Spain Espagne Spanien. Report Q188

Transcription

1 Spain Espagne Spanien Report Q188 in the name of the Spanish Group by Raúl BERCOVITZ ALVAREZ, Antonia RUIZ LÓPEZ, Christian DURÁN SERADELL, José Antonio LÓPEZ MARTÍNEZ, Luis H. LARRAMENDI MARTÍNEZ, Jesús GÓMEZ MONTERO, Joan SALVÁ FERRER, Isidro José GARCÍA EGEA and Roel THIERIE, Conflicts between trademark protection and freedom of expression Questions 1) Analysis of current legislation and case law 1.1) a) What instrument of your law (eg. Constitution) guarantees the right to freedom of speech? The right to freedom of speech is guaranteed by the Spanish Constitution, fundamental law of the Spanish State, which that recognizes this right in its article 20.1.a), placed in the First Section ( Concerning Fundamental Rights and Public Liberties ), of the Second Chapter ( Concerning Rights and Liberties ), of its First Title ( Concerning Fundamental Rights and Duties ). This provision states that [The following rights are recognized and protected] a) the right to freely express and disseminate thoughts, ideas and opinions by word, in writing or by any other means of communication ( ). As a result of its constitutional placement and its definition as a fundamental right, this right is binding for all public authorities, is directly applicable, its exercise may be regulated only by formal law (article 53.1 Spanish Constitution), and any citizen may assert his claim to its protection by means of a preferential and summary procedure in the Ordinary Courts and, when appropriate, by submitting an individual appeal for protection ( recurso de amparo ) to the Constitutional Court (article 53.2 Spanish Constitution). Besides, it requires an special procedure for its amendment (article 168 Spanish Constitution). When the European Constitution is passed and ratified by Spain, what seems to be sure, its article II.71 will have to be taken into account. This rule, just like the article 10 of the European Convention on Human Rights and Fundamental Freedoms, which has already been ratified and, therefore, is effective in our country, protects freedom of speech and information in these terms: 1. Everyone has the right to freedom of speech. This right shall include freedom to hold opinions and to receive and impart information and ideas without interference by public authorities and regardless of frontiers. b) What does the right to freedom of speech include? Is both artistic and commercial speech protected? If so, does commercial speech have a different degree of protection? Pursuant to article 20 of the Spanish Constitution, freedom of speech has an indefinite scope, with no limits other than respect for the rights recognized under this Title (Title One of the Spanish Constitution Fundamental Rights and Duties), by the legal provisions implementing it, and especially by the right to honor, to privacy, to one s own image and to the protection of youth and childhood. 267

2 The scope of freedom of speech, however, does not include commercial speech, the most common instrument of which is advertising, this being considered to form part of freedom of enterprise which is recognized in article 38 of the Spanish Constitution. Freedom of speech, as recognized by article 20, is included in Section One, Chapter Two, Title One of the Spanish Constitution under the title of Fundamental Rights and Public Freedoms whereas freedom of enterprise comes under Section Two of the same Chapter and Title under the title of Rights and Duties of Citizens. This distinction between fundamental rights and simple rights tempers and qualifies the scope of protection accorded to freedom of speech, a fundamental right, and to freedom of commercial speech as an instrument of freedom of enterprise, a patrimonial right. The Supreme Court decision of 23 September 1988 (Chamber 4, RJA 7252) holds that: Advertising as a means of winning over customers does not involve engaging in an activity included as a fundamental right in article 20 of the Constitution given that it is not the mere expression of a thought, an idea or an opinion through words, in writing or by any other means of reproduction, as indicated in that provision. Rather, it is a professional activity meant to secure a material benefit relating to that activity which alters the free competition which must govern it and the defense of the interests of possible customers who may not be persuaded to go to a certain professional office by virtue of advertising which, because of its subject, is not identifiable with that of an industrial or commercial product. Therefore, when advertising is involved, the Constitutional right invoked must be restricted for the sake of the aforementioned principles which shape the practice of a professional activity. This decision was appealed to the Constitutional Court who did not admit the appeal to prosecution. However, in its notification of non admission of 17 April 1989 (not published), Section 4, Chamber II of the Constitutional Court confirmed that: the very purpose which distinguishes advertising activity marks a profound difference with the exercising of the right to freely communicate true information through any means. Although it too is a form of communication, it is linked to a commercial, industrial, artisanal or professional activity for the purpose of directly or indirectly promoting the contracting of personal or real property, services, rights and obligations, as defined by article 2 of current Law 34/1988 of 11 November concerning Advertising. Therefore, advertising is not a manifestation of the exercise of a fundamental right under article 20.1.d) of the Constitution insofar as this right gives coverage to the free and truthful transmission of facts which, as this Constitutional Court has stated on several occasions, may permit citizens to form their convictions by considering different and even opposite opinions and, so, to participate in the discussion of public matters [ ]. It is the ultimate purpose of advertising which in short excludes this activity from the scope of protection accorded by the aforementioned fundamental right. Subsequently, the Supreme Court reiterated its doctrine in a decision dated 18 February 1994 concerning the advertising of lawyers (Actualidad Jurídica Aranzadi No. 146, 21 April 1994, page 8). It pointed out the following: It is clear that this insertion, with the aforementioned connotations, implies and constitutes an obvious enticement or inducement to attract or win over clients beyond the customs of the profession which are limited to concisely stating the name and profession in the ordinary list of names and surnames shown in the telephone directory. Therefore, it contravenes, albeit slightly given the modest characteristics of the slogan, the literal and teleological 268

