Four Recent Judgments of the Spanish Supreme Court in the Field of Trademarks (II): “Masaltos I”
Following with our briefs about the four judgments issued on February and March by the Spanish Supreme Court on trademark issues, in this post we are going to deal with judgment 516/2016 of 19 February 2016, “Masaltos I”.
Such decision refers to a lawsuit filed by the holder of the mixed Spanish trademarks MASALTOS (No. 2832902) and MASALTOS.COM (No. 2886857) against a Spanish company. In this lawsuit the plaintiffs requested the cease in the use of these terms for the sale of footwear and claimed for the damages resulting from these acts. The defendant invoked the invalidity of the trademark because the terms that compose such trademarks are merely descriptive in the sense of art. 5.1 c) of Trademark Act 17/2001 (in Spanish).
After having lost at first and second instance, the defendant lodged cassation appeal based on the infringement of the case law relating to the aforementioned provision of the Trademark Act and to Art. 43.2 b) of the Trademark Act, “not requesting for the grating of the hypothetical royalty proof of the damages caused”.
Stress should be laid on the answer given by the Supreme Court to the first ground of appeal as it provides a good example about the application of the CJEU case law when interpreting Art. 5.1 c) of the Trademark Act in conjunction with Art. 5.3.
The Court recalls that “Art. 5.3 of the Trademark Act enables to register the conjunction of several signs mentioned in points b), c) and d) of Art. 5.1, provided that such conjunction enjoys the required distinctiveness. This also implies that the trademark has to be examined also as a whole”. Following the CJEU judgment dated 20 September 2001, C-383/99, “Baby-Dry”, the Supreme Court confirms that the mere fact that each of the components of the sign, considered separately, are devoid of distinctive character, does not mean that in combination they cannot constitute a lexical invention which allows that the created trademark bestows distinctive power.
Such distinctive character is strengthened if, as in the case at stake, the trademarks are not only word-marks but mixed, composed of a denomination and a figurative component – in this case the placing upwards and downwards of the letters–. The specific placing of the word and graphic elements assists in strengthening the trademark distinctiveness because, as stated by the CJEU, “the average consumer usually sees the trademark as a whole, without going into the different details” (CJEU Judgment of 22 June 1999, C-342/97, “Lloyd Schuhfabrik Meyer” and 12 June 2007, C-334/05 P, “Limoncello della Costa Amalfitana”)
Related Posts:
- Four Recent Judgments of the Spanish Supreme Court in the Field of Trademarks (I): “Cointreau”
- Four Recent Judgments of the Spanish Supreme Court relating to Trademarks (IV): “Masaltos II”
- The use of trademarks as adwords cannot be considered as taking unfair advantage from a third party´s reputation
- Analysis of the Spanish Supreme Court’s Judgment of 2 September 2015, “Gullon” (II): Application of the European Case Law on the Genuine Use of Trade Marks