In its recent judgment 158/2021, of March 22, the Supreme Court examines the appeal against the declaration of invalidity of three Spanish figurative trademarks consisting of a drawing protected by copyright under Mexican law.
The drawing created in 1983 by former partners and executives of the Mexican subsidiary of the Spanish company Clark Modet y Compañía, S.L. is a monogram with the Clark and Modet initials. The drawing was registered by its authors in Mexico’s Artistic Works Registry and used by the Mexican subsidiary. In 1993, the Spanish parent company applied for registration of three Spanish figurative trademarks consisting of the monogram for classes 16, 35 and 42.
The owners of the drawing sued the Spanish company, requesting the invalidity of the trademarks on the grounds that they had been registered in bad faith, among other rulings. After the trademarks were declared invalid at first and second instance, the Spanish company filed an appeal in cassation on several grounds, of which only two were admitted. We focus on one of them below.
The appellant claimed infringement of section 10(1) of the Spanish Intellectual Property Act (Ley de Propiedad Intelectual) as it was ruled that the claimants’ drawing met the legal requirements to be a copyright-protected work, which was not the case. In particular, the company argued that the drawing was not original, as it did not have any “creative height” and could not, therefore, be recognized as an intellectual property work under Spanish regulations.
The Supreme Court dismissed this ground considering that section 10(1) of the Intellectual Property Act had not been infringed, simply because this had not been the precept applied. At first and second instance, to determine whether the drawing was protected, the Mexican and not the Spanish Intellectual Property Act was considered applicable. Like the Commercial Court, the Supreme Court referred to the 1924 Convention for the protection of literary, artistic and scientific works between Spain and Mexico.
Under article 1(A) of that Convention, “the authors of literary, artistic and scientific works from either of the two nations who secure their ownership rights with the legal requirements in one of the contracting countries will have them secured in the other (…).” Article 2 provides that “[t]o determine whether a work is literary, scientific or artistic, and consequently subject to the precepts of this Convention, the law of the contracting party whose legislation is most favorable to the rights of the authors, translators and publishers will apply.”
Based on these precepts, the lower court considered that the Convention contained a conflict-of-law rule. Therefore, to determine whether the drawing could be classified as intellectual property, Mexican law applied. For a work to be protected, Mexican law provides that it must meet the requirement of originality and a cosmetic element or degree of appreciation, as it must produce sensations in those who appreciate it, which both the Commercial Court and the Provincial Court of Appeals considered was the case with the drawing.
Therefore, the Supreme Court dismissed this ground as the claimed infringement of section 10(1) was irrelevant, because it had not been taken into account when assigning the claimants the intellectual property rights on their drawing.
Author: Clara Sánchez López