In accordance with the resolution of the Spanish Patents and Trade Marks Office, and reversing the previous ruling of the High Court of Madrid (which acted as the first judicial instance), the Spanish Supreme Court considered that BANK ON LINE” did not merit registration in class 36 as it “evidently” referred to a characteristic of the services to be rendered by the trade mark owner (a bank), and thus fell within the scope of the absolute grounds of refusal stipulated under Spanish Trade Mark Act.

The ruling correctly considers that Spanish consumers have sufficient command of English to translate this foreign expression correctly The Spanish Supreme Court has normally been reluctant to dismiss registration of foreign words/expressions on the grounds of lack of distinctiveness. The argument normally applied in these cases (which clearly needs updating) is that foreign words are not understood by Spanish consumers and amount to be “fantasy trade marks” (and are therefore registrable).