3 meaning of the deontological provision prohibiting bar association members not only from advertising, strictly speaking, but also from merely announcing or publicizing their services. All these reasons determine the dismissal of the appeal and the confirmation of the decision under appeal given that, as is quite obvious, the said statutory provision in no way violates article 20 of the Constitution concerning freedom of speech, ideas and opinion. c) Are also corporations or only individuals entitled to invoke freedom of speech arguments? Although the Spanish Constitutional Court has not expressly referred to this matter, there is no doubt that the right to freely express concerns, unless otherwise provided, both individuals and legal entities, since the constitutional provision we are analysing includes freedom of expression in its broadest sense. This may be also deduced from the decision of the Constitutional Court 139/1995, dated on September 26 th, which recognizes the entitlement of legal entities to invoke certain fundamental rights. Having said this, we should point out that the ownership of fundamental rights by a legal entity is conditional both on its purposes and on the concrete nature of the fundamental right in question, so there is no objection that, for example, a trade union (a legal entity) holds the right to freely express and can exercise it through a representative or a manager, which shall express the opinion of the organization regarding the matter of interest to his affiliates (see the decision of the Constitutional Court 160/2003, dated on September 15 th ); there is also no obstacle for considering that a legal entity is entitled to convey or freely receive truthful information by any media whatsoever (article 20.1.d), as it has been declared in cases in which publishing and press companies have invoked this fundamental right (see, for example, the decision of the Constitutional Court 112/2000, dated on May 5 th, in which the company Difusora de Información Periódica S.A. appeals for protection as regards the infringement of its rights to freely express and spread ideas and thoughts and to freely convey truthful information). A different matter is the expression for advertising purposes, regarding which there is no decision of our Constitutional Court dealing with this matter as the main subject. However, there are decisions of the Spanish Supreme Court in the same sense as referred in the point above, to which we refer. d) Is free speech only protected from unwarranted governmental interference, or is it also implicated when a private party calls upon a court to enforce rules of law whose effect would be to restrict or penalise expression? Free speech is a constitutional right which can be exercised not only in defence of citizens against interferences of public authorities, but also in defence of companies or citizens before a third party. In fact, nowadays, citizens are the ones who usually sue companies, or third parties, when the right to free speech of one party comes into conflict with the right of the other party to honour, the right to privacy or the right to one s own image. 1.2) a) How are free speech interests invoked in trademark litigation? In trademark infringement cases, it is unusual in Spain for the defendant to cite his constitutional right of freedom of speech. That said, freedom of speech could theoretically be cited in a lawsuit concerning trademarks, according to the case in question, and provided that the requisites foreseen by the case law of the Constitutional Court are fulfilled. When this is the case, it can be alleged that freedom of speech is regulated by art. 20.a) of the Constitution and, therefore, the primary character of the Constitution should prevail according to its superior position in the hierarchy. 269

4 The requisites in order to be able to cite this constitutional right are developed further on in point 1.2.d) below. b) Is there a provision in your trademark law which specifically concerns the admissibility of e.g.: criticism of another s mark or derogatory reference to another s mark; parody, satire or irony; artist s use of another s mark; using another s mark as a badge of loyalty or allegiance; using another s mark for the purposes of comparison, point of reference, description, identification, or to convey information about the characteristics of defendant s own product to the extent that such use may be considered as an exercise of the constitutional right of freedom of speech? (Please specify in case use is understood as involving a non trademark use in which case the question of freedom of speech does not arise). The issue of the Constitutional right to freedom of speech is not explicitly considered in the Spanish Trademarks Act 17/2001, of 7 December. We may only find some references to this matter among the provisions concerning the use of a competitor s trademark to indicate the purpose of a good or a service. Article 37 of the Trademarks Act, under the title Limitations of trademark rights literally provides that: The right granted by a trademark shall not allow its owner to prohibit use in economic transactions by third parties, provided that such use complies with fair industrial or commercial practices: ( ) c) of the trademark, where this is necessary for indicating the purpose of a good or a service, in particular as accessories or spare parts. For instance, a seller of spare parts for cars may indicate the car brand for which such parts are suitable; a company commercializing garments made of Lycra may use such trademark together with its own trademark; if a company makes chocolate or sweets using milk distinguished with a particular trademark, such trademark could be used to indicate the ingredient. In the field of services, a company selling software is entitled to indicate that it is compatible with Windows. That provision is a fundamental element in activities linked to the car industry as it allows using of another s mark to indicate the purpose of the spare part or the component of a complex product, without precluding the protection by different types of intellectual property rights. Spanish jurisprudence considers that it is unlawful to make any reference to another s trademark in such a way that the public could be erroneously led to believe that it is the official after sale service provided by the trademark s owner. The current Spanish Trademarks Act does not contain any other provision directly or indirectly related to this issue, although there is no reason to consider article 37 as a closed list. However, it should also be mentioned that, in this field there are legal provisions other than the Trademarks Act which could be applied either directly or sensu contrario to fill in the gaps of the Trademarks Act, for example, the Criminal Code (Article 205 slander and Article 208 defamation ); the Unfair Competition Act Articles 5, 7, 9 and 10 when there is a trademark conflict between competitors and, finally, the General Advertising Act Arts. 3 to 6 where the conflict arises in the field of advertising. 270

