The plaintiff, Beheermaatschappij Schuitemaker, B.V., is bringing an action for invalidity, based on art. 51.1.b) Trademark Law 17/2001, of Spanish trademark no. 2884969 “SR SCHUITEMAKER”, mixed, for goods in class 7 (agricultural machinery), applied for on 16 July 2009 by the defendant.

The plaintiff claims that the said trade mark registration is a bad faith trade mark registration by a distributor who decides to appropriate the sign used by his principal without his due authorisation. It is a fraudulent, speculative and/or merely blocking registration towards the plaintiff in the territory of Spain, with the aim of preventing the true owner of the mark from registering it and thus affecting its competitive position in the market.

The defendant opposed the application, denying that the registration of the contested trade mark was applied for in bad faith and maintains that the applicant knew and consented to the registration of the trade mark in favour of the defendant. It states that the trade mark registration was made with the consent of the plaintiff and was carried out in order to protect the trade mark in Spain.

The judgment handed down on appeal, which overturns the judgment at first instance, considers that the following factual circumstances are decisive in assessing bad faith: at the time of the application for registration of the contested trade mark, in 2009, the defendant was linked to the plaintiff by a commercial distribution relationship; specifically, since 1997 it had been the exclusive distributor in Spain of the plaintiff’s products, which were distributed under the mixed sign ‘SR Schuitemaker’. That same sign had been used by the applicant, without registration, to designate its products on the international market since 2007 and similar signs incorporating the designation ‘Schuitemaker’ and ‘SR’ had been used by the applicant since it had been operating on the market (1919).  The defendant, without the authorisation of the plaintiff and without the plaintiff’s knowledge, registered the unregistered trade mark for the goods covered by the distribution agreement in its own name.

In the Court’s view, there are no other circumstances which, despite the absence of the plaintiff’s authorisation and the failure to notify the plaintiff of the application and registration of the mark in the defendant’s name, justify the registration of the contested mark in the name of the defendant-distributor. It considers that the non-registration of the trade mark by the plaintiff is not a valid justification, in order to exclude bad faith, especially when the defendant has neither stated nor informed it of its intention to apply for registration in its own name and, furthermore, the plaintiff has made continuous use of the trade mark without there being any indication of its intention to renounce it; on the contrary, the plaintiff has defended the trade mark against competitors, as evidenced by the intervention of effects carried out at the agricultural fair in Lérida in 2015.

The fact that the plaintiff’s earlier trademark is not a registered trademark does not prevent the defendant’s conduct described above from being considered an expression contrary to the general principle of good faith in commercial transactions, analogous to that regulated in art. 10 of the LM, and which falls within the scope of application of art. 51.1.b) LM. As the Supreme Court has stated in its Judgment of 23 November 2010, in relation to the absolute ground for invalidity of art. 51.1.b) of the LM, it is not necessary for the person challenging the trademark to prove its registration ownership or that the sign is well known within the meaning of art. 6 bis of the CUP, but it is sufficient for it to be established that it was legitimately used, as its creator, to designate services of the type for which the appellant obtained the registration, and that the latter had no right to it (…). The extra-registrar situation which is indirectly protected by Article 51(1)(be) of Law 17/2001 does not necessarily have the substance of an exclusive right of its own (…).

SAP of Barcelona of 4 April 2022.