Updated Friday, February 9, 2024-12:33

  • TV The Supreme Court forces Telecinco to suspend the broadcast of Pasapalabra "immediately"

The Civil Chamber of the Supreme Court has annulled the sentence on


to compensate

ITV Studios

for infringing the rights of the


brand , considering that the repair of the damage caused was covered by the compensation that


was already ordered to pay in the first lawsuit maintained by both companies, related to the intellectual property rights over the television format and the title of the program.

In this case,

infringement of the EU word mark


was being studied . The Supreme Court indicates that although the infringing conduct caused damage that could be compensated by any of the criteria provided for in article

43 of the Trademark Law

, in this case the repair of the damage was already covered by the compensation granted in the first lawsuit.

The Contentious Court sentenced Mediaset to pay ITV the amount of 5,400,000 Euros in 2019 in relation to the

Pasapalabra Heads of Agreement

contract , a payment that was ratified by the Provincial Court, which also determined to compensate the British company since February 2010 with 454,218 .99 euros, as well as the amount of 1,106,000 euros.

In said lawsuit, the same entity invoked, for the same facts (unauthorized use of the name


to identify a TV program and in


), the infringement of the intellectual property rights it had over the title of the program


. According to the judges of the Supreme Court, in a case like this, in which the same conduct infringed


's intellectual property right

over the name


, due to its use without authorization, and the rights over the


word mark , and the property damage reported was still the same, once the claim for compensation under the protection of intellectual property rights was estimated, in which the criterion of the benefit obtained by the infringer was chosen, it was not possible to reiterate later a condemnation of compensation for the same "damage." under the protection of trademark law, even if another criterion (that of the hypothetical royalty) had been used.

The repair of the damage is already covered with the conviction of the first lawsuit (television format and title), concludes the Chamber. It adds that, in the hypothetical case that the actions exercised by ITV in both lawsuits could have been accumulated, in the same procedure,

the estimation of the infringement of ITV's intellectual property right on the title and the estimation of the infringement ITV's trademark rights would not have allowed the compensation to be duplicated

if, as is the case, the financial loss is the same (the economic loss suffered by the unauthorized use of the name


to identify the program and the merchandising).

This is because the damage suffered by ITV to its intellectual property rights and its trademark rights, as assessed by the lower courts, is coincident and are not different damages.

In the second lawsuit between both companies that has now been resolved by the Supreme Court, the Commercial Court number 1 of Alicante fully upheld ITV's appeal and

sentenced Mediaset to pay compensation of 8.7 million euros plus any subsequent damages. occurring from December 31, 2017

until the effective cessation of the infringement. The Alicante Court, which resolved the appeals, modified the criteria for calculating compensation.

ITV appealed against this last ruling, whose appeal has been dismissed, and


, which argued that all of the damages for the use of the name


, both for the identification of the TV program and for the merchandising, had already been compensated by the ruling handed down in the first lawsuit over the format and title of the TV program, an argument that the Supreme Court has accepted.