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Spain - the Supreme Court to set criteria on when a sign in trade alters (or not) its distinctive character as registered.
The Spanish Supreme Court has recently set some interesting criteria on when a used sign alters the distinctive character of the mark in the original form in which it was registered in the sense of article 10.2 (a) of the First Council Directive 89/104/EEC of 21 December 1988.
According to this article:
Article 10 Use of trade marks
1. If, within a period of five years following the date of the completion of the registration procedure, the proprietor has not put the trade mark to genuine use in the Member State in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trade mark shall be subject to the sanctions provided for in this Directive, unless there are proper reasons for non-use.
2. The following shall also constitute use within the meaning of paragraph 1:
a) use of the trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered
(b) affixing of the trade mark to goods or to the packaging thereof in the Member State concerned solely for export purposes.
In its use in the market, the respondent (owner of the Spanish trade mark no. 1724286 “bio KAIKU” and device) enhanced the word element “Bio” over “KAIKU” and altered the disposition of the said words. There was therefore a clear difference between the sign in trade and the mark as registered.
The Court of Appeals found that those changes were relevant enough to determine that the used sign altered the distinctive character of the mark in the original form in which it was registered, an act that amounted as “unfair competition” by the trade mark owner.
On the contrary, the Spanish Supreme Court has now found that the changes introduced by the trade mark owner in the actual use of the mark were “minor” and did not have the “relevance” that the lower Court conferred them. Therefore, the trade mark owner was acquitted from the charge of unfair competition.
The Judgment (in Spanish) can be read here.
Tags: genuine use, Spain, unfair competition,
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