8 2017, the decision was published and it established that they have lost exclusivity due to lack of use. The Supreme Court recognised that "the reputation associated with the 'Hispano-Suiza' sign is essentially historical, without a real link to the actual company".

In the different instances, it has been established that even though Hispano-Suiza is a well-known trade mark in the Spanish territory, it is not because of the use of the trade name Hispano Suiza, Automobile Factory, SA, but only because of the memory of the legendary cars, which stopped being manufactured more than 80 years ago.

Time has established that the lack of manufacturing activity, repair and sale of vehicles under the mark in question has caused the loss of the trade mark registrations and trade names in certain markets.

The sentences have decreed that there is no use of prestige or reputation that can associate the business activities developed by the heirs of the original trade mark with the activity that originates the entire real case.

In this case, the question is if the historical reputation of a trade mark is enough to cover different business activities even if it no longer develops the main activity that gave the brand its distinction. At present, the legislation is clear in regards to the loss of trade mark rights for lack of use: no use means you cannot live from the past.

Ramón Moreda


PONS IPGlorieta Rubén Darío, 428010 – Madrid SpainTel: +34 917007600Fax: +34 913086103clientes@pons.eswww.ponsip.com

more from across site and SHARED ros bottom lb

More from across our site

As concerns around the little-known litigation tool increase, practitioners say they are educating their clients on how it can be most effective
Kilburn & Strode and Mewburn Ellis are just two firms that have invested heavily in office space – a sign that the legal industry is serious about in-person working
In major recent developments, Dyson snagged another win against Hong Kong-based competitor Dreame and a new AI-powered UPC platform was launched
Mohit and Sidhant Goel decided not to pursue an interim injunction application so that their client, Communications Components Antenna, could benefit from a fast-track trial
Anita Cade, head of Ashurst’s IP and media team in Australia, discusses why law firms that can pull together capability across different practice areas and jurisdictions stand to gain
INTA’s CEO says London-based firms have registered fewer delegates compared to past meetings in San Diego and Atlanta, and questions the 'ethics' of trying to participate without registering
Lobbies and interest groups are among the interveners in a major dispute over whether courts can set patent pool rates
Benoit Geurts and Coreena Brinck will help the firm ‘accelerate its innovation agenda’, according to its managing partner
News of a trademark row over Taylor Swift’s ‘The Life of a Showgirl’ and Nokia’s expansion of its IoT licensing programme were also among the top talking points
IP attorneys share how the Cox v Sony ruling impacts their counselling strategies, and if the case could influence how courts may assess liability for AI platforms
Gift this article