Trademark, trade name and business name, Concept notoriety as preventive in Registry Cause

Law 17/2001 of December 7, Mark, set to hold back elements to access the trademark registration as a series of absolute prohibitions (signs contrary to law, public order or morality, which can lead the public into error, for example on the nature, quality or geographical origin of the product or service, etc..), and relative terms. The latter include the provisions in Article 9.1.d, by which protects the name of a legal person before the filing date or priority of the mark in commerce to identify a person other than the applicant. The mark applied for must be identical or similar to these signs and it must also be the same or similar scope. The combination of both factors must involve a potential risk of confusion among the public. For this purpose, the holder of the corporate priority, will test the use or knowledge of the same notorious throughout the country.

Thus we find ourselves with an obstacle preventive later trademark registration, which would be the "profile" of a name before. But to know what it is this circumstance, we define such vague legal concept.

If we agree to the definition given by the Royal Spanish Language Academy, is considered "notorious" among other meanings, that which is "public and known by all." This would imply that a notorious name would reflect the presence of this sign in the minds of consumers, and consequently the target audience would know the existence of a product or service coincides with the name of the company, identifying it with the name used to rotate in the trade.

Therefore, a name which was described as "notorious" would demonstrate that it had previously been used not only for mere billing operations but also to identify the company, in this case coinciding with the name used to be known on the market. Stated by the Supreme Court in its decision dated February 14, 2000 that: "It should be noted that the use (which underlies the action in question) must be as a trade name and not as a company name (name -signature), that is, not as an identifier of the employer, but as the company recognizer in trade to avoid customer confusion, so that its function is to identify all or part of the economic and commercial activity. "

This would have protective justification especially since the widespread knowledge of a company name, increase the risk of other trademarks or trade names could cause the average consumer confusion between them or, more likely, the association regarding the corporate origin of the same .

However, if you read carefully the Section 9.1.d. LM, we see that the protection afforded is not applied automatically, but it is only given to those social reasons "notorious" as opposed to logos to be registered for those goods or services competing in the market. Therefore, to act for protection under the Trademark Act also required that there is identity applicative similarity.

Besides the corporate name must be known in the "national territory" without sufficient which could take place in a locality or region.

Arises at this very moment the obligation of the burden of proof, since he must prove the above will be the opponent and not the brand or trade name applicant, ie it is the owner of the name who must demonstrate that it is before the badge in question, which is well known in the entire national territory and also may be a risk of misleading or confusing similarity or identity phonics and apply with respect to products or services to protect.

A reading of Article 9.1.d "in fine" can be seen also how to protect foreigners in accordance with Article 3 of this Act may invoke Article 8 of the Paris Convention or the principle of reciprocity, provided that prove the use or notorious knowledge in Spain of its unregistered trade name.

The Article 8 of the Paris Convention for the Protection of Industrial Property provides that "A trade name shall be protected in all countries of the Union without the obligation of filing or registration, whether or not part of a brand or trade. "

However, most current jurisprudence of the Supreme Court (decision dated June 4 and November 7, 2008 and February 26, 2009), in line with the regulation of arts. 77 and 78 of the Trademark Act 32/1988, and the doctrine of interpretation of Art. 2 and 8 of the Paris Union, chose the restrictive approach which requires the use or actual use in Spain, which appears strengthened in the Trade Marks Act 2001, Explanatory Memorandum which refers even to full equality treatment and equal protection waiver.

Accordingly, the foreign trade name not registered in Spain has provided him protection to national trademark laws and unfair competition under the principle of "lex loci protectionis", requiring the effective use or notorious knowledge in our country , whose appreciation, without ignoring any requirement of the CUP, it ignores the nonsense that a foreign trade name totally unknown-no-use or reputation in Spain, had a trade name protection than Spanish.

If this were not so, could create considerable legal uncertainty as a trademark under national law may be subject to an action of nullity to be identical or similar to a foreign company, totally unknown in Spain.

Nevertheless, despite the protection afforded by the Trademark Act, it is always advisable to proactively proceed with registration of the mark or trade name used to prevent unauthorized parties from taking advantage of the reputation, effort and reputation of others, and the requirements of the Section 9.1.d LM, especially with regard to establishing the reputation of the name used throughout the country, sometimes may not be satisfied, and therefore can not prevent a competitor use a trademark or trade name that would confuse potential customers.

Antonio Vargas Vilardo

Vilardo Vargas Attorneys Office

Member of Eurojuris Spain