Unauthorized use of hotel trademarks by booking system constitutes infringement

Section 28 of the Provincial Court of Appeal of Madrid has held that the unauthorized use by a hotel booking service of the trademarks SOL MELIÁ and TRYP, which are owned by the hotel chains Sol Meliá SA and Dorpan SL (the plaintiffs), constituted infringement of the marks in question (Case 660/2006, July 16 2007).

Euroclub 21 SL operated a corporate travel club which provided members (for an annual fee) with a booking service for, among other things, hotels, restaurants, cruises and car rental. Euroclub used the SOL MELIÁ and TRYP's marks in brochures and leaflets and on its website. Euroclub offered discounts on bookings at the plaintiffs' hotels. The plaintiffs sued Euroclub for trademark infringement.

The first instance court ruled that unauthorized use of the marks SOL MELIÁ and TRYP constituted trademark infringement, as there was a risk that consumers might get the impression that the plaintiffs and Euroclub were linked legally or financially. However, the court held that such use was permissible under Article 37(c) of the Trademark Law, under which a third party may use a trademark where it is necessary to indicate the intended purpose of a product or service.

The court of appeal overturned the decision, holding that trademark rights may be limited only where the third party uses the mark "in accordance with honest practices in industrial or commercial matters", as stipulated by the law.

The court pointed out that in providing its services, Euroclub needed only to list the hotels with their names and addresses; there was no need to include the marks SOL MELIÁ and TRYP in its brochures and on its website. According to the court, Euroclub misappropriated the reputation of the marks. Therefore, the use of the plaintiffs' marks in order to convey the impression that there was a link between Euroclub and the plaintiffs did not constitute fair practice in trade.

Consequently, the court of appeal ordered that Euroclub:

• cease using the marks SOL MELIÁ and TRYP;
  
  
• withdraw from the market all advertising and promotional material and other documents bearing the marks; and
  
  
• destroy such material at its expense.

In addition, the plaintiffs submitted evidence that they had received complaints from clients who had not obtained the discounts offered by Euroclub. The court thus found that Euroclub had caused detriment to the plaintiffs and awarded €18,000 in compensation.

Euroclub has appealed the decision.

Carlos Morán-Medina, Elzaburu, Madrid