A recent Judgment of the Spanish Supreme Court (Civil Chamber) of December 17, 2009 (no. 817/2009) explores the requirements imposed by the Spanish judiciary on the applicability of section 8 of the Paris Convention, that states:
“A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark”.
The claimant, a US company, sought the cancellation of the Spanish trade mark and trade name” COYOTE UGLY” and “CHICAS COYOTE” ("Coyote Girls").
On the basis of an US trade name, and citing article 8 of the Paris Convention, the claimant alleged that the respondent's Spanish registrations were registered in bad faith. The claimant also requested the Court to order the cease in the use of the said marks plus an award of damages. Both the Court of First Instance plus the Court of Appeals dismissed the claim as both instances understood that the claimant did not provide evidence on the use of the foreign trade name in Spain, and neither on the use in the US.
In a short and straight-to-the-point decision, the Spanish Supreme Court reminded that in cases construed on article 8 of the Paris Convention it is required for the claimant to demonstrate use or wellknowness in "a substantial part of the Spanish territory". Due to the fact that Spanish procedural rules do not (normally) allow the Supreme Court to review factual issues that have been already judged by the lower instances (i.e. the use of a foreign trade name), the appeal was dismissed.