THURSDAY, 28 JANUARY 2010
Spain - On well-known marks: size does matter.
So says the Spanish Supreme Court (Judgment no. 761/2009, of December 1), that has just confirmed a prior Judgment from the Barcelona Court of Appeals (IP Section) on the protection of well-known marks.
On the basis on its reputedly well-known mark, and invoking section 6 bis of the Paris Convention, the claimant sought the invalidity of a later Spanish trade mark consisting on the same sign.
While the Court of First Instance awarded the claim, the Court of Appeals found that the evidence on the alleged notoriety filed by the claimant was, to say the least, far of being impressive. It could be established that the reputedly well-known mark generated a total turnover of Euro 28,015 from years 1992 to 1996. Sales where only made to three hospitals, all seated in the province of Barcelona (the challenged mark covered class 5, basically pharmaceutical and medical devices).
To make things ever worse for the claimant, the defendant made its homework and brought to the case:
(i) a survey that revealed that just 2,4% of the inquired doctors acknowledged that they used products branded with the claimant’s mark,
(ii) an affidavit from the Spanish Surgical Association certifying that the claimant’s mark was not well-known and
(iii) certifications of different regional Chambers of Commerce stating the claimant’s mark could not be reputed as well-known.
With all these materials on the Judge's desk, it is difficult not to wonder how the Court of First Instance happened to render the claimant's mark well-known. Luckily enough for the defendant (and for the common sense, too) the decision of the First Instance was overturned by the Appeal Court, whose ruling has been recently confirmed by the Supreme Court.
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