31-January-2014
The Spanish Supreme Court stated in a decision made public last
Monday that a simple orange square as used by telecom Orange cannot be deemed
distinctive and benefit from trademark exclusive rights. The discussion started
by virtue of the opposition of telecom company Jazztel (also using orange) to
the registration of such a trademark by Orange (international trademark 908137,
designtating Spain). According to the
Court, a “common orange” can only acquire distinctive character in
extraordinary cases by prior use. This was not the case, since both telecom
operators had peacefully coexisted until that moment. Registry precedent in
other countries where Orange does have its orange square trademark registered
are were not considered relevant, since in each country the prior use has been
necessarily different. The Supreme Court has taken this opportunity to remind
that, as a general principle, general interest is against the restriction of
the availability of colours in the market.
Read the decision (in Spanish) here: