Background to the dispute

On 22 September 2009, Fiesta Hotels & Resorts, S.L. filed an application for registration of an EU trade mark at the European Union Intellectual Property Office (EUIPO). The trade mark in respect of which registration was sought is the following figurative sign:

The services in respect of which registration was sought are in Class 43 of the Nice Agreement and correspond to the following description: ‘Restaurant services (food and drink); temporary accommodation’.

The trade mark application was published in Community Trade Marks Bulletin No 2009/50 of 30 November 2009 and the sign was registered on 17 March 2011.

On 3 July 2017, the appellant, Residencial Palladium, S. L., filed an application for a declaration of invalidity of the trade mark at issue. The application for a declaration of invalidity was based, first, on the alleged bad faith of Fiesta Hotels & Resorts at the time of filing the application for registration of the contested mark and, second, on the use of the trade name GRAND HOTEL PALLADIUM, used in Spain for temporary accommodation and catering services. The application for a declaration of invalidity was directed against all the services covered by the mark at issue.

    Distinctive sign of Residencial Palladium

 

On 30 May 2019, the Cancellation Division partially granted the application for a declaration of invalidity. In July 2019, Fiesta Hotels & Resorts filed an appeal with the EUIPO against that decision.

By decision of 30 June 2020, the Fourth Board of Appeal of EUIPO allowed the appeal, annulled the Cancellation Division’s decision and dismissed the application for a declaration of invalidity.  The Court then examined the requirements for an unregistered trade mark or other sign used in the course of trade to enable its proprietor to obtain a declaration of invalidity of a subsequently registered trade mark. In particular, it noted that the temporary accommodation and restaurant services for which the sign relied on had been used were provided only in a hotel establishment in Spanish territory and that the evidence submitted by the appellant did not make it possible to establish to the requisite legal standard that, at the date of filing of the application for a declaration of invalidity, the economic and geographical dimensions of the use of the sign relied on were sufficient for it to be validly relied on within the meaning of Article 8(4) of Regulation 2017/1001.

Following that decision, Residencial Palladium appealed to the General Court.

Decision of the General Court

Examination of the requirement that the significance of the sign relied on must be more than merely local requires that account be taken, first, the geographical dimension, that is to say, the territory in which it is used to identify the economic activity of its proprietor. Secondly, consideration must be given to the economic dimension of the sign’s scope, which is assessed by reference to the length of time during which it has fulfilled its function in the course of trade and the intensity of its use, in terms of the circle of recipients for whom the sign has become known as a distinctive element – consumers, competitors and even suppliers – or even the dissemination of the sign (which can be demonstrated in a simple manner, for example, by the production of invoices issued outside the region in which the appellant is established, press articles indicating the degree of knowledge of the sign relied on by the public, or travel guides in which reference is made to the establishment).

In conclusion, as is clear from the judgment, since Residencial Palladium failed to prove the existence of the conditions set out above, the General Court dismissed the appellant’s claims for annulment and, consequently, the action in its entirety.

[JUDGMENT OF THE GENERAL COURT (Fifth Chamber) of 1 September 2021. Case T 566/20]