Background of the case

On 24 March 2016, Gaudí BCN Projects S.L. fileD the following EUTM:

In order to distinguish services in class 35 and class 42.

Filing, the Junta Constructora del Temple Expiatori de la Sagrada Familia, an application for invalidity, on 26 November 2018 based on the following earlier rights: Spanish Trade Mark ANTONI GAUDI; Spanish Trademark  European Union trade mark MUSEU GAUDI, Right to the name ANTONI GAUDI and Right to the image ANTONI GAUDI.

On 14 April 2020, the trade mark was declared invalid in its entirety on the following grounds:

  1. The right to the name ‘GAUDI’, protected by Article 9(1)(b) of the Spanish Trade Mark Act

In the subject proceedings, the applicant is not invoking a copyright, but a right to the name, which, under Spanish law, may be invoked by the heirs of the person concerned without any limitation in time other than that arising from the condition that it continues to identify that person for the general public.

  1. The foundation of the applicant for annulment has proved that it is the heir of the rights of Mr. Antonio Gaudí i Cornet.
  2. “Even though it is clear that the above-mentioned surname is not exclusive to the aforementioned architect, as there are other persons who bear this surname, it is no less clear or certain that the relevant public, when it hears the aforementioned surname, establishes an immediate association with the surname of the famous genius” Judgement 417/2008 of the Administrative Chamber of Catalonia in the fourth point of the “Legal Grounds”.
  3. Also, the aforementioned judgment mentions that: “Article 9, paragraph 1, establishes a differentiation when it is intended to register as a trademark the civil name or image that identifies a person other than the applicant for the trademark, depending on whether or not that person can be identified by the general public with a person other than the applicant. In particular, the legal regime states that the following may not be registered as trademarks: the civil name or image that identifies a person other than the trademark applicant (paragraph a), as well as the name, surname, pseudonym or any other means that for the general public identifies a person other than the applicant (paragraph b), unless duly authorised”.
  4. Finally, both Article 53(3) CTMR and Article 9(1)(b) of the Spanish Trade Mark Law provide as a condition for the application of these provisions that the proprietor of the right to the name has not given his consent.

In response, the proprietor of the EUTM appealed the decision in its entirety. In its response, the applicant for annulment requested the appeal be dismissed.

A communication was sent to the parties on 27 October 2020 raising the question of the relevant Spanish applicable law in this case.

Thus, the parties responded to that communication and concluded that the correct legal basis was either the Spanish Trade Mark Law (the applicant for invalidity) or the Spanish Civil Code (the holder of the EUTM).

The arguments put forward by the holder of the EM can be summarised as follows:

  1. Mr Antonio Gaudí died in 1926. Pursuant to Article 32 of the Civil Code, the civil personality has been extinguished and no one can inherit that civil personality. Consequently, the name Antonio Gaudí has become generic; no one has the right to use a name, exclusively, which has become extinct (Article 32 C.C.) and therefore without protection of any kind.
  2. Prescription of the moral rights to the paternity and integrity of the work.
  3. None of the heirs have the economic rights over the work of Antonio Gaudí, based on Article 27 of the Intellectual Property Act, which establishes that these rights expire at the age of 70 after the author death. All of them being now under public domain.
  4. Differences between the mark applied for and the opposing marks.

The appealant argues that the prior trademarks have in any event any connection with the challenged EUTM and there is no likelihood of confusion among those, thus those can peacefully coexist in the market.

The arguments put forward by the applicant for annulment in response to the appeal can be summarised as follows:

  1. One of the grounds for cancellation of the subject trademark was the right to the name; as set in Article 53(2)(b) of the Regulation, and on the basis of the aforementioned article “Without due authorisation, the following may not be registered as trade marks: b) The name, surname, pseudonym or any other sign which for the general public identifies a person other than the applicant”.
  2. The Junta Constructora del Temple Expiatori de la Sagrada Familia has duly proved to be the heir of the assets and rights of Antoni Gaudí.
  3. For further information, section 3 of Article 1 of Organic Law 1/1982 of 5 May on the civil protection of the right to honour, to personal and family privacy and to one’s own image states that the right to honour, to personal and family privacy and to one’s own image is inalienable and imprescriptible and furthermore, the waiver of this protection shall be null and void without prejudice to the cases of authorisation or consent.
  4. Although the death extinguishes the rights of the personality, the memory of the former constitutes an extension of the latter, which must also be protected by law.

Decision of the Board of Appeal

It is concluded that the proprietor or the heirs of a first name and/or surname may prohibit the use of a subsequent trade mark which coincides with or includes that name and/or surname, and thus invalidate a European Union trade mark in the same terms, unless there is consent to obtain such registration.

In the present case, the applicant for invalidity is entitled to represent the rights of Antoni Gaudí and has the capacity to prohibit the use of a trade mark containing that surname in Spain. Furthermore, the proprietor has not proved that it had the express consent of the applicant to apply for a European Union trade mark including that name.

Consequently, the Board considers that the contested EU trade mark should be declared invalid for all services on the basis of Article 53(2)(a) CTMR.

From the foregoing, the Board concludes that Junta Constructora del Temple Expiatori de la Sagrada Familia has proved that, under the applicable law, the proprietor or the heirs of a forename and surname which is known to the general public may prohibit the registration (and, a fortiori, the use) of the same as a trade mark by another person who does not have that forename and surname.

The Court decided to dismiss the appeal and cancels the trademark.

Decision of the Fifth Board of Appeal of 29 January 2021. R 1100/2020-5