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Protection of an unregistered sign is not easily welcomed by Spanish courts, given that it is a right reserved for those signs that are proven to have a degree of qualified recognition in the territory where protection is sought.

Particularly interesting is Ruling 14/2020 handed down on January 24, 2020 by the Provincial Court of Barcelona on the enforcement of precautionary measures against ELECHIM SPORTS S.L (ELCHIM) to compel it stop using the sign Supreme to identify items of clothing and other accessories (mainly, cotton t-shirts, sweatshirts, caps and footwear).

The request for precautionary measures was filed by US company CHAPTER 4 CORP. DBA SUPREME (CHAPTER), holder of some 130 applications and registrations for the sign Supreme in more than 50 countries, against promotional activities and marketing by ELCHIM of products under the brand Supreme Spain, both in shops and online. CHAPTER’s request was essentially based on the priority right of the unregistered sign Supreme in Spain, arguing it to be sufficiently known within the meaning of Article 6 bis of the Paris Convention. This request for precautionary measures was preceded by an action filed to invalidate the Spanish trademark Supreme Spain (registered months before by ELCHIM’s director through a British company), which was followed soon after by an action for infringement against several entities that were using the sign.

At first instance, the request was refused, as neither the urgency to grant it (despite, contrary to the general rule, being petitioned before submitting the main claim for infringement) nor the notoriety of the brand Supreme in Spain had been proven. However, the Fifteenth Chamber of the Provincial Court of Appeals of Barcelona rejected the first instance judge’s arguments in their entirety, both regarding the absence of danger in delay and the possible fumus boni iuris.

Regarding the time to request precautionary measures, the court understood that by filing before submitting the claim for infringement itself justified CHAPTER’s need to investigate to prove the existence of the infringement claimed subsequently, at a time when future claimants were opening different commercial premises in Spain under the litigious brand.

More interesting still is the court’s profuse rationale for accepting the appellant’s fumus bonis iuris argument and, consequently, the existence of notoriety of the unregistered brand Supreme in Spain.

Following a review of Spanish and EU case law on applying Article 6 bis of the Paris Convention and the WIPO’s recommendations to interpret the concept and requirements imposed to establish notoriety, the Provincial Court of Appeals in Barcelona rejected the decision in the ruling under appeal that  denied the existence of notoriety, given the limited sales volume proven by the petitioner. The Court upheld that, despite the volume of sales of products identified under a given sign being relevant to determine the extent of recognition in the market, it cannot be the only nor the main criterion to establish notoriety. In addition, the Court of Appeals found that the notoriety of the sign Supreme in Spain had been proven, by considering, among other things, the presence of the brand in the media and specialized press (thanks, in particular, to the brand having been promoted by globally recognized people), the value and prestige achieved by the brand in the market, and even the economic worth of the brand, reported by some sources to have reached one billion dollars.

The ruling indicated specifically that the Law does not protect a brand effectively used in the country where the protection is sought but rather the known brand, although being known may not go hand in hand with the relevant use of the sign. Furthermore, there are brands that are well known in Spain that are not effectively used in out country.

Having proven the notoriety of the sign Supreme in Spain and the existence of danger in delay (considering the different market segments and product prices of both parties and the massive presence of associatedproducts that may be in breach, which would render a ruling on the preliminary issue ineffective), the ruling acknowledged that there were sufficient grounds to grant the precautionary measures sought.

Clearly, it is a good precedent to take into account when arguing the existence of notoriety in cases where unregistered trademarks cannot be proven to have sufficient sales volume but can, however, be shown to have other elements that could  support being well known in the relevant market.

Author: Jean-Yves Teindas

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