Personal Names as Trade Marks in Spain

28 June 2011

Antonio Cueto, Amparo Campos

This article analyzes whether and under which circumstances it is possible to register a personal name as a trade mark in Spain, especially when they conflict with earlier trade marks consisting of the same name.

Pursuant to the Spanish Trade Mark Act, personal names can be registered as trade marks provided that they are neither identical with earlier trade marks and the goods or services for which registration is applied for, are not identical with the goods or services for which the earlier trade marks are protected. Likewise, they can be registered if their identity with, or similarity to, the earlier trade marks and the identity or similarity of the goods or services covered by the trade marks do not cause a likelihood of confusion.

But, is the use of the same name in two different trade marks likely to cause confusion among consumers? The Spanish Supreme Court has rendered several landmark decisions regarding this question, some of which are addressed below.

In Picasso v. Paloma Picasso (RJ 2002/9257- 4 October 2002) the Supreme Court ruled that, subject to absolute identity of the signs, two brands that include the same name can coexist if the name appears together with other elements that allow differentiation between the two brands. The Supreme Court further determined which elements shall be taken into account to compare the trade marks. In this regard, the Court referred to figurative elements in the marks, the existence of a second name, the goods or services covered by each trade mark, etcetera. This rationale was applied by the Supreme Court in several subsequent cases in which it allowed the coexistence of trade marks that, despite containing the same name, included sufficiently different elements. For instance, in Luis Caballero v. Antonio Caballero (RJ 2003/49- 19 December 2002) the Supreme Court allowed the coexistence of both signs based on the fact that (i) the names “Luis” and “Antonio” are different, (ii) the second included a highly distinctive figurative element and (iii) the services covered by each trade mark were different. Furthermore, in Torres v. Santiago Torres (RJ 2006/119- 11 November 2006) the Supreme Court held that, the existence of just one different element between two trade marks consisting of the same name, was sufficient to allow their coexistence.

However, it seems that the Spanish Supreme Court has increased the threshold of the likelihood of confusion test when it comes to compare personal names used as trade marks.  This can be inferred from cases such as Allied Domenecq España SA v. Juan Pedro Domecq SL (RJ 2009/358-19 December 2008) and Fundación Colección Thyssen-Bornemisza v. the Kingdom of Spain (RJ 2010/1222-29 October 2009). In these cases, the Supreme Court held that the trade marks at stake could not coexist because, despite the existence of different elements between them, such elements were not sufficiently distinctive to avoid a likelihood of confusion among consumers.

Furthermore, in Luis de Bachiller Elizondo v. Bachiller /Salvador Bachiller (RJ 2005/1634- 28 January 2005) the Supreme Court held that an earlier trade mark with a reputation can prevent the registration of a junior mark if, due to their common personal name, consumers can establish a link between the junior and the reputed senior mark. Hence, it appears that the broader scope of protection granted to trade marks with a reputation is not narrowed down by the right of a person to use his own name in the course of trade. In this case, for instance, the existence of just one common element, the term “Bachiller”, was enough to prevent the registration of the junior mark.

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