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Surname, first name, pseudonym, personal image – can they be regisrtered as a trademark in the Polish Patent Office or EUIPO?

Author: Agnieszka Skrzypczak

On 24 March 2016 a Spanish company, Gaudí BCN Projects S.L., filed in EUIPO a trademark application no. 015270077 having the following representation:

The above mark was applied for services in class 35 (among others for “sale in shops or via global telematic networks of promotional or advertising goods, works of art, craft objects, publications, cultural goods and, in general, goods relating to the life and work of the architect Antoni Gaudí”) and class 42 (including among others “research relating to design and architecture; design services for architecture; expert opinion relating to technology; services for the provision of technological information”). The mark was registered by EUIPO on 29 July 2016.

Subsequently, on 28 November 2018 a Spanish foundation Junta Constructora del Temple Expiatori de la Sagrada Familia  (Fundación) filed in EUIPO a request for invalidation of the above mentioned trademark in whole in respect of all the services from classes 35 and 42.

The request for invalidation of the trademark EUTM 015270077 GAUDÍ ORIGINAL INSPIRATED was based upon art. 8(1)(b) CTMR, art. 8(5) CTMR, art 7(1)(g) CTMR, art. 60(1)(b) EUTMR, art. 60(1)(c) EUTMR, art. 58(1)(c) EUTMR and art. 60(1)(a) EUTMR. The party filing the request referred to the following prior rights as obstacles to the registration of the trademark  GAUDÍ ORIGINAL INSPIRATED:

 

1. Spanish trademark no. M 2 738 950 ANTONI  GAUDI registered in classes 38, 39 and 42;

2. Spanish trademark no. M 2 790 473    registered in classes 9,14, 16, 21, 25, 28, 35, 39, 41 and 43;

3. A European Union trademark no. EUTM 15141641 MUSEU GAUDI registered in classes 9, 16 and 41;

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4. The right to the first and last name “ANTONI GAUDI”;

5. The right to the personal image of ANTONI GAUDI;

 

The Invalidation Division of EUIPO, on 14 April 2020, issued a decision on invalidation of the trademark EUTM no. 015270077    in whole. The decision was based upon the collision with the earlier right to the surname.  On 1 June 2020, Gaudí BCN Projects S.L. from Spain filed an appeal against the above decision, however the EUIPO Board of Appeals by virtue of a decision no. R 1100/2020-5 of 29 January 2021 dismissed the appeal and sustained the decision on invalidation of the subject mark in whole in respect of all the services in classes 35 and 42.

The Board of Appeal argued in the reasons of its decision that the Opponent (Junta  Constructora del Temple Expiatori de la Sagrada Familia (Fundación)) in the discussed case for invalidation was authorized to represent the rights of Antonio Gaudí and may prohibit a third party from using a trademark including the aforesaid family name in Spain. Moreover, the Applicant (Gaudí BCN Projects S.L.) had not proved that he had the Opponent’s express consent to apply for a trademark including the surname GAUDI which is famous worldwide and in Spain.

How does it work in Poland?

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