5 In conclusion, another s trademark may be used in certain cases as a reference or as descriptive means but only if such use is strictly necessary. However, the right to use a mark in such situations could never be considered as deriving from the constitutional right to freedom of speech. c) If no such provisions exist, how are free speech interests invoked in trademark litigation? Is there an open end clause or fair use clause in your trademark law which permits taking into account freedom of speech arguments? If not, are there any other gateways in your trademark law to permeate free speech concerns? Or do courts apply freedom of speech arguments directly with reference to the constitution? The Trademarks Act grants the owner of a trademark a very broad exclusive right. However, this exclusive right is not unlimited, as certain atypical uses of the trademark by third parties are permitted by the legislation or the case law in that these atypical uses do not affect the distinctive function of the trademark and do not involve a risk of confusion for the consumer. The already mentioned article 37 refers to a series of atypical uses not foreseen by the legislation but which, nevertheless, have to be taken into account when evaluating how interests related to freedom of speech are cited in trademark litigation. The use of trademarks in a comical context, as parody, is one form of exercising freedom of speech which is ever more common. These cases, as a general rule, apart from denigratory, obscene or blasphemous usage of another s trade mark, are legal and, therefore, it can be appreciated how in these cases freedom of speech can be cited. Insofar as the parody of another s trademark is concerned, we quote the case in which another s trademark is used as a trademark, ridiculing it, altering it or distorting it. An example in case law can be seen in the Decision of the Provincial Court of Appeals of Vizcaya of 5th November 1999 (AC 1999/2333) in which admission of the trade mark FCC Funerarias y Contratos Cementerios was denied due to the existence of nine affiliates of the Grupo FCC, all with the Trade Name FCC. With regard to the use of another s trademark for purposes of comparison, the mention of another s trademark whilst complying with requisites of comparative advertising is legal and it is only the obtaining of undue profit from the exploitation of another s reputation that has to be avoided, which has to be considered in accordance with the circumstances of the specific case. d) How much discretion do the courts have in applying free speech concerns? The limits of freedom of speech have to be determined according to the analysis of the used expressions, the pursued goal and the used means, so that only those expressions that imply an excessive exercise of the said right will be punishable and only in proportion to their significance. Among the factors that are to be taken into consideration to establish the scope of the right in every case in which it is exercised, it is worth mentioning the existence of an animus iniuriandi, the fact whether the statement made is well founded, whether the publicity it has received is in proportion to the pursued goals, and the objective absence of gravity of the uttered expressions (Decision of the Spanish Supreme Court 28 February 1990). We also have to take the case law of the Spanish Constitutional Court into account, which establishes that the exercise of the freedom of speech and the right to information have no other limits than those explicitly or implicitly determined by the Constitution, which are the other rights and the rights of others (Decision of the Spanish Constitutional Court 25 October 1999). That is to say, a first immanent limit consists in their coexistence with 271

