BACKGROUND OF THE CASE

The applicant High Tech Hotels brought an action against Agincourt seeking a declaration of revocation of the trade mark IKONIK HOTELS, registered for classes 35 and 43, alleging lack of genuine use of the trade mark by the proprietor and having a legitimate interest given that the defendant had opposed its application for the European trade mark ICON HOTELS.

The defendant argued that the trade mark was in use, since a hotel was being built in Puebla, Mexico. The website was also accessible to the Spanish consumers. It also claimed that the trade mark had been continuously advertised in Spain through Google Ads, appearing on other accommodation booking websites, as well as the FITUR fair. It also provided evidence of the hotel that was to be built in Salamanca, but due to technical problems in the architectural development, had to be delayed.

At first instance, the Barcelona Commercial Court No. 2 upheld the claim, considering that the defendant had not proved effective use of the sign. Agincourt appealed against this decision, as it considered that the evidence relating to the hotel project in Salamanca had not been taken into consideration, and that the analysis of the evidence relating to the use of the sign on the internet was superficial.

DECISION OF THE COURT

The subject matter of the dispute, is whether it can be considered that there has been a genuine use of the trademark in Spain, since there was not a real hotel placed in Spain, and it must therefore examine whether the advertising in its different forms on the Internet is sufficient to consider that there has been genuine use.

First of all, it must be clear what is considered to be genuine use. Thus, the Provincial Court, quoting the case law of the European Union Court of Justice, states that “a trade mark is put to genuine use when, according with its essential function, it is used for the purpose of creating or preserving a market for those goods or services, excluding uses of a symbolic nature whose sole purpose is to maintain the rights conferred by the trade mark”. However, there is no objective minimum necessary use to consider that the mark has not been put to genuine use. Thus, the general rule is that an individual analysis must be made of each case, taking into consideration the circumstances of the case as a whole. The relevant ground is whether there is a real commercial purpose behind the use of the mark.

With regard to the evidence provided of the architectural project, the Court states that it cannot be considered as genuine use as such, as it is not directed at the company’s customers. However, it must be taken into account since it reflects real marketing plans and the delay in the continuation of the project has been proved.

With regard to the advertising use of the mark, in principle, it should be sufficient to consider that there has been genuine use of the mark, but the question is whether the advertising must be accompanied by an effective provision of the services that are immediately advertised. In this case, the advertising use of the trademark through the defendant’s website and accommodation platforms, which referred only to the hotel in Mexico, cannot be considered to be genuine use. However, the Court believes that this is a transcendental fact and that it must be considered relevant for the purposes of determining whether there has been genuine use, but in order to do so, it must be clarified whether it is a use carried out within the Spanish territory.

Article 39.1 of the Trademark Act requires that the use must be made in Spain by the owner, and it must be considered whether use via the Internet is considered as such. Here, the Court refers to the Joint Recommendation of the Paris Union and WIPO on the Protection of Trademarks and Other Industrial Property Rights in Signs on the Internet of 2001, in which Article 3 claims a series of factors to be taken into account, such as the fact that the offer of the goods is indicated in the official currency of the State in question, whether the text used with the use of the sign is in a language prevalent in the State, whether the Internet site where the sign is used has actually been visited by users in the State, and whether there are circumstances indicating that the owner of the sign has undertaken substantial plans to do business in the State in question for services similar or identical to those for which the sign is used on the Internet.

Thus, given the existence of several of the aforementioned connecting factors of the article in question, the Court considers that this is sufficient to consider that the territoriality principle is met and to determine that there has been a relevant genuine use.

The Court concludes that after examining the evidence provided by the defendant as a whole, there has indeed been genuine use of the trademark, through an advertising use, insofar as the services were advertised to consumers in Spain via Internet and that serious preparations to use the trademark in the Spanish territory were conducted with the hotel planned to be built in Salamanca, which was finally built a few months after the expiry of the 5-year timeframe established in Article 39 of the Trademark Act.

Judgement 238/2021 of the Barcelona Provincial Court 15th Section of 12 February 2021.