Ruling in a referral from the Commercial Court 3 of Barcelona, in a dispute over the trade mark Fincas Tarragona, the Court said that a trade mark shall not be registered if it is identical with an earlier mark which is well known “throughout the territory of the Member State of registration or in a substantial part of it”.
It added that this restriction does not apply “to a situation where the fact of being well known is limited to a city and to its surrounding area which, together, do not constitute a substantial part of the Member State”.
The Court was ruling in a dispute between two estate agents in Spain.
Nieto Nuño owns a trade mark for Fincas Tarragona in class 36.
But Monlleó Franquet claimed to have used the name Fincas Tarragona (in Spanish) or Finques Tarragona (in Catalan) since 1978 at least.
Nuño sued Franquet for infringement, but Franquet retaliated seeking to annual Nuño’s registration.
The Barcelona court noted that Franquet only used his mark in the city of Tarragona and its surrounding area, and asked the ECJ whether trade marks that are known only locally can be considered “well known” under Article 4 of the EU Trade Mark Directive.
Article 4 provides that a trade mark shall not be registered if it is identical or similar to, and covers identical or similar goods to, an earlier mark which is “well known in a Member State”.
Tarragona is a city in Catalonia, eastern Spain; the population of the Tarragona urban area is about 350,000.
“This decision is very consistent with previous case law, and particularly the Chevy decision,” said Verena von Bomhard of Lovells in Alicante.
She added that the decision leaves some flexibility for national courts to decide what constitutes a “substantial part” of a member state. While a relatively small city such as Tarragona would not meet the criteria, a large metropolitan area might do.
The Tarragona decision may have an impact on a referral from Austria in a case between PAGO International and Tirolmilch registrierte Genossenschaft, in which the ECJ is asked to decide whether a Community trade mark (CTM) is protected in the whole of the Community “as a trade mark with a reputation” if it has a reputation in only one member state.
“The current practice, and the OHIM Guidelines, say that a CTM has a reputation in the Community if it has in one member state – you don’t discriminate,” explained von Bomhard.
The PAGO case was referred in June this year and the Advocate General’s opinion is expected within the next year, with a ruling after that.
