Well-known and Renowned Trademarks and Brand names, a privileged class within the Spanish legal system

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Trademarks and registered brand names described as well-known and renowned enjoy great protection within the Spanish legal system. This protection is guaranteed not only by the national legal system but also by European Union laws which, in any case, prevail over the first.

At a state level in Spain, the Act 17/2001, of 7th of December, of Brands, bestows well-known and renowned trademarks and brand names a preferential treatment. At a European level, this special treatment is granted by the Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks, which refers to the Paris Convention for the Protection of Industrial Property.

The globalized nature of our society and the internationality of the market are undeniable. Industrial Property is inherent in commercial transactions and therefore it is essential that legislators bring all their efforts in getting the greatest harmonization of the various national laws, in order to facilitate the fluent development of interstate commercial relations.

Legislators echoed this need. Thanks to the supranational politic structures created along the 20th century, this harmonization has been possible in so many fields and particularly in Industrial Property, both at a regional level with the Directive 2008/95/EC and at a superregional level with the Paris Convention for the Protection of Industrial Property, comprising 173 member states from all over the world.

Article 8 of the Spanish Act of Brands is in charge of the protection of “Well-known and Renowned Trademarks and Registered Brand names“.

Before we proceed with the analysis of this article, it would be convenient to highlight that there are two categories of trademarks and brand names that should not be confused: firstly, those considered as well-known and secondly, the so-called renowned. Besides, both well-known and renowned trademarks and brand names need to be registered in order to enjoy the protection granted by this act.

According to the second section of article 8, a well-known trademark or brand name is understood “those that, by their sales volume, duration, intensity or geographic scope of its use, value or prestige gained in the market or any other cause, are generally known by the pertinent sector of the public to who the products, services or activities that distinguish the trademark or brand name, are addressed”. So to speak, the notoriety and fame derives from a series of factors that give popularity to the trademark or brand name exclusively among the target group of those products, services or activities represented by the trademark or brand name. On the other hand, they are considered to be  renowned trademarks or brand names, by virtue of what section third of article 8 establishes as those that “are well-known by the public in general”.

This means that for a trademark or brand name to be renowned, it must enjoy a popularity no longer between a particular sector of consumers, as it was the case of well-known trademarks and brand names, but among the general public, whether or not a targeted consumer of the products, services or activities that represent the trademark or brand name in question.

Depending on whether it is well-known or renowned trademarks or brand names, the law gives them some special protection, established in the first section of article 8: “May not be registered as a trade mark a sign that may be identical or similar to an earlier trademark or brand name, even though the registration is requested for goods or services that are not similar to those protected by such earlier signs, because since these are well-known or renowned in Spain, the use of that trademark might indicate a connection between those goods or services covered by it and the holder of the signs or, in general, when such use made without due cause, may involve an unfair advantage or detriment to the distinctive character or to the notoriety or fame of the earlier signs.”

In this respect, the Act shows, therefore, its particularly protectionist vocation for well-known or renowned trademarks and brand names, in contrast with the treatment bestowed to trademarks and brand names that do not enjoy of notoriety and popularity among the public (articles 6 and 7). Those precepts indicate that trademarks or brand names may not register the signs that represent them if “are identical to a trademark or brand name formerly registered that designates identical products or services” or that “because of the fact of being identical or similar to a former trademark or brand name and being identical or similar the products or services designated, it may exist a risk of confusion among the public; the risk of confusion includes the risk of association with the former brand”. It may be stated, thus, that for those trademarks or brand names that do not enjoy of notoriety or popularity, two cumulative conditions are demanded to prevent the registration of a subsequent sign: the first condition is the identity with the former trademark or brand name, together with the identity of the products or services designated by the brand; the second is that a risk of confusion among the public arises from the combination of the aforementioned identities.

If we analyse and compare carefully articles 6, 7 and 8 we may observe that for the protection of non well-known nor renowned trademarks and brand names the act explicitly demands the total identity of the sign-to-be-registered with the former trademark or brand name. However, with regard to well-known and renowned trademarks and brand names the act only demands that some “identity or similarity” exists. In this regard the Act expands noticeably its protection regarding these privileged well-known and renowned trademarks and brand names.

Furthermore, articles 6 and 7 add another condition to the forementioned one: the risk of confusion among the public, which also includes the risk of association. On the contrary, article 8 does not mention this risk of confusion, which again increases the protection granted to well-known and renowned trademarks and brand names, given that some brand that, for instance, would be identical or similar to a formerly registered one, would find its registration hindered because of the mere evocation of that well-known or renowned brand, even if no risk of confusion or association with the former brand would exist.

Numerous cases have got both to Spanish and European Union courts, regarding the protection of well-known and renowned trademarks and brand names. As an example, it is worth it to quote some of the cases in which the renowned brand Adidas has sued other companies to use signs not composed of three parallel stripes on a background of another colour in contrast to the bands (a sign of their property), but even companies that had registered brands consisting of two or four parallel bands.

Some of these cases are Adidas vs. Jin Matteo (Judgement of the Commercial Court No. 3 in Madrid December 29, 2006, confirmed by the Provincial Court of Madrid on September 26, 2008), Adidas vs. Kaymo (Commercial Court No. 1 of Zaragoza, by Judgement of 31 July 2009, subsequently confirmed by the Provincial Court of Zaragoza on November 27, 2009) or Adidas vs. Marca Mode CV, C&A Nederland CV, H&M Hennes & Mauritz Netherlands BV, Vendex KBB Nederland BV (Judgement of April 10, 2008 before the First Chamber of the Court of Justice of the European Union). In all of those cases Adidas won, being all of those companies that had developed signs of two or four parallel bands ordered to pay compensations worth millions to Adidas.

These cases highlight that with respect to well-known and renowned trademarks and brand names the identity between the signs that represent the brand is not necessary, being sufficient a simple resemblance. This is why in the previously cited cases it was not demanded the three-banded sign, and a two or four-banded sign was enough to notice the similarity, neither it was the identity of products, services or activities that those signs represent (an example of this is the case Adidas vs. Caja General de Ahorros Canarias. This savings bank from the Canary Islands had developed a sign formed by three parallel bands that, even though it imitated the shape of mount Teide, it was later considered by the High Court of Madrid in Judgement of June 13, 2008, as similar to the three-banded one by Adidas. Thus, Caja de Ahorros Canarias had to satisfy the pertinent compensation in favour of Adidas). 

As can be clearly seen in these cases we used as an example, the protection granted by both Spanish courts and the Court of Justice of the European Union towards well-known and renowned brands is effective.

Owing to which, it is important to be extremely cautious when signs that might remind us to well-known or renowned brands are faced. In such cases, it must be taken into consideration that the spanish legal system bestows a special protection to well-known and renowned trademarks and brand names in contrast to those other brands that do not enjoy that popularity among the public.

Paula Barnola
Vargas Vilardosa Abogados, Spanish Law Firm
Eurojuris España, Spanish law firms network

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