6 other fundamental rights, as constitutionally established as well as in the Laws in which such rights are further developed (Decision of the Spanish Constitutional Court of 22 May 1995). In conflicts between freedom of speech and the right to honour, it is considered that these two rights or freedoms do not have an absolute character even though they have a vocation to expand themselves. A first immanent limit consists in their coexistence with other fundamental rights, as constitutionally established as well as in the Laws in which such rights are further developed, among which the rights to honour, to privacy and to preserve one s own image are very specially stated by way of enunciation and never of limitation. The aforesaid is so expressed by the fourth section of article 20 of our Constitution. In conclusion, the ultimate limit to any freedom is found in the Criminal Code, where the minimum level of requirements for social coexistence are established (Decision of the Spanish Constitutional Court of 14 December 1992). Freedom of speech and freedom to convey information are conceived as fundamental rights for the citizenship, as necessary means to guarantee the existence of a public opinion that is also free, which is indispensable to effectively obtain political pluralism as an essential value of the democratic system. It has been said that whereas facts can be proven due to their material nature, ideas, opinions or value judgments are not suitable for a demonstration of their exactness, due to their abstract nature (Decision of the Spanish Constitutional Court 107/1988; RTC Repertoire of the Spanish Constitutional Court 1988\107). This difference causes freedom of speech to lack the intrinsic limit that is constitutionally established with respect to the right to convey information, and which consists in the veracity requirement. The analysis to weigh up the conflictive rights has to be done, bearing in mind the actual circumstances of each case, in accordance with three convergent criteria, the freedom that is exercised, the general interest of the information and the public or private condition of the offended person. The aforesaid weighting essentially consists in an operation of legal logic that, in principle, forms part of the whole of faculties that are inherent to the authority to judge, which is an exclusive prerogative of Judges and Courts of the Judiciary according to the Constitution itself (article 117.3). Such prerogative indeed comprises the selection, even from a temporary perspective, of the legal provision that is to be applied to the specific case, its interpretation and the subsumption of facts under said provision, the establishment of the facts by means of the probative activity, with the admission and appropriateness of the proposed means of proof and the free appraisal of everything obtained through the effectively used means. If, to the aforesaid, you add the possibility to have the judgment executed, so as to make the legal protection effective (article 24.1 of the Spanish Constitution), one may obtain, in great lines, a clear view of the constitutional profile of what is understood to be the judicial function. (Decision of the Spanish Constitutional Court of 22 May 1995). 1.3) If there are trademark infringement cases in your country where defendant primarily sought to attack a company s ecological or employment policy, commercial practices and the like, do these cases also address the application of rules prohibiting defamation such as libel and slander or do they focus on the tarnishment of plaintiff s trademarks only? (The National Groups are not expected to elaborate on their country s laws prohibiting defamation.) The Spanish courts have had to address at least one case of defamation through degrading comments levelled at a company and its commercial practices. The company affected was the leading Spanish insurer, MAPFRE. Specifically, in a ruling granting interlocutory relief delivered on 21 February 2001, the Provincial Court of Appeal of La Coruña confirmed the previous ruling given by the Court of First Instance on 31 March 2000 and held that the 272

7 conduct of a disgruntled user, in posting on the Internet remarks and reports tending to discredit the trademark MAPFRE (which is famous in Spain and enjoys international prestige in the insurance sector), was unlawful. In those reports reference was made to specific instances of practices of the company which, according to certain users, were reprehensible. In addition, some of the slogans used by MAPFRE for advertising purposes were ridiculed. For example, the slogan MAPFRE... UN PUENTE HACIA SU JUBILACIÓN [... a bridge towards your retirement] was parodied through the rhyming phrase MAPFRE... UN PUENTE HACIA SU DESTRUCCIÓN [... a bridge towards your destruction]. The Provincial Court of Appeals of La Coruña declared that no third party could make use of the MAPFRE mark in business papers and advertising without the consent of the owner [article 31.2.d) of the Trademarks Act then in force] and, therefore, that the owner could prohibit the use of that mark by a third party in a medium of communication, such as the Internet, for purposes of adverse publicity. The court approached the case fundamentally from the standpoint of trademark law, concluding, in that regard, that the industrial property legislation intended for the protection of trademarks should not remain oblivious to cases of this nature. The court also acknowledged, although without entering into further analysis, that the plaintiff had likewise based its claim that the defendant s conduct was unlawful on the Act on the Right to Honour and One s Own Image. We believe that from this it could be inferred that in such cases it is not only trademark law that should be applied but also other laws, apart from those bearing on competition law (such as those dealing with industrial property, unfair competition and advertising), like the mentioned Act on the Right to Honour and One s Own Image. In this regard it is further to be considered that in Spanish case law it has been acknowledged that the concept of honour may encompass the commercial prestige of a business enterprise. There is a more recent case in which reference has been made to a mark to satirical or critical ends and yet that reference does not amount to use of the mark in the strict sense or, therefore, to infringement thereof. We are speaking of the Puta SGAE case. SGAE is the acronym of Sociedad General de Autores y Editores [the Spanish Society of Authors, Composers and Publishers], which is the most important manager of authors rights in Spain. Puta is Spanish for whore. A web site, or has been constructed for the purpose of launching a protest campaign against SGAE. It contains a range of matter that may broadly be qualified as critical or satirical, aimed at questioning the practices of SGAE in its management of the collective rights of authors, but might at times also be deemed defamatory or a violation of the right to honour. It does not appear that SGAE has sought interlocutory relief or commenced legal proceedings. 1.4) a) If you consider the trademark infringement cases in your country in which freedom of speech arguments were invoked what are the criteria applied by courts for determining whether a freedom of speech argument is justified? How important is the reputation of the trademark in question? Does it matter whether the use of the trademark in question is non commercial or may free speech arguments also be invoked if the trademark use is mainly commercial in nature? Does it matter whether the use of the trademark involves an expression or social discourse of objective/considerable value or a contribution to the public debate? Is the defendant allowed to express his views in a trenchant way? Or is the defendant required to report in a balanced way or even sparingly? If necessary, please differentiate between: criticism of another s mark or derogatory reference to another s mark; parody, satire or irony; artist s use of another s mark; using another s mark as a badge of loyalty or allegiance; 273

