Tag Archives: Trademarks

The conflict between company names and trademarks (or tradenames)

Thursday, 15 April 2021 11:33

Por Elzaburu

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Conflicts between company names and trademarks (or tradenames) are very common and there has always been considerable debate, both in doctrine and in case law, regarding the relationship and differences between the respective concepts and, specifically, regarding the scope of the exclusive rights conferred by a trademark (or tradename) registration with respect to company names that are identical or similar to such signs.

First of all, it is necessary to identify the differences between the two concepts:

A company name is the designation that serves to identify companies in legal affairs (it will normally appear in the company’s documentation concerning its legal relations, such as invoices, contracts, etc.). Company names are registered at the Company Registration Office and their governing rules are set out in the Company Registration Office Regulations.
A trademark is the name or sign that serves to identify the goods and services of an undertaking in the marketplace and distinguish them from those of other undertakings, and a tradename is the name or sign that serves to identify an undertaking in the course of trade and distinguish it from others that carry out the same or similar activities in the marketplace. Both are registered at the Spanish Patent and Trademark Office and their registration confers on the owner an exclusive right to use them in trade.

What happens when a company name is identical or similar to a registered trademark or tradename? Does the company name constitute an infringement of the trademark or tradename?

The rules governing such a conflict are set out in the following sections of the Spanish Trademark Act [in Spanish]:

14th Additional provision
Article 34

The 14th Additional provision of the Trademark Act establishes a bar to registration aimed at the Company Registration Office: the company registries shall refuse the company name applied for where it is the same as or might give rise to confusion with a reputed trademark or tradename.

In accordance with this provision, it is therefore clear that a new application for a company name cannot conflict with a reputed trademark or tradename. But what happens if the trademark or tradename is not reputed, or if the company name is already registered at the Company Registration Office? Can owners of trademarks or tradenames invoke their exclusive rights to seek the cancellation of the company name or prevent its use?

In these circumstances, it is necessary to rely on Article 34 of the Trademark Act, which is the provision that regulates the rights conferred by a trademark or tradename registration. Under this article, for the owner of the trademark or tradename to be able to prevent a third party from using a sign, various cumulative requirements must be fulfilled, of which, for the purposes of the subject matter at issue, I would highlight the following:

the use must be in the course of trade; and
it must be in relation to goods or services.

It follows from the above that:

The mere registration of a company name at the Company Registration Office does not in itself constitute an infringement of an earlier trademark or tradename registration that the owner of a trademark or tradename registration is entitled to prevent. It is necessary that the company name is used in the course of trade, that is, in the marketplace.
Mere use as a company name, that is, for the purpose that it is intended to serve, namely, to identify the company in legal matters, cannot constitute an infringement of an earlier trademark or tradename registration that the owner is entitled to prevent. The use of the company name must be in relation to goods and services.

Thus, it is ultimately an improper use of the company name, given that, as noted above, that is not its intended purpose, which is to identify the company in legal matters.

In summary, the owner of a registered trademark or tradename is entitled to prohibit use of a company name provided that (in addition to other requirements for infringement, such as confusion, etc.) said company name is used: (i) in the course of trade, and (ii) in relation to goods or services. The entitlement to prohibit infringing use of a company name is also expressly provided for in Art. 34.3 (d) of the Trademark Act.

The above parameters and requirements have been confirmed in case law. Particularly well known in this area is the CJEU’s judgment in the case C-17/06 Céline of 11 September 2007, the principles of which remain valid and are applied by the Spanish courts.

Previously published in Economist & Jurist [in Spanish]

Author: María Cadarso

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Some thoughts on mandatory use of a registered trademark

Tuesday, 17 November 2020 17:17

Por Elzaburu

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I would like to share my thoughts here on the issue of mandatory use of a registered trademark, in the light of the content of some recent decisions handed down by the constituent courts of the Court of Justice of the European Union.

