ANTIC OLIMPIC held to be unlawful
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The Spanish Supreme Court has held that the figurative trademark ANTIC OLIMPICwas contrary to the law (February 24 2009).
Antic Olimpic SL applied to the Spanish Patent and Trademark Office for the registration of the trademark ANTIC OLIMPIC (and discus thrower design) (Application 2.269.636) for services in Class 42 of the Nice Classification (restaurants).
The application was initially rejected by the office on the grounds that the mark was confusingly similar to the figurative trademarks JUEGOS OLIMPICOS (Registration 796.126) and COMITÉ OLÍMPICO ESPAÑOL (Registration 1.675.418), which belong to the Spanish Olympic Committee.
Antic Olimpic appealed and the application was allowed. The office considered that based on an overall assessment of the marks, the differences between them were sufficient to prevent a likelihood of confusion. The office omitted to examine whether the ANTIC OLIMPIC mark fell within the absolute grounds for refusal set forth in Section 11(1)(e) of the Spanish Trademark Law 1988, which states that signs that are contrary to the law cannot be registered as trademarks.
The Spanish Olympic Committee appealed, relying on Section 49 of the Sport Law (10/1990). Section 49 provides as follows:
“1. The commercial or non-commercial exploitation or use of the five interlinked rings, of the names Olympic Games, Olympiads and Olympic Committee, and of any other sign or form of identification which leads to confusion with [these emblems and names] is exclusive to the Spanish Olympic Committee.
2. No legal person, whether public or private, may use these emblems and names without the express authorization of the Spanish Olympic Committee.”
The committee also argued that:
- the mark applied for was confusingly similar to its earlier registered trademarks; and
- Antic Olimpic would gain undue profit due to the reputation of the committee's marks.
The High Court of Madrid also failed to examine the absolute grounds for refusal set out in Section 11(1)(e) of the Trademark Law in relation to Section 49 of the Sport Law. It took into account only the differences between the marks and affirmed the decision of the office.
The committee appealed to the Supreme Court, which overturned the decision of the High Court.
First, the Supreme Court held that the Sport Law is a public order rule and that the office was required to refuse the registration of ANTIC OLIMPIC under Section 49.
The court stated that the dominant elements of the ANTIC OLIMPIC mark (the word 'olimpic' and the image of a discus thrower) evoked the Olympic signs, which are exclusive to the committee under Section 49 of the Sport Law. Therefore, the court concluded that the mark was contrary to the law within the meaning of Section 11(1)(e) of the Trademark Law.
Antonia Torrente, Grau & Angulo, Barcelona
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