Territorial Connection of Trademark Use on the Internet and the 'Commercial Impact' Criterion

Application of the Joint Recommendation Concerning Provisions on the Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet, adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of WIPO at the Thirty-Sixth Session of the Assemblies of the Member States of WIPO, September 24 - October 3, 2001 (the WIPO Joint Recommendation), establishing the "commercial impact" criterion.

Action for Revocation es-apbar-1158_2020

In a ruling on February 12, 2021, the Barcelona Court ruled on the use of a trademark on the internet, recognizing its use in the Spanish territory, even though the actual provision of the services offered online took place in Mexico.

In this case, a legal action for revocation due to non-use was brought against the Spanish trademark Ikonik Hotels, covering services in classes 35 and 43. In a first instance judgment, the Commercial Court upheld the revocation action, considering that the actual use of the trademark in the Spanish national territory had not been demonstrated, as the hotel services offered online pertained to services performed in Mexico. An appeal was lodged before the Barcelona Court.

According to the principle of territoriality governing trademark law, serious use must be carried out in the territory where the trademark is registered, in this case, Spain.

The Barcelona Court recognized the use in the Spanish territory by applying the principle of "commercial impact" as defined in Article 3 of the WIPO Joint Recommendation, which states that the following factors may be considered: "a) factors indicating that the user of the sign is engaging in - or has undertaken serious preparations to engage in - commercial activities in that Member State involving goods or services that are identical or similar to those for which the sign is used on the Internet; (...) c) the relationship between an offer of goods or services on the Internet and that Member State, including whether: ii) prices are indicated in the official currency of that Member State; d) the relationship between the manner of use of the sign on the Internet and that Member State, including whether: iv) the text associated with the sign is in a language commonly used in that Member State; v) the use of the sign is related to an Internet space that has been effectively accessed by internet users in that Member State; e) the relationship between the use of the sign on the Internet and a right in that sign in the Member State concerned, including whether: i) the use is based on that right." Thus, the use of a trademark on the internet is not necessarily linked to the place where the services offered online are actually performed. However, we remind you that this recommendation is not legally binding due to its nature.