8 using another s mark for the purposes of comparison, point of reference, description, identification, or to convey information about the characteristics of defendant s own product to the extent that such use may be considered as an exercise of the constitutional right of freedom of speech (please specify in case use is understood as involving a non trademark use in which case the question of freedom of speech does not arise). As far as we know, with the exception of the case mentioned under 1.3) above, until today there are no court cases on trademark infringement in which freedom of speech arguments were invoked. In Spain, free speech has only been used as a defensive argument in unfair competition cases, in which a company sues a competitor for the denigration acts performed in the market by the later against its business or its products. In this direction, for example, the following decisions can be cited: Decisions of the Provincial Appeal Court of Barcelona (Section 15), of 14 January 2003; of the Provincial Appeal Court of Vizcaya (Secton 3), of November 11, 1999; and of the Court of First Instance num. 2 of Villafranca del Penedés (Barcelona), of July 20, The principles established by the Courts differentiates between the right to convey information and the freedom to express mere opinions. In the first situation, the information conveyed must be truthful and, if it is spread by an entrepreneur or company referring to a competitor, that is, within a commercial context, it must be also pertinent when making general reference to the competitive trademark (article 9 of the Act 3/1991, on Unfair Competition); and if the information is intended to compare one s own products or services with the ones of a competitor, such information must refer to characteristics which are homogeneous, relevant and verifiable (article 10 of the Act 3/1991). Concerning the expression of mere opinions, these are not subject to any truthfulness control (which does not apply), but they should be clearly identified as such. From the context it should be made clear that what is being expressed is a mere opinion and not a fact; if this is not the case, that what has been expressed shall be subject to the truthfulness control, and if this test is not passed successfully, it could be considered as an act of denigration. As a general rule freedom to express mere opinions or thoughts prevails in the Spanish jurisprudence over the interest of the company whose trademarks reference is made. But this case law has only assessed situations in which the person or entity invoking freedom of speech was defending an apparently legitimate point of view and in a proportionate way. The Spanish jurisprudence has not had the occasion to assess over acts of expression spread in a commercial context and in an unusually trenchant or aggressive way. Where the expressed opinions are based in a purely commercial interest, such speech is submitted to a more strict scrutiny than the opinions or demands expressed in a non commercial context. This is due to the application in the commercial context of the rules on unfair competition. In Spain it is worth mentioning the Metrobilbao case as a sample case of criticism or derogatory reference to another s mark. The Court assessed over a web page launched with a criticism and satirical purpose by an individual against the underground transportation system of the city of Bilbao, who was offended by the fine he had to pay for not buying a ticket. In the decision on the preliminary measures seeked by the company Metro Bilbao, S.A. against the owner of the web domain (AC 2001\275 Decision of the Court of First Instance num. 4 of Vizcaya, Bilbao, of January 25, 2001 it was declared that the use of a domain name coincident with the registered trademark is an ct of such activity [economic] and that, regardless of what may be proved in the 274

9 main procedure, the use of such coincident domain name may give rise to confusion over the content of the web page to which one is accessing, it should be concluded that Metro Bilbao, SA as owner of the trademark Metro Bilbao apparently has a sufficient justification ( fumus boni iure ) for claiming ownership over the domain name <metrobilbao.com>. [ ] In this way, which could be arguable to a certain extent, the Court considered that the satiric and offensive use of the name Metrobilbao entailed a trademark infringement act and an unfair competition act, completely ignoring the objective requisite for these type of cases, consisting of the carrying out of a competitive act in the marketplace. As far as we know, in Spain there is no case law on an artist s use of another s mark nor on using another s mark as a badge of loyalty or allegiance. There are, however, many cases of comparative reference in advertising. In all of them the rules on comparative advertising are applied, which may be found both in the Act 3/1991, on Unfair Competition and in the Act 34/1988, on Advertising. Freedom of speech is not a basic issue in these type of proceedings, it is rather a general background, which is sometimes mentioned as the rationale or ground for the existence of the more specific rules on comparative advertising. A similar thing happens when using another s mark for the purposes of comparison, point of reference, description, identification, or to convey information about the characteristics of defendant s own product, since in these situations the more specific legislation on trademarks, unfair competition and advertising is applied. In this field it is worth mentioning the decision of the Provincial Court of Appeal of Valencia (Section 8) of 13 October, 1997, which held that the use by a company giving technical repair services of appliances of a certain manufacturer s trademark in which its employees were specialised ( Corberó case), was justified. Coverage has also been granted by the Courts to a non commercial use of another s mark, specially in cases of comparison of technical sanitary analysis of the chemical characteristics of products of different brands. For example, the cases assessed by the Provincial Appeal Court of Vizcaya in its decisions of July 30, 1998 (Section 5) and of June 14, 1999 (Section 3) in which the right was declared of the Consumers Magazine Eroski to publish the laboratory analysis it had carried out over samples of products of different brands (cheese with denomination of origin Burgos in the first decision and pre cooked croquettes in the second one); however in the second decision the defendant was condemned to publish a rectification of some aspects of its analysis which were proven to have been incorrectly carried out. It is also worth mentioning the decision of the Labor law Chamber of the Superior Court of Justice of the Autonomous Community of the Vasque Country of November 3, 1998, in which the claim of an employee was rejected, whereby the said employee claimed to have been unlawfully dismissed by the company after having spread several accusations in different media and public entities of the autonomic administration against his employing company regarding some supposed breaches of the sanitary and safety rules in the labor place, as well as statements which could have impaired the reputation of the trademark and of the labor center of the company, all of which without evidence having been provided of the truthfulness of those statements. b) Specifically, please describe how joke articles are assessed. When analyzing the humorous use of a distinctive sign we must establish a clear casuistical delimitation according to the objective field where the fact here analyzed takes place. 275

