Barcelona. Who does not want to be associated with Barcelona these days? Barcelona is synonymous with innovation, modernity, culture and, above all, uniqueness.
As with every ‘à la mode’ city, a whole business has been born around the distinctive Trademark Entrepreneurs have discovered the appeal of using it in their products or services.
The disseminated ‘Barcelona’ Trademark is something positive. However, this diffusion has to be done in such a way that neither the image nor the values of the city are undermined.
It is not surprising, then, that some people have wanted to ‘control’ the use of the ‘Barcelona’ Trademark.
1.- The Barcelona Trademark
1.1.- Registration of the Trademark name
In 2001, the Barcelona City Council registered the community Trademark name ‘Barcelona’ in the Office for Harmonisation in the Internal Market (Trade Marks and Design) in classes 35, 38 and 42 of the Nice Classification.
Eleven years later, the consortium registered the name ‘Barcelona’ as a national collective Trademark in the Spanish Patent and Trademark Office (SPTO). This time it was listed in all classes of the International Classification.
Even so, ‘Barcelona’ Trademark names are on record as being registered both before and after. There are two appeals against the City Council granting this. We will have to see how they are resolved.
But why does it have to be registered? As noted by the City Council in the Regulation of good use of the ‘Barcelona’ Trademark it was approved “to protect the good name of the city.”
1.2. Control of the use of the ‘Barcelona’ Trademark.
But how can the good name of the city be protected?
The City Council has indicated that anyone wishing to request using the ‘Barcelona’ name should address themselves to them through an application form available online. In addition, upon approval, the conditions established by the regulations governing use of the Trademark must be followed. After three years, authorization will expire, although the possibility exists of it being renewed.
Even so, it is still the OEPM who decides which Trademark name requests can contain the name of ‘Barcelona’.
2.-What criteria are used to allow or disallow the use of the Trademark?
2.1 Conflicting Interests and opinions
The Consortium indicates that through this registration it is seeking to secure the interests of the community.
But who is this community? The problem of the ‘Barcelona’ Trademark is that behind the name there are thousands of divergent and varied interests. Citizens, business people, tourists, politicians and officials share an interest in preserving the good name of the city. However, each has a different opinion of what should be their city.
The problem is that the City Council, regardