A judgment of the Commercial Court of Granada dated 17 October 2,007 (recently published) has tackled the concept of "relevant wellknown-ness" for non-registered trade names in Spain.
Amongst other remedies, the claimant Grupalia Internet S.A. sought the cancellation of the defendant's Nevada Mobil Neptuna 's SL Spanish trade mark no. 2346375 AGRUPALIA.
The legal basis for such trade mark cancellation action was Article 9(1)(d) of the Spanish Trade Marks Act 17/2001 ("STA"), which is a national development of Articles 6 bis and 8 of the Paris Convention.
Article 9(1)(d) of the STA stipulates that a Spanish trade mark can be opposed (during the registration procedure) or cancelled (once registered) on the basis of a prior non-registered trade name, provided it is proved during the course of the opposition/cancellation judicial proceedings that such prior non-registered trade name qualifies as "well-known in Spain" at the challenged Spanish trade mark's application date.
The claimant brought documentary and witness evidence of the prior implantation of its non-registered trade name in the cities of Madrid, Bilbao, Valladolid, Santa Cruz de Tenerife and Palma de Mallorca. It also produced evidence that the non-registered trade name "was about to start" being used in Barcelona, Valencia and Seville when the defendant applied for the challenged Spanish trade mark.
According to the official data of the "Instituto Nacional de Estadística" (Spanish National Statistics Institute,
http://www.ine.es/), the current population of the Spanish five cities where plaintiff demonstrated "prior notoriety" amounts 4,500,000 inhabitants (approx.), while the actual total population in Spain is of 45,000,000 (approx). Therefore, and according to these estimations, the claimant demonstrated that the 10% of the Spanish population was potentially exposed to the alleged "well-known" prior non-registered trade name.
The Court dismissed the cancellation action against the defendant's Spanish trade mark as it considered that the claimant failed in demonstrating its prior non-registered trade name deserved the qualification of being "well known in the Spanish territory" . The Court also found that the prospects of initiating use of the non-registered trade name in several cities at the date of application of the challenged Spanish trade mark were "irrelevant" to demonstrate actual reputation.
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