HOTEL CATALONIA SAGRADA FAMILIA held to be valid

Spain

The Commercial Court Number 2 of Alicante, acting as a Community Trademark Court, declared in a judgment dated March 2 2015 that the Spanish trademark HOTEL CATALONIA SAGRADA FAMILIA (No 3.052.012) was valid and that its use did not infringe the earlier Community trademark (CTM) HOTEL SAGRADA FAMILIA (No 2.676.203).

The Commercial Court dismissed the claims brought by Hotel Sagrada Familia SL (the owner of the CTM HOTEL SAGRADA FAMILIA) against Hoteles Catalonia group (the owner and user of the Spanish trademark HOTEL CATALONIA SAGRADA FAMILIA).

Hoteles Catalonia SA, which was established in the 1980s, is well known in the Spanish hotel industry. ‘Catalonia’ is the distinctive element that Hoteles Catalonia uses to identify the numerous hotels in its chain (over 60). To identify each of its hotels, Hoteles Catalonia registers and uses signs consisting of its main trademark, HOTEL CATALONIA, along with specific names referring to the city or location where each hotel is situated (eg, HOTEL CATALONIA CATEDRAL or HOTEL CATALONIA PORTAL DE L’ANGEL), as is usual in this sector.

The Sagrada Familia, designed by Catalan architect Antoni Gaudí, is Barcelona’s most visited monument; it identifies the entire city, as it is an emblematic temple of Barcelona’s modernism. On November 13 2012 Hoteles Catalonia applied to the Spanish Patent and Trademark Office (SPTO) to register HOTEL CATALONIA SAGRADA FAMILIA for hotels; the SPTO granted the registration on February 20 2013 (Spanish trademark No 3.052.012), with no opposition from third parties.

On December 22 2011 the Barcelona Court of Appeal had issued a final judgment declaring that the owner of the trademark HOTEL BARCELONA CATEDRAL could not prevent Hoteles Catalonia from distinguishing its hotel with the sign HOTEL CATALONIA CATEDRAL. The High Court of Justice of Catalonia had issued another final judgment on October 11 2013 declaring that the trademark HOTEL CATALONIA PORTAL DE L’ANGEL could be registered, despite opposition by the owner of the trademark HOTEL PORTAL DE L’ANGEL.

Within this context, on May 2 2014 Hotel Sagrada Familia filed an action against Hoteles Catalonia SA and another company from the same group:

  • claiming that the Spanish trademark HOTEL CATALONIA SAGRADA FAMILIA was invalid and should be cancelled by the SPTO; and

  • seeking a declaration of infringement of its CTM HOTEL SAGRADA FAMILIA, as well as statements of condemnation regarding use of the mark HOTEL CATALONIA SAGRADA FAMILIA.

The defendant argued that the facts and the relevant case-law should lead to the dismissal of the plaintiff’s claims. The Alicante Commercial Court accepted the defendant’s arguments and dismissed the claims.

With regard to the first alleged ground of invalidity, which was bad faith at the time of the application, the court rejected all of the plaintiff’s arguments. The court considered that the fact that the application for HOTEL CATALONIA SAGRADA FAMILIA was filed on November 13 2012 (ie, after the Barcelona Court of Appeal had declared in its judgment of December 22 2011 that the owner of HOTEL BARCELONA CATEDRAL could not prevent use of the sign HOTEL CATALONIA CATEDRAL) was crucial. According to the court, this could explain why Hoteles Catalonia SA decided to apply for the trademark HOTEL CATALONIA SAGRADA FAMILIA, despite the existence of the mark HOTEL SAGRADA FAMILIA.

The court also highlighted the fact that the two signs coincided only partially and that the differences between them were sufficiently substantial. These factors, together with the relevant case law, seemed to indicate that the signs were compatible, meaning that the application had not been filed in bad faith.

In addition, as the Sagrada Familia identifies the entire city of Barcelona, it was understandable that a hotel might choose to refer to the monument in its name, without the need for the hotel to be located in the area known as the ‘Sagrada Familia’. Furthermore, the defendant was located relatively close to the monument (1,200 metres), so this marketing strategy did not seem to imply a parasitic intention.

Regarding the alleged existence of a likelihood of confusion or association between the signs (which the plaintiff cited as a second ground of invalidity and as a ground for trademark infringement), the court held, in substance, as follows:

  • HOTEL SAGRADA FAMILIA has only weak distinctive character, as ‘hotel’ identifies the services provided and ‘Sagrada Familia’ is associated with the most famous and visited monument in the city of Barcelona.

  • HOTEL CATALONIA SAGRADA FAMILIA incorporates the name of the hotel chain Catalonia prominently, which makes it sufficiently original and distinctive. The importance of ‘Catalonia’ in the overall name lies in its position, as it comes before the words ‘Sagrada’ and ‘Familia’, in the characteristics of this word and in the fact that it is common practice to put the name of the hotel chain at the beginning of the hotel name.

  • This meant that there was no likelihood of confusion or association between the combined mark HOTEL CATALONIA SAGRADA FAMILIA and the earlier trademark HOTEL SAGRADA FAMILIA.

Therefore, both actions (relative invalidity and trademark infringement) were dismissed.

Dalia Ferrando, Grau & Angulo, Barcelona

Get unlimited access to all WTR content