A potentially delicate reference of a trade mark law question from the Juzgado de lo Mercantil 3 de Barcelona was made to the Court of Justice of the European Communities in Case C‑328/06 Alfredo Nieto Nuño v Leonci Monlleó Franquet.
Right: A Spanish lawyer gets into training for an encounter with the ECJ
Nuño owned the Spanish trade mark FINCAS TARRAGONA for estate agency and related services in Class 36. Franquet, an estate agent in Tarragona, had however publicly and continuously used the name FINCAS TARRAGONA, in Spanish (= FINQUES TARRAGONA in Catalan) to designate his own business. Nuño sued for trade mark infringement and Franquet, denying infringement, said that the name under which he carried on his business was a well-known earlier trade mark, which he had been using since 1978. He counterclaimed for the annulment of the registration of Nuño’s trade mark.
The national court wasn't sure how to progress from here: Franquet used his non‑registered mark only in the city of Tarragona and its surrounding area, but not elsewhere in Spain. Accordingly it decided to stay the proceedings and refer the following question to the Court of Justice for a preliminary ruling:
"Must the concept of trade marks which are “well known” in a Member State, referred to in Article 4 of [the Directive] be taken to indicate solely and exclusively the degree of knowledge and establishment in a Member State or in a significant part of the territory of that State, or may the determination of whether a mark is well known be linked to a territorial scope which does not coincide with that of the territory of a State but rather with an autonomous community, region, district or city, depending on the goods or services which the mark covers and the persons to whom the mark is actually addressed, in short, depending on the market in which the mark is used?"It its inimitably lifeless prose the Court opined as follows:
"Article 4(2)(d) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is to be interpreted as meaning that the earlier trade mark must be well known throughout the territory of the Member State of registration or in a substantial part of it"Says the IPKat, this response still leaves the referring court to take the bull by the horns and rule on whether Tarragona and its surrounding area are a "substantial part" of the territory concerned (you can read the facts and figures on Tarragona here). It may not be a substantial part of Spain, but it could be regarded as a substantial part of Catalonia -- being one of 17 autonomous communities within the Kingdom of Spain. Merpel adds, what a welcome change to find an ECJ ruling that's so short: the whole judgment only takes up 21 paragraphs, inclusive of the order of costs.