In the Court of Justice’s judgment of 22 October 2020 (C-720/18) concerning the use of Ferrari’s Testarossa (figurative) trademark, I was struck by the citing of a Convention (of whose existence I was frankly unaware) signed back in 1892 between Switzerland and Germany. In this Convention, which is still in force according to the judgment, it is established that the legal disadvantages which, under the laws of the contracting parties, occur when a trademark has not been used within a certain period of time are precluded if use has taken place in the territory of the other party (Art. 5.1).

Based on this circumstance, use of a German trademark in Switzerland shall be valid for the purpose of attesting to use of a German national trademark which, therefore, cannot be revoked, even if it has not been used within the territory of Germany. The paradox that arises is that, as pointed out in the judgment, in the event that the same German trademark were used as a basis for opposing a new European Union trademark application, the opposition would fail if the applicant were to ask for proof of use of the German trademark, given that the use has not been made in the territory of the European Union.

Another judgment on which I would like to comment is the one handed down by the General Court on 23 September 2020 (T-601/19) ruling on the case relating to opposition proceedings involving the European Union trademark application “in·fi·ni·tu·de” and the earlier Spanish trademark “infinite”, both covering wines. In said proceedings, the opponent was required to attest to use of its trademark. To this end, various documents were submitted showing that the trademark “infinite” had been used in relation to exports of wines to Canada, Puerto Rico and the United States.

Having accepted the use of the trademark “infinite”, the Court assessed whether there was a likelihood of confusion between the trademarks in dispute. In this regard, the Court took as its starting point that the relevant territory was Spain and the relevant public was the general public, whose level of attention was average. The truth is that there are nuances to both aspects, given that, since the trademark is Spanish, it would indeed seem to be correct that the relevant territory is Spain. However, if we consider the matter in detail, it must be acknowledged that the goods are sold and consumed outside the EU. Therefore, based on the reality in the marketplace, the likelihood of confusion, at least from the perspective of the general public, would arise in those countries, as said “general public” would be Canadian or US consumers.

Logically, that relevant public is not valid for the purpose of analysing a conflict between trademarks arising in the European Union. In such cases where use is demonstrated on the basis of exports of the goods to third countries, it would seem more logical to think that the relevant public should consist of the professionals who carry out the import or export of the goods, in which case the pertinent analysis should be carried out by assessing the level of attention of those professionals.

The last of the judgments on which I wish to comment is the judgment issued by the General Court on 28 October 2020 (T-583/19). This case concerns the trademark FRIGIDAIRE, which was partially revoked by the EUIPO, since sufficient use was not demonstrated for certain goods (washing machines, dishwashers, etc.).

The owner had filed proof of use of the trademark in respect of those electrical appliances, submitting, among other evidence, material referring to sales of such goods for use on US military bases in Belgium and Germany. The General Court held that in such cases there is no use in the territory of the European Union given that the areas occupied by such military bases do not form part of that territory and, therefore, since there is no use of the trademark FRIGIDAIRE in the European Union, it should be revoked in respect of those goods.

As may be seen, the cases concerned in the cited judgments are somewhat unusual and they are a further indication that, when applying trademark law, any assessment made must be based on the individual circumstances of the specific case.

Author: Jesús Gómez Montero. Former Partner of ELZABURU and Member of the Advisory Board of the Alberto Elzaburu Foundation

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“Good morning, Myanmar”

Wednesday, 09 September 2020 09:34

Por Elzaburu

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After a sleepy few months for Myanmar’s new Trademark Law, no doubt as a result of the COVID-19 crisis, it seems that it is finally waking up. The Law provides for a procedure called the “Soft Opening Period” so that holders of rights acquired in their signs in Myanmar can register their trademarks on a preferential basis. Our firm has been publishing information on the development of this Law and on this procedure. The earlier articles in our blog can be accessed by clicking on the following links:

Since the Law entered into force on 31 January 2019, various attempts have been made to put the Intellectual Property Office into operation. All efforts to date have been frustrated for one reason or another. The challenge of setting up an Intellectual Property Office from scratch in a country such as Myanmar, and the unfortunate situation that has developed worldwide over the course of this year following the spread of COVID-19, has caused considerable delays and brought this ambitious project to a standstill.

