The Spanish collective trademark “BARCELONA” applied for all 45 classes in the name of the City Council of Barcelona has been rejected by the Spanish Patent and Trademark Office (SPTO) incurring in Absolute Grounds of refusal. However, it is curious to note that such examination was only conducted after third interested parties appeal was filed against its granting decision since the SPTO did not perform any ex officio.
To put everybody in the picture, we should remember that a collective mark is such when the mark is capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings. The applicant for a collective mark must submit regulations governing its use specifying the persons authorized to use the mark, the conditions of membership of the association and the conditions of use of the mark.
The appellant alleged that according to Article 5. 1 g) of the Spanish Trademark Act 17/2001 of December 20, 2001 “Signs which may deceive the public for instance as to the nature, quality or geographical origin of the goods and services” shall not be registered. The appeal was uphold for two different reasons based on this Article.
Firstly, as far as the misleading character of the contested collective mark is concerned, the Regulation of Use indicates who is authorized to use this mark requiring a link with the city of Barcelona or with its metropolitan area, thus excluding the whole province of Barcelona. Therefore, it is extremely deceive since it does not allow its use to those persons and/or undertakings associated to the province, limiting its use only for the city of Barcelona, not complying with the provisions of the above cited Article.
Secondly, Article 64 of the Spanish TM Act ruling collective trademarks establishes that “An application for a collective mark shall also be rejected where it may mislead the public as to the character or significance of the mark, in particular where it may give the impression that it is something other than a collective mark”. It should be noted that collective marks, as well as certification marks, are used by the companies upon authorization of their owners, as a second mark juxtaposed to the “house mark”. However the use of the geographic term “BARCELONA” without any other distinctive character juxtaposed to the trademark of a company will be perceived by the average consumer as a mere indication of the location, an address or a post code, incurring therefore in the prohibition foreseen in Article 64.2.
In addition to the above mentioned, the here concerned trademark was applied for all 45 classes, seeking protection for any good or service distorting the nature and characteristics of a collective mark. The contested collective mark intending to protect all goods and services does not identify any characteristic product of a specific geographic area which is the main feature of collective marks. Thus the Regulation of Use of the collective mark “BARCELONA” pretends to establish a full control over the use of this mark, without promoting a specific product or service in the course of trade, but constituting a barrier for the entry of products and restricting free competition.
The appellant also alleged that the sign is devoid of any distinctive character and is a word of common use since there are at least 4000 earlier trademarks containing the term “BARCELONA”. A collective mark is used to identify the goods and services of the members of the association, which is the owner of the mark, from those of other undertakings. In the here concerned case, being the applicant a public entity, only those goods and services authorized by the City Council will be distinguished from those lacking of any authorization. However, this collective mark consists exclusively in the geographic term “BARCELONA” without any other additional and/ or verbal element that will increase its distinctiveness, therefore as a single word mark it will be hardly perceived by users and consumers as a mark distinguishing the goods and products authorized by the City Council from those coming from other companies. Consequently, it will just be perceived as a mere indication of the address or post code of the undertaking but not as a collective mark due to the lack of its distinctive character. This sign cannot serve to distinguish in the course of trade the products authorized by the City Council from those non authorized.
There is a large number of collective and certification marks owned by public entities including geographic terms such as AVILA AUTENTICA (for different products), SAL MARINA DE CANARIAS ( for salt) or HORCHATA DE CHUFA ( for a tiger nut milk-based beverage typical of Valencia). Notwithstanding, those marks have three common characteristics:
- The geographic term is always accompanied by additional characteristic elements.
- The scope of protection of the collective mark is limited to determined goods and services.
- The conditions of use are clearly established in the regulations.
Notwithstanding, bearing in mind that this collective mark exclusively consists in word mark, containing a geographic term of common use and does not specifically indicates which characteristic product or service is willing to be identified, the mark has been rejected in its entirety. This decision can only be appealed before the Spanish Courts.