A curious ruling of 10 December 2014 by the Tribunal Superior de Justicia de Madrid (sitting as the Court dealing with appeals against decisions from the Spanish Patent and Trademark Office "Spanish PTO") has been recently published regarding the trademark enforcement and registration of English terms in the Spanish jurisdiction. On 5 August 2011, Todo Espacio Publicidad S.L. filed the Spanish trademark application no. 2994650 for INSTITUTO COMMUNITY MANAGER (fig.) for "education; providing of training; entertainment; sporting and cultural activities" in Nice class 41. After its advertising on the official gazette, Mr. Larrea filed an opposition grounded on likelihood of confusion with 2 prior registrations: a trade name no. 294866 and a trademark no. 2908055 for COMMUNITY MANAGERS 2009.

 

Following the opposition, the trademark application for INSTITUTO COMMUNITY MANAGER (fig.) was refused. The applicant appealed to no avail and, upon receiving a confirmation of the appeal by the Spanish PTO in 01 February 2012, the applicant persisted and filed a new appeal before the Tribunal Superior de Justicia de Madrid. Among its arguments, Todo Espacio Publicidad S.L. defended that "community manager" was generic for certain services included in the application and could not be monopolized by the opponent. The trademark application included the term "instituto", so it could not be considered absolutely devoid of distinctive character. That was the B-side of its argumentation.

Under the Spanish procedural law, certain facts do not need to be evidenced. In particular, those considered notorious or well-known by the society. Pursuant to this rule, the Judge may decide (in non-specialized products) as if she were a consumer. The application of this rule to the instant case led to the Judge to declare that "community manager" has not been adopted by the Spanish language, and that the Spanish consumer is not versed in the English language. Therefore the argument by which the expression "community manager" was generic or descriptive of the services "education; providing of training; entertainment; sporting and cultural activities" failed. The refusal of the trademark application no. 2994650 for INSTITUTO COMMUNITY MANAGER (fig.) was in consequence confirmed by the Court.  

This ruling provides a few teachings. First, Spanish Courts might not be the most knowledgeable institutions regarding new business models in the social media and the information society. Second, and more importantly, claimant may always want to support its arguments with documented evidence if there is room for that, and don’t let the decision to be taken by the Court on its (always mysterious) consumer's feet.