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Some Things Stay with You to the Grave

July 15, 2019

The protection of unregistered trademarks has always been a difficult issue to fit into legal realities or traditions based on registration priority, as would be the case in Spain.

Registration formalism, often erroneously perceived by the general public as an administrative barrier that would hinder the effective protection of certain trademarks or other intellectual property rights with a  well-earned exclusive right due to the consolidation of their commercial renown, has as one of its basic foundations, the fact of granting legal certainty to all market operators: the owners of the signs, of course, but also to any third party that at a given moment wants to register a trademark or may incur in infringing conduct.

Having said that, this principle of registration of the constitution of trademark, design or patent rights, also has specific legal provisions to correct the circumstances mentioned above, especially cases of unregistered trademarks that enjoy a reputation in the State (Art. 8 of Law 17/2001 on Trademarks).

In this sense, a recent pronouncement of the 3rd Chamber of the Supreme Court puts on the table again the controversy that can be generated by the survival in the collective memory of trademarks or other distinctive signs that in past times enjoyed a high degree of recognition or popularity and that, for various reasons, are no longer the object of exploitation or even their registrations have expired. Are these signs therefore considered to have lost their exclusive right to all intents and purposes? In other words, can they then be registered by third parties?

The RATPAC case (828/2019 of 17 June), almost with the same name as the popular band of actors and musicians of Las Vegas music scene of the 50s and 60s, mentions in its foundation an earlier one of the 1st Chamber of the same Court referring to another trademark also of great historical renown and international prestige during the decades of the 20s and 30s of the last century, the Barcelona-based car manufacturer HISPANO-SUIZA, which in the interim of the aforementioned ruling has returned to the present at the last Automobile Barcelona Motor Show.

Although in the first case the dispute concerns a trade name of a foreign company not registered in Spain, in both cases the Supreme Court establishes as an interpretative criterion that the renown or notorious historical knowledge of an earlier trademark or name is not a sufficiently relevant element per se to activate the legal provisions for the defence of unregistered trademarks, it will also be necessary for this memory to reflect a reality of commercial use or exploitation.

It is therefore clear that, at least when it comes to a trademark, we cannot apply the popular saying leading this article and that the best protection always lies in registering and maintaining what we think differentiates us here and now: our intangible asset.

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