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CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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WEDNESDAY, 3 DECEMBER 2014
Spain: Requirements for a Trademark Application in Bad Faith

Until very recent times, the visitor of Barcelona could find two bars called "Absenta Bar", one in the neighborhood called El Raval, and the second in the area of La Barceloneta. In the below chart, you will see that both areas, located in the center of Barcelona, are only separated by 28 min walk, 8 min by car and 32 min by public transport.

 

 

For the joy of absinthe lovers, these two bars were owned by different, unrelated owners, so they could have during the same night two different delirious experiences. But alas the end of this story is that "there can be only one", as the Appellate Court of Barcelona (chamber 15th) ruled last 1 October 2014 (no. 308/2014). The ruling does not refer to absinthe drink and its delicate effects, but to the marks used by the bar owners. Still is worth commenting, because it provides some interesting teachings on important aspects of the trademark law… and the concept of the "local bar", very rooted to the British culture, but almost not recognized in Spain.

 

In 2010 Mr. Sixto obtained the Spanish national registration no. 2995407 (fig.) for the mark ABSENTA BAR for services of providing food and drinks. Ms. Marcelina was the owner of a bar called "Absenta Bar" in the popular area of El Raval. Although her business was established in 1930 and remained the same during all these years, the successive owners, including Ms. Marcelina, did never think a trademark registration was necessary. In 2012 Mr. Sixto sued Ms. Marcelina on grounds of trademark infringement. Ms. Marcelina answered the claim and counterclaimed seeking the cancellation of Mr. Sixto's registration on the basis of a bad faith trademark application. Ms. Marcelina added in her counterclaim a trademark infringement motion based on non-registered trademark rights on the mark ABSENTA BAR.  

 

The Commercial Court of Barcelona no. 8 ruled in favor of Ms. Marcelina and declared the cancellation of the trademark registration no. 2995407 (fig.) of Mr. Sixto. But this judgment was reversed in appeal. The Audiencia Provincial of Barcelona (sitting as the Appellate Court) first mentioned what was to be understood by "bad faith" in the instances of a trademark application, and referred specifically to the fact consisting of the previous knowledge by the applicant of third party's prior trademark rights. In short, it declared –not entirely well reasoned in opinion of this blogger- that "the bad faith […] can be established where the application for registration of a trademark is filed upon the knowledge that the same or any confusingly similar mark has been used by a third party for goods or services identical or similar […], and where said mark has acquired, due to genuine use, a certain degree of implementation in the market (not necessarily being a "well-known mark" in the sense of article 8.2 of the Spanish Trademark Law 17/2001 and article 6 bis of the Paris Convention Treaty)". The Court followed on saying that the longer the prior use, the greater the chances the applicant should have known such use.

 

One would imagine that, after 84 years from its opening, the Court would say that Mr. Sixto must have had knowledge about the Absenta Bar in El Raval, located just 2 km away from his bar. But the evidences, the Court argued, showed a different scenario. The Absenta Bar was known, yes, but only within the boundaries of such neighborhood and for the locals. Besides, the Court happened to find that the Absenta Bar in El Raval was closed from 2006 to 2011. These facts were definitive to conclude that Mr. Sixto, inhabitant of La Barceloneta neighborhood, was not expected to have knowledge the Absenta Bar. Therefore, his trademark registration was not registered with bad faith. Indeed, Mr. Sixto had a prevalent right over Ms. Marcelina because the non-registered trademark rights claimed by this latter could only be established upon evidence of well-known character of the mark, and that was not the case.

 

As a result, Ms. Marcelina was ordered to cease and desist the use of the name ABSENTA BAR despite its old days, and pay damages up to 1,109.54 Euros to Mr. Sixto. If you wonder where this sum comes from, then you should know that by virtue of article 43.5 Spanish Trademark Law 17/2001, the damages are assumed for the successful claimant of a trademark infringing claim, so he is entitled to 1% of the turnover of the defendant, save evidence of a greater damage.

Posted by: Fidel Porcuna @ 09.48
Tags: Bad faith Absenta ,
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