Thanks to his good friend and legal scholar Dr Verena von Bomhard (Lovells, Alicante) the IPKat has picked up some valuable intelligence concerning a case that was referred to the European Court of Justice from the Mercantile Court in Barcelona: Case C-328/06 Alfredo Nieto Nuño v. Leonci Monlleó Franquet. Advocate General Paolo Mengozzi rendered his Opinion on 13 September 2007 and it is still unavailable in English (you can however read it in German, Spanish, French, Italian, Portuguese, Polish, Finnish, Estonian, Czech and Slovene. Says Verena,
The IPKat agrees with Verena's observation that it is disconcerting that merely use-based rights of purely local significance (to use the language of Article 8(4) of the Community Trade Mark Regulation) could ultimately be held against Community trade marks via the notion of "well-known marks" which is contained in Art. 8(2)(c) of the same Regulation. It would be reasonable to assume that the Community legislature clearly considered that such rights could have no more than mere local significance.
"This case concerns well-known marks and Article 6bis of the Paris Convention. The question posed is whether a "well-known mark" in a Member State is one that is known and established in a Member State or in a signficant part of it, or whether it can result from recognition of the mark in an autonomous region, province, or town, depending on the products or services in question and their target customers.
The background is that Mr Monlleó, owner since 1978 of a real estate agency in the Spanish city of Tarragona operating as FINCAS TARRAGONA (fincas = plot, realty, property etc.), sought the invalidation of the trade mark FINCAS TARRAGONA, registered in the name of Mr Nieto (bthis was by way of counterclaim, since Mr Nieto had filed an infringement claim based on his registered mark). Apparently Mr Monlleó had managed to establish that, in Tarragona, the name of his real estate agency was well-known [comment: this is bound to occur where people use/register completely descriptive names. It is not easy to see how Mr Nieto managed to register the term FINCAS TARRAGONA as a Spanish trade mark in the first place].
Mr Mengozzi's reply was refreshingly novel, as befits one who is new to this field. He said that the concept of "well-known" as referred to in Article 4(2)(d) of Council Directive 89/104 is that of the Paris Convention on the Protection of Industrial Property and that, therefore, one must focus on the Convention. He then explains at great length the different possible general interpretations of the Paris Convention as granting an "equal treatment" only or as "unionist" in the sense that it establishes generally applicable rules both to merely domestic situations and those that involve foreigners.
However, as Mr Mengozzi says, the ECJ should not pronounce on this as the EU is not a member of the Paris Convention. Accordingly, he finds another way of answering the question: referring to Article 4(4)(b) of the Directive, he argues that the Member States are free to introduce in their national legislation the concept of unregistered trade marks. Based on the freedom which member states enjoy in defining the requirements for the protection of unregistered trade marks, he deduces that they are also free to define a well-known mark. That leads him to say that the member states are free to consider, as also being "well-known" within the meaning of Article 4(2)(d) Directive, marks that are not well-known in the entire territory or even in a significant part of it, but merely in a "more reduced geographic area".
It is, however, a simple fact that Spanish legislation chose NOT to introduce the concept of "unregistered marks". It seems fancifully creative to allow the judges of a member state the full freedom to interpret the concept of "well-known" under the Paris Convention simply because the legislation could have opted to introduce the protection of unregistered marks".