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30 April 2018
On March 7 2018 the Supreme Court confirmed the revocation of the collective trademark BARCELONA – whose registration had been sought in all classes of the Nice Classification – due to its lack of distinctiveness.
On December 30 2011 the Barcelona City Council applied for the collective trademark BARCELONA for goods and services in Classes 1 to 45. Peritos Judiciales de Barcelona SL filed an opposition based on Article 5.1(b) of the Trademark Act (17/2001), citing the trademark's lack of distinctiveness. On July 11 2012 the Spanish Patent and Trademark Office (SPTO) dismissed the opposition, granting the collective trademark. Peritos Judiciales de Barcelona filed an appeal against this decision, which was resolved with the trademark's revocation on March 5 2013. The Barcelona City Council subsequently filed a contentious administrative appeal against this revocation with the Catalonia High Court of Justice.
The Catalonia High Court of Justice's judgment distinguished between collective trademarks applied for by:
On December 29 2016 the court confirmed the revocation of the collective trademark, as its lack of distinctiveness meant that it fell under the explicit prohibition provided for in Article 5.1(b) of the Trademark Act. Further, the court concluded that the trademark contravened:
The Barcelona City Council appealed this judgment before the Supreme Court, challenging the application of Article 5.1(b) (lack of distinctiveness) based on two main arguments:
On March 7 2017 the Supreme Court considered that in order to establish case law in this regard, it had to clarify its stance regarding the scope of the explicit prohibition based on a lack of distinctiveness (Article 5.1(b)) regarding the collective trademarks registry and guarantee trademarks.
In this regard, the Supreme Court confirmed the Catalonia High Court of Justice's judgment and held that the collective trademark BARCELONA could not be included in the trademark registry as it lacked distinctiveness. This judgment was based on the fact that the trademark contravened:
In addition, the Supreme Court referred to a European Court of Justice judgment of July 20 2016 (T-11/15), in which it had stated that geographical terms that assign well-known places to the relevant goods or services and present a link for the sectors concerned must be excluded from registration as trademarks.
Consequently, the Supreme Court confirmed the revocation of the collective trademark BARCELONA for goods and services in Classes 1 to 45 of the Nice Classification, stating that the fact that the applicant was a legal entity in public administration did not authorise the exemption of the requisite that the sign be distinctive.
The Supreme Court's judgment is final.
For further information on this topic please contact Paula Gutiérrez at Grau & Angulo by telephone (+34 93 202 34 56) or email (firstname.lastname@example.org). The Grau & Angulo website can be accessed at www.gba-ip.com.
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