This Class 46 member has recently reviewed a Judgment by the Spanish Supreme Court (Judgment number 569/2009) in which the Court tackles the issue of slogan trade marks.
The claimant brought a trade mark infringement action on the basis of the Spanish trade mark no. 1,142,222 "1.880... EL TURRON MAS CARO DEL MUNDO" (“1,880 … the world’s most expensive “turrón") in class 30 against the use of a non-registered slogan for “Turrones La Fama, el turrón más famoso del mundo” (“Turrones” La Fama, the world’s most famous “turrón”).
For those not versed in Spanish cuisine, it will be worth mentioning that “turrón” is a very traditional Spanish nougat-kind of desert made with almonds, eggs, honey and sugar (sticky and caloric to the maximum). It is mostly eaten during Christmas season.
A practical tip: If you ever happen to visit OHIM during late November/December, make the most of our visit and go and get yourself some “turrón” as “turrones” from Alicante are specially reputed.
Back to the case: The claim was dismissed in the first and second instance. The Supreme Court upheld the prior dismissals.
What is interesting in my opinion is that the Supreme Court takes the chance to elaborate on the legal protection of slogan trade marks. On the basis of sections 7 and 12 of the CTM Regulation 40/1994 and the ECJ’s decision C-64/02 P ("DAS PRINZIP DER BEQUEMLICHKEIT"), the Court found that there is no need to establish different parameters to assess the distinctive nature of a slogan trade mark registered in Spain.