Following the successive failed announcements regarding the inauguration of the “Soft Opening Period”, first in January and then in April, the Myanmar authorities have announced a new date for commencing activities. If no circumstances hamper the government’s plans, this preferential procedure for registering acquired rights will open on 1 October 2020.

As we have mentioned in earlier articles, the new Trademark Law introduces the “first to file” principle for registration. So as to avoid potential detriment to rights acquired by owners of trademarks that have already been used in the Myanmar marketplace and/or complied with the formalities in existence up to now for the defence of trademarks in Myanmar, those parties will have 6 months, from 1 October and up to 31 March 2021, to apply for their trademark rights at the Intellectual Property Office. Once the “Soft Opening Period” ends, registration will be open to any interested party.

The preferential procedure is aimed at:

Holders of “Declarations of Ownership” recorded at the Office of Registration of Deeds.
Owners who have used their trademarks and have sufficient proof to demonstrate said use (for example, the publication of Cautionary Notices in newspapers).

ELZABURU has been following developments concerning the new Trademark Law from the very beginning and has a network of local agents who keep us informed and constantly up to date on the situation. We are therefore ready to accompany our clients in the process of protecting their distinctive signs in Myanmar, now as registered trademark rights.

Author: Cristina Arroyo

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Is it possible to register the trademark COVID-19?

Thursday, 21 May 2020 09:43

Por Elzaburu

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These times during the lockdown have certainly given us the opportunity to ponder over matters that perhaps might not have occurred to us under normal circumstances.

For an IP professional such as myself, one such curiosity has undoubtedly been the number of people who have had the idea to try to take advantage of the “brand of the moment”: COVID-19.

Is it possible to register the trademark COVID-19?

If we check on the numbers by consulting the Spanish Patent and Trademark Office’s database, we may see that between 12 March and 5 May, there were no fewer than 16 applications for trademarks or tradenames consisting of or containing the term COVID-19 (all filed, incidentally, in the name of natural or legal persons domiciled in Spain).

Contrary to some reports published in the media, it should be pointed out that none of these applications have yet been granted.

This means that as things currently stand, not a single person in this country can claim to have secured registered rights in the term COVID-19 or any other expression containing that term for which they have sought official protection.

Of these applications, nine have not yet undergone initial examination by the Office, while the prosecution of the rest of the applications has been suspended by the Office’s examiners based on the bar to registration laid down in Article 5.1 f) of the Trademark Act (Act No. 17/2001 of 7 December 2001), which prohibits the registration as trademarks of signs which “are contrary to law, public policy, or accepted principles of morality”.

In this regard, it is worth mentioning that in each case, the official actions suspending the prosecution of these seven applications contain, in relation to the application of the aforementioned provision, the following observation: “It is held that the sign applied for comes under the bar to registration laid down in Art. 5.1 f) of the Trademark Act (Act No. 17/2001 of 7 December 2001), given that the sign applied for is in breach of accepted principles of morality, since it could be offensive for a broad section of society insofar as it attempts to make commercial gain, by including in the sign the identifying part of the name of a virus which is causing great suffering in our country and across the world”.

We will have to wait to see what stance the Spanish trademark authority adopts in relation to the registrability of the term COVID-19, although in those cases where the applicants specify that the purpose of their application is the preservation of public health, the possibility that they may obtain a favourable decision cannot be ruled out.

In any case, there are other side issues which may be of more interest to the average citizen than to legal professionals, such as: Is “COVID-19” really a sign that can be commercially exploited with reasonable expectations with regard to profitability? How can goods and services be marketed in such a way that “COVID-19” becomes an attractive sign that moves the public to consume those goods or acquire those services? Furthermore, if any of those applicants were to secure registration, to what extent could they prevent third parties from using the term COVID-19 for commercial purposes in relation to goods or services identical or similar to those for which the registration was obtained?

Only time will tell when it comes to gaining answers to these questions, but it is certainly curious that a term with such horrible connotations has already been the subject of applications for registration in relation to goods such as jewellery, toys or footwear, or legal services, to cite just a few examples.

