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Place of use vs place of rights: Spanish Courts had it clear before GC

By: Jorge Oria

September 30, 2022

It is commonplace to say that we live in a global market. Web 2.0 and now Web 3.0 have been key to removing physical frontiers and building a never experienced digital world. However, and despite abundant international treaties, regional agreements, and enhanced cooperations, IP rights are State monopolies.

One of the peculiarities of trademarks and absent in any other IP right is that the exclusivity remains alive for as long as the sign is used in commerce. The extent and characteristics of this requirement – already included in the 1883 Paris Convention – have stirred controversy throughout the years (see e.g., the quite interesting ECJ decision C‑622/18 about whether there is a right to obtain compensation for damages from infringement of a never-used trademark).

In a recent decision, the General Court (T-768/20 ECLI:EU: T:2022:458) has decided on the effect within the European Union of some trademark use that happened abroad (29). The case involved a US hotel company owner of a EUTM that, despite providing its hotel accommodations only in the United States, targeted EU consumers through advertising and a bookings portal accessible in EU territory. According to the Court (38), the EUIPO Board of appeal unlawfully excluded such evidence as proof of genuine use because the hotel services were provided outside the EU, ignoring that advertising is also a form of use.

The case should not be news at least for Spanish lawyers. In 2021 the 15th Chamber of Barcelona Province Court already ruled (238/2021, ECLI:ES: APB:2021:235) in a quite similar case, that advertising for hotel services provided in Mexico, should be enough to fulfill the genuine use requirement of the Spanish Trademark (22).

The Spanish decision ruling is very interesting and on its own, somehow predicted what the GC has now confirmed. The province Court brings to memory the Recommendation Concerning the Protection of Marks, and other Industrial Property Rights in Signs, on the Internet and confirms (34) that there is no inconvenience derived from the principle of territoriality to consider that the sign has been used in Spanish territory even if the place of effective rendering of the hotel services was Mexico.

Although the teachings of both rulings (in principle) apply to any Nice Classification, it is no coincidence that they are referred to as hotel services, maybe one of the best examples of a global digital market. These decisions provide very relevant advice to lawyers and clients about trademark registration strategies which can lead to filing and maintenance fee savings in the long term. However, a very precise case-by-case analysis must be made, with a special focus on national case law because, in the end, IP rights remain one the crown jewels for any country.

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