A Judgement rendered by the Commercial Court of Madrid has reached a decision regarding whether the owner of a trademark can prohibit a third party from using its trademark when the third party mentions that its product is compatible with the former’s trademark.
“Scalextric” is a very well-known Spanish trademark that commercialises an electric race track game for car racing. The owners of the trademark initiated proceedings against the owners of the trademark “Superslot”, who commercialise a game that is similar to that of “Scalextric” and who mention that their game’s electric tracks are compatible with those of “Scalextric”.
Therefore, it was necessary to determine whether the use of the trademark "Scalextric" by the defendant "Superslot" was or not fair. The defence of "Superslot" argued its position based on Section 37 c) of the TradeMarks Act, which allows third parties to use another party’s trademark provided that this use is made in accordance with honest practices visà- vis industrial or commercial matters in those cases in which it is necessary to indicate the intended purpose of a product or a service, namely as accessories or spare parts.
The issue regarding the need to mention a third party’s trademark in order to indicate the purpose of a product has been addressed and resolved in other jurisdictions, i.e. in the Netherlands, in Gillette vs. Hermans Groep BV, or in Denmark, in Melitta vs. Coffilter International.
The Judgement analyzes whether the game "Superslot" can be considered an accessory of "Scalextric" or not. The concept of accessory implies lack of autonomy. If "Superslot" cannot function on its own and requires "Scalextric" to run, then it can be considered an accessory.
Indeed, "Superslot" introduces track sections inside the game’s packaging that are compatible with "Scalextric". However, the Judgement concluded that the game "Superslot" is a complete game, meaning that it includes everything that is needed in order to play and therefore does not need "Scalextric" to operate.
In fact, according to the Judgement, "Superslot" wanted to take advantage of the reputation of the trademark "Scalextric" in Spain by mentioning the Scalextric trademark in its packaging. Said behaviour can confuse the product’s average consumer, usually children or teenagers who can associate the trademark "Scalextric" to the trademark "Superslot."
Therefore, the judgement concluded that mentioning the trademark "Scalextric" is not only an infringement of the trademark but also an act of unfair competition, given that it seeks to take advantage of the reputation of the trademark "Scalextric" in the Spanish market.