10 The jurisprudential precedents that have examined conflicts derived from the use of another s trademark with humorous purpose in the concurrencial field as such, are scarce. In most cases such issue has gone together with other questions such as the cyber squatting (usurpation of domain names) or violation of the right to one s own image. In fact, the legal treatment in the special piece of legislation applicable to trademark matters, the Trademarks Act 17/2001, (article 37), does not contemplate the humorous use of a distinctive sign within the enumeration of the limits of the trademark right. In this matter it is important to point out that an aventual penalty will not be imposed due to the humorous character of the use, but due to the fact itself of constituting a non authorised use by the holder in the market. One of the cases that can be found in this context in our jurisprudence is the case Antoñita Linares (RJ 1999\660, Decision of the Supreme Court No. 137/1999 [Civil Chamber], of February 18). In this case the national railway company, RENFE, used the image and the registered trademark of the folk singer Antoñita of Linares to promote its youth s card; in the advertising a character named Antoñita Linares explained in a sarcastic tone the advantages of RENFE s Youth s Card. In its decision the Civil Chamber of the Supreme Court understood that there existed a risk of association on the part of the consumers considering the trademark of the folk singer and RENFE s advertisement. Besides, the Court considered the fact that the risk of association derived from the use of the aforementioned trademark could cause a moral damage to the titleholder due to the tone of mockery used in the advertisement. The decision condemned to an indemnity for moral damages in a joint interpretation of the ius prohibendi of the trademark right (old Trademarks Act 32/1988, applicable to the case in question) and of the indemnity rules of the Spanish Civil Code. c) May using another s mark as a badge of loyalty or allegiance be considered as an exercise of the constitutional right of freedom of speech? Does it matter whether the scarves and other goods are sold to consumers? Does it matter whether the manufacturer indicates that the goods are not original? Given that, to our knowledge, there are no cases of the referred type having been assessed by the Spanish Courts, the Spanish Group of AIPPI will merely express its opinion on the raised questions under 2.3.c) below, in the second part of the present report ( Proposals for the adoption of uniform rules ). d) To the extent that such use may be considered as an exercise of the constitutional right of freedom of speech please specify the cases in which the defendant is entitled to use another s mark for the purposes of comparison, point of reference, description, identification or to convey information about the characteristics of defendant s own product. To avoid reiterations, please see the response to question 1.2.b) above. 2) Proposals for adoption of uniform rules 2.1) a) Should free speech interests be invoked in trademark litigation? It should be possible to invoke free speech interests in cases where this Constitutional right actually comes into play, in other words, depending on the reason for referring to the mark in question and the context in which such reference is made. It should be possible to invoke freedom of speech only in cases in which a free public opinion is in play but not in defence of mere commercial interests. Thus, it would seem that, among legal persons, only those entities whose purpose is not exclusively to obtain profit should be able to invoke the right to freedom of speech. Consequently, with rare exceptions, the 276

