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Spain to remind to watch out before crying wolf…or rather coyote
According to Article 8 of the Paris Convention, “a trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark”. However, the Civil Chamber of the Spanish Supreme Court meant to construe this article as to make it read that the claimant shall nevertheless prove use or fame of their trade name in "a substantial part of the Spanish territory" in order to have reasonable grounds to oppose or seek cancellation of Spanish trademarks and trade names.
On the basis of a US trade name, a US company thus sought cancellation of the Spanish trademarks and trade names “COYOTE UGLY” and “CHICAS COYOTE”, said to have been registered in bad faith. Indeed, one will remember the 2000 US movie telling the story of the “COYOTE UGLY” bar (translated in Spain by “CHICAS COYOTE”). After the claim was dismissed in first instance and in appeal, the case was brought before the Supreme Court, which did not overrule the previous decisions since the claimant failed to prove actual use of their foreign trade name in Spain and in the US. Moreover, the Supreme Court was not allowed to review factual issues previous judges had already examined.
Although restricting the relative freedom set down by Article 8 of the Paris Convention, the December 17, 2009 decision still complied with the requirements of the abovementioned article for it did not impose to foreign companies any registration whatsoever of their trade name in order to be entitle to challenge Spanish signs. It seems that it only aimed at protecting domestic trade names by ensuring that foreign challengers could prove a real likelihood of confusion on the national territory.
Despite the relative harmonization in intellectual property matters and notably the trademarks field, the Spanish Supreme Court reasserted the principle that such rights depend on the country they are attached to, so that foreign applicants still have to meet national requirements in order to be granted equivalent rights.