What is beyond doubt is that, even in such difficult times as those experienced during a terrible pandemic, it is clear to people in Spain that the main instrument for guaranteeing and protecting the viability of a commercial project, whatever the nature of that project may be, is to obtain a trademark registration.

Author: Luis Beneyto

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CJEU ruling: Is it possible to seek compensation for damages in respect of infringement of a trademark that has never been used?

Monday, 30 March 2020 16:55

Por Elzaburu

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On 26 March, prior to the changes made to its operational arrangements due to the COVID-19 crisis, the Court of Justice of the European Union issued an interesting judgment (in case C-622/18) with regard to claiming compensation for damages in respect of infringement of a trademark when the trademark has been revoked on grounds of non-use.

The judgment was in response to a request for a preliminary ruling made by the French Court of Cassation in relation to an action for infringement of the French trademark SAINT GERMAIN covering alcoholic beverages, brought by the owner of the mark against companies that were producing and distributing a liqueur under the name “St-Germain”. In parallel proceedings, the mark had been revoked on grounds of non-use, but the complainant maintained its damages claim for the earlier period not covered by the revocation.

Under French law, the effects of the declaration of revocation are regulated in the following terms: “the rights of a trademark proprietor who, without proper reason, has not made genuine use of those rights in respect of the goods and services referred to in the registration during an uninterrupted period of five years, shall be revoked. Revocation shall take effect on the date of expiry of the five-year period laid down in the first paragraph of this article. It shall have absolute effect”.

The question therefore arises as to whether the owner of a trademark who has never used it and whose rights in the same have been revoked on expiry of the legally established five-year period, may claim that the essential function of his or her trademark has been affected and, consequently, seek compensation for damage sustained as a result of the use by a third party of an identical or similar sign during the five-year period following registration of the mark.

In its ruling, the CJEU points out that the Harmonisation Directive states that the Member States should remain free to determine the effects of revocation. Consequently, a national law which establishes the dies a quo from the date of expiry of the five-year period without use, is not contrary to EU law. If this is the case, there is nothing to prevent the filing of an action for infringement of trademark rights with the corresponding claim for damages, if permitted under national legislation. However, one significant detail should be noted in this regard.

With regard to the award of damages, the Court points out that Directive 2004/48 stipulates that the compensation must be “appropriate to the actual prejudice suffered by [the proprietor of the trademark] as a result of the infringement”. Although the fact that a trademark has not been used does not, in itself, preclude compensation for acts constituting trademark infringement, it remains an important factor to be taken into account in determining the existence and, as the case may be, the extent of the damage sustained by the owner and, therefore, the amount of damages that the owner may claim.

As for the consequences of this judgment in Spain, it should be noted that the effects of the revocation of trademarks are regulated as follows under Article 60 of the Spanish Trademark Act: “A registered trademark shall be deemed not to have had, as from the date of the application for revocation or the counterclaim, the effects specified in this Act, to the extent that the owner’s rights have been revoked. An earlier date, on which one of the grounds for revocation occurred, may be set in the decision on the application or claim for revocation at the request of one of the parties”. This provision of Spanish law essentially reproduces the provisions of Article 62 of Regulation (EU) 2017/1001, and therefore the situation for European Union trademarks is the same.

Therefore, if requested by the party seeking revocation, in Spain it is also possible for the declaration of revocation to be made effective retroactively from the date of expiry of the five-year period of non-use of the mark. Nevertheless, the owner of the mark could claim compensation for damage sustained if the infringement of his or her trademark occurred in a period not covered by the effects of the revocation. However, it remains to be seen what amount of compensation will be determined by the Spanish courts in such cases.

Author: Carlos Morán

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Tag Archives: Trademarks

The conflict between company names and trademarks (or tradenames)

Some thoughts on mandatory use of a registered trademark

“Good morning, Myanmar”

Is it possible to register the trademark COVID-19?

CJEU ruling: Is it possible to seek compensation for damages in respect of infringement of a trademark that has never been used?

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