11 invoking of this right should logically be limited to associations, foundations, NGOs and other non profit entities. Natural persons in their capacity of private individuals must of course also be able to invoke this right. b) If so, should there be provisions in trademark law which specifically concern the admissibility of e.g.: criticism of another s mark or derogatory reference to another s mark; parody, satire or irony; artist s use of another s mark; using another s mark as a badge of loyalty or allegiance; using another s mark for the purposes of comparison, point of reference, description, identification, or to convey information about the characteristics of defendant s own product to the extent that such use should be considered as an exercise of the constitutional right of freedom of speech? (Please specify in case use should be understood as involving a non trademark use in which case the question of freedom of speech does not arise). Specific provisions could be established but in fact they are not necessary if we consider that freedom of speech is already recognized by the Constitution and Article 20 thereof can be invoked whenever necessary. Moreover, the introduction of such specific provisions in the Trademarks Act could even be inconvenient because it would probably generate more disadvantages than benefits, specially considering the complexity of the matter and the necessity of a detailed regulation which should be in harmony with the Constitutional jurisprudence on this matter. It is also important to bear in mind that jurisprudence is changing and in constant evolution. The introduction of specific provisions in the Trademarks Act in order to implement a constitutional right does not seem reasonable. Neither would it be legally possible in Spain since the implementation of a constitutional right has to be carried out by means of an Organic Act and the Trademarks Act is an ordinary act. c) Or should there be an open end clause or fair use clause or any other gateway in trademark law which permits taking into account freedom of speech arguments? Or should the courts apply freedom of speech arguments directly with reference to the Constitution? How much discretion should the courts have in applying free speech concerns? The opinion of the Spanish group is that any rule relating to such ambiguous concepts as fair use would be detrimental to trademark law in that it would create legal insecurity and fuel litigation in the sector. To adopt indeterminate legal concepts such as fair use or similar expressions would be to open the door to the generalization of what ought to be regarded as exceptional situations and which, as such, should be addressed on a case by case basis, restrictively and within demarcations, and not in general terms. The courts already have instruments with which to sanction the justified use of another s trademark when a constitutional interest warranting protection really enters into play. The case law of Spain s Constitutional Court on freedom of speech is sufficient to provide coverage for exceptional situations of that kind and it may be applied by any court. 2.2) In cases where defendant primarily seeks to attack a company s ecological or employment policy, commercial practices and the like, should these cases be addressed in the context of a potential tarnishment of the plaintiff s trademarks or should rules prohibiting defamation such as libel and slander be applied? 277

12 If the use of a third party s trademark takes place whilst exercising the right to communicate veracious information, it would be more appropriate to apply the provisions that prohibit defamation or libel. In other cases, in which we are dealing with the exercise of the right to express ideas and opinions, the principles mentioned in the constitutional case law as resumed under the above point 1.2 d) that establish rules to follow in case of conflicts between freedom of speech and other rights such as the right to honour or to one s own image, etc., should be invoked. The ruling of the Provincial Court of Madrid, Section 11, of April 3 rd, 2000 deals with this matter. 2.3) a) Should there be limits to free speech in a trademark infringement context? Yes. b) If so, what should be the criteria be for determining whether a freedom of speech argument is justified? How important should the reputation of the trademark in question be? Should it matter whether the use of the trademark in question is non commercial or should defendant also be entitled to invoke free speech arguments if the trademark use is mainly commercial in nature? Should it matter whether the use of the trademark involves an expression or social discourse of objective/considerable value or a contribution to the public debate? Should the defendant be allowed to express his views in a trenchant way? Or should the defendant be required to report in a balanced way or even sparingly? If necessary, please differentiate between: criticism of another s mark or derogatory reference to another s mark; parody, satire or irony; artist s use of another s mark; using another s mark as a badge of loyalty or allegiance; using another s mark for the purposes of comparison, point of reference, description, identification, or to convey information about the characteristics of defendant s own product to the extent that such use should be considered as an exercise of the constitutional right of freedom of speech? (Please specify in case use should be understood as involving a non trademark use in which case the question of freedom of speech does not arise). The criteria for determining whether a freedom of speech argument is justified should be assessed on a case by case basis with reference to the constitutional jurisprudence which specifically refers to the scope of this right. The level of reputation of the trademark in question should not be taken into account. The higher or lower level of reputation could have effect on the harm (greater or smaller) that the mark in question may suffer, but it is not relevant in order to assess the lawfulness of the trademark use, which should be decided according to the same criteria in all cases. The level of reputation could be relevant, in some cases, in order to facilitate the proof the unlawful purpose of the trademark use (the taking of advantage of the reputation of another). It should be taken into consideration whether the use of the trademark in question is a use carried out with a commercial purpose. In such case, as a general rule it should not be allowed to invoke freedom of speech argument. In these type of cases the rules specifically provided for a commercial context should apply, that is, those establishing the rules of behaviour in the marketplace (unfair competition law, advertising law, trademark law, etc.). 278

