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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FRIDAY, 28 NOVEMBER 2008
Spain - The Princess and the Trade Mark Office.
Despite the title, this is not a children´s tale, but a case regarding the applicability of the absolute ground for refusal based in a prior name (or other sign) identifying someone other than the trade mark's applicant.
The High Court of Catalunya (“Tribunal Superior de JustÝcia de Catalunya”) has overturned a prior decision of the Spanish Patents and Trade Marks Office (“SPTO” for short) to refuse registration of the Spanish trade mark applications for «Letizia de Giorgi 5 Lune», «Letizia de Giorgi 5 Rose» and «Letizia de Giorgi 5 Stelle», all in class 33 (alcoholic beverages).
The SPTO rejected ex officio these applications on the basis of the prohibition stated in article 9.1 b) of the Spanish Trade Mark Act, according to which:
Posted by: Ignacio Marques @ 23.31
., absolute grounds for refusal, civil names, Spain, trade mark refusal,
"Without due authorization, the following may not be registered as trademarks:
(b) the first name, surname, pseudonym or any other sign which, in the eyes of the general public, identifies a person other than the applicant."
These Spanish trade mark applications contained, amongst other word elements, the name “Letizia”, written with “z” (the Italian way) instead of with a “c” - such a name is correctly written is Spanish as “Leticia”.
It happens that any Spaniard would automatically associate the uncommon name in Spain “Letizia” with Ms. Letizia Ortiz Rocasolano, former conductor of the most viewed TV newscast in Spain but specially known as Her Royal Highness, Lady Letizia, Princess of Asturias
, the wife of Felipe de Borbˇn, the Prince of Asturias, heir to the Spanish throne.
Due to the somewhat fancy presence of the letter “z” in the name “Letizia”, the SPTO found that the Spanish public would relate the applications with the Princess of Asturias, who obviously was not the applicant for the refused trade marks.
The case was brought by the applicant for the refused applications to the venue of the High Court of Catalunya. That Court overturned the administrative refusal by the SPTO and ruled that the prohibition set forth in article 9.1 d) of the Trade Mark Act would have been correctly applied if the trade marks consisted only in the name “Letizia”. The Court also found that the presence of other distinctive word elements in the applied trade marks (“DE GIORGI 5 LUNE", “DE GIORGI 5 ROSE" and “DE GIORGI 5 STELLE") avoided risk of confusion.
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