The Spanish Supreme Court has recently handed down quite an awaited Judgment on trade mark dilution. The Spanish extension of the International trade mark no. 213645 “BIO” covering class 29 (amongst others, milk and related products like yogurt) has been cancelled on the grounds of dilution.
This specific ground for trademark cancellation is specifically foreseen in section 5.1 d) of the Spanish Trade Mark Act:
"The following signs may not be registered as a trademark:
(d) those which consist exclusively of signs or indications which have been converted into those used habitually to designate the goods or services in common parlance or in fair and constant trade practices."
According to the Judgment, the cancelled mark’s owner contributed to the dilution to the “BIO” mark by consistently using it together with the applicant’s “house mark”. The Court found that this association lead consumers to infer that “BIO” was not a mark, but a specific kind of yogurt with some special biological components marketed by applicant.
The Court ruled that this type of advertising weakened the distinctive nature of the "BIO" mark. For the record, the Judgment stated that before 1992 (when applicant acquired the "BIO" brand from a third party), it used the term “BIO” in a descriptive way, but changed its marketing policy once it bought the mark.
The trade mark owner tried to prove that it made whatever was in its hands to preserve the distinctive nature of the “BIO” mark. Specifically, it claimed to have the –quite impressive- number of 114 legal proceedings in Spain enforcing the said trade mark. This argument did not impress the Court, that considered all this litigation as a tool for preventing competitors to make use of a mark that at that time had already become habitual to designate products in class 29 (namely yogurt). The fact that the trade mark owner invested Euro.-19,397 million from 1988 to 1997 did not convince the Court either.
For those proficient in the language of Cervantes (or just want to give a try), the Judgment can be read in its full splendor here