13 It should not be required that the use of the trademark involves an expression or social discourse of objective/considerable value or a contribution to the public debate, as these questions are subjective and debatable. Nevertheless, even if not necessary, these circumstances should certainly have a positive influence in the possibility to invoke freedom of speech arguments. Thus, the use of another s mark pursuing social criticism should be lawful, for example, pointing out that a given mark is employing infant labor or that the overall salary of all the employees of a small or medium size company is smaller than the amount received by a football player for promoting its products, etc. The expression of points of view should be made in a way balanced and adequate to the purpose of the communication, without adopting a trenchant or unnecessarily vexing or hurting attitude. Biting criticism should not be prohibited as long as the opinion reported does not surpass the limits established by the constitutional case law (for example, see Spanish constitutional jurisprudence under 1.2.d above) for exercising the right to free speech. Concerning criticism or derogatory reference to another s mark in the advertising context, competitors should not be allowed to invoke freedom of speech arguments. In this context the specific provisions on advertising, unfair competition, etc., should be applicable, which regulate carrying out of denigrating acts in the marketplace. The use by an artist of another s mark in a work of art should in principle be covered by freedom of expression in its artistic creation modality. It should be clearly allowed when the mark in question constitutes one part or element among others within a complex work; it would be arguable when the mark is used just as it is, on its own, in isolation. The artistic purpose should be clearly identifiable as the main purpose, that is, art should not be used as an excuse or subterfuge for justifying other types of infringing utilizations. In addition, when the artistic work is of an ironic type, or when it incorporates parody or satiric elements, the artist s use of another s mark should comply with the same limitations as in those types of situations. With respect to parody, satire or irony, see the point below. c) How should joke articles be assessed? The use of trademarks in a comical context is one form of exercising freedom of speech which is more and more common. As a general rule, apart from denigratory, obscene or blasphemous usage of the another s trade mark, this usage is allowed as part of the right to freedom of speech. In order to examine lawfulness, it should be taken into account who the author of the humorous article or commentary is. More permissiveness should be afforded to the use of another s trademark by individuals, within the limits of the constitutional right that they exercise, i.e. pure and simple denigratory acts must not be permitted and a minimum evel of ingenuity must be required in the criticism so that it may be considered hum orous or parodic. Companies use of another s trademark should be more restrictive because, as well as fulfilling the above criteria, they must also respect the rules of correct business and good faith in trade. d) Should using another s mark as a badge of loyalty or allegiance be considered as an exercise of the constitutional right of freedom of speech? Should it matter whether the scarves and other goods are sold to consumers? Should it matter whether the manufacturer indicates that the goods are not original? Using another s mark as a badge of loyalty or allegiance should not be allowed if commercial profit is sought, as such situation should be deemed an act of exploitation of a registered sign without the due authorization of the registered owner. 279

14 In any case it would be necessary to consider the context of use of that form of allegiance. If the use is carried out in a way that excludes any risk of confusion/ association with the registered trademark and without a profit purpose, it seems clear that freedom of speech should prevail, since it should not be a considered a use of the sign as a mark. The fact of selling the goods to consumers has a great importance since it constitutes a lucrative aim of the user of another s mark, and this fact infringes the ius prohibendi of the trademark holder. Besides, mentioning that the goods are not original should not exempt the infringer from responsibility, since such mention does not exclude an indirect taking of advantage of another s registered sign. The consumer may ultimately acquire the goods in spite of being aware of its false origin, for the simple reason of being able to enjoy a product which, if original or manufactured under licence would have a higher price and, therefore, he is not in fact acquiring the legitimate product. Apart from all this, also the denigratory implications and the risk of dilution for the original trademark should be taken into account, when its holder has to tolerate copies of bad quality that expressly point out that they are not original. e) To the extent that such use should be considered as an exercise of the constitutional right of freedom of speech please specify the cases in which the defendant should be entitled to use another s mark for the purposes of comparison, point of reference, description, identification or to convey information about the characteristics of defendant s own product. The use of another s trademark should be allowed in certain cases as point of reference or description provided that such use is imprescindible in order to identify or describe one s own product or service. In any case, the reference to another s trademark must not create a likelihood of confusion no be deceptive. However, strictly speaking, no one of these situations may be deemed as a use covered by the fundamental right to freedom of speech. Summary Article 20 of the Spanish Constitution guarantees the right to free speech. It should be born in mind, however, that this provision is intended to give coverage to artistic, social, political speech, etc., but not to commercial speech, which has a different degree of protection under article 38 of the Constitution and under Spanish commercial legislation. There are no legal provisions nor court decisions rejecting the possibility that commercial companies exercise the right to freedom of speech, but this right is not intended to be invoked in a commercial context. In Spain freedom of speech is protected both from governmental interference and in situations of conflict between private parties. It is not frequent to see this constitutional principle being invoked in trademark infringement cases, but the Spanish courts have, in theory, the faculty to accept such a defensive argument if, in a concrete case, it was considered appropriate. There is a very short provision in the Spanish Trademarks Act which rules the use of another s mark, only referring to the cases where it is necessary for identifying one s own product. In this field it is also very important to take into account the legal provisions on unfair competition and on advertising and, in some cases, also the criminal provisions on libel and slander. There is no case law in Spain on an artist s use of another s mark nor on using another s mark as a badge of loyalty or allegiance. 280