Introduction

On March 2 2015 Alicante Commercial Court No 2, acting as the Community Trademark Court, declared the validity of Spanish Trademark 3.052.012, HOTEL CATALONIA SAGRADA FAMILIA, and its full compatibility with earlier Community Trademark 2.676.203, HOTEL SAGRADA FAMILIA.

The court dismissed the claims made by Hotel Sagrada Familia, SL - the owner of the Community Trademark HOTEL SAGRADA FAMILIA - against Hoteles Catalonia Group, the owner and user of Spanish Trademark 3.052.012, HOTEL CATALONIA SAGRADA FAMILIA.

Facts

Hoteles Catalonia was set up in the 1980s and is well known in the Spanish hotel industry. 'Catalonia' is the distinctive element that Hoteles Catalonia uses to identify the many hotels in its chain (more than 60). To identify each of its hotels, Hoteles Catalonia registers and uses signs composed of its main base trademark, HOTEL CATALONIA, along with the name of the city or specific location of each hotel - for example, HOTEL CATALONIA CATEDRAL or HOTEL CATALONIA PORTAL DE L'ANGEL.

Sagrada Familia, designed by Catalan architect Antoni Gaudí, is Barcelona's most popular monument, an emblematic temple of the city's Modernism movement.

On November 13 2012 Hoteles Catalonia applied to the Spanish Patent and Trademark Office (SPTO) to register the name HOTEL CATALONIA SAGRADA FAMILIA to distinguish its hotel, and on February 20 2013 the SPTO granted it as Spanish Trademark 3.052.012, with no opposition from third parties.

Case history

On December 22 2011 the Barcelona Court of Appeal issued a final judgment which declared that the owner of the trademark HOTEL BARCELONA CATEDRAL could not prevent Hoteles Catalonia from distinguishing its hotel with the sign HOTEL CATALONIA CATEDRAL.

On October 11 2013 the Catalonia High Court of Justice issued another final judgment which declared that the trademark HOTEL CATALONIA PORTAL DE L'ANGEL could be registered, in spite of opposition from the trademark HOTEL PORTAL DE L'ANGEL.

In this context, on May 2 2014 Hotel Sagrada Familia SL filed a claim against Hoteles Catalonia SA and another company from the same group, in which the plaintiff sought:

  • the invaliditation of Spanish Trademark 3.052.012, HOTEL CATALONIA SAGRADA FAMILIA and its cancellation at the SPTO; and
  • a declaration of infringement of its Community Trademark 2.676.203, HOTEL SAGRADA FAMILIA, based on use of that sign.

The defendant opposed this claim.

Decision

Alicante Commercial Court No 2 dismissed the plaintiff 's claims.

Regarding the first alleged ground for invalidation – bad faith at the time of the trademark application – the court rejected all of the plaintiff's arguments. The court considered crucial the fact that the application for HOTEL CATALONIA SAGRADA FAMILIA had been filed on November 13 2012 ie, after the Barcelona Court of Appeal had declared in its December 22 2011 judgment the compatibility of the mark HOTEL BARCELONA CATEDRAL and the defendant's mark HOTEL CATALONIA CATEDRAL. According to the court, this fact could explain why Hoteles Catalonia decided to apply for the trademark HOTEL CATALONIA SAGRADA FAMILIA despite the existence of the mark HOTEL SAGRADA FAMILIA.

The judgment also emphasised that the similarity between the two signs was only partial and the differences were substantial enough, and that this, together with the case law background, indicated that they were compatible signs, meaning that no bad faith could be found in the application.

In addition, as the Sagrada Familia monument identifies the entire city of Barcelona, it was a relevant reference to choose to refer to the city, without the hotel necessarily being in the Sagrada Familia area. Further, the hotel was located relatively close to the monument (within 1,200 metres), and thus this marketing strategy choice did not suggest a parasitic intention.

Regarding the alleged existence of a likelihood of confusion or association between the signs, the court held as follows:

  • The mark HOTEL SAGRADA FAMILIA had little distinctive strength, as 'hotel' identified the type of services and 'Sagrada Familia' was associated with the most famous and most popular monument in Barcelona; and
  • The mark HOTEL CATALONIA SAGRADA FAMILIA incorporated the name of the hotel chain 'Catalonia' prominently, which made it sufficiently original and distinctive. The importance of 'Catalonia' in the overall name lay in its placement before the words 'sagrada' and 'familia', its prominence due to the extent and particularity of this word and the fact that it is common practice to put the name of the hotel chain at the beginning of a name.

These circumstances meant that the combined name HOTEL CATALONIA SAGRADA FAMILIA had no likelihood of confusion or association with the earlier trademark; therefore, the relative invalidation and trademark infringement actions were dismissed.

For further information on this topic please contact Dalia Ferrando at Grau & Angulo by telephone (+34 93 202 34 56) or email (d.ferrando@gba-ip.com). The Grau & Angulo website can be accessed at www.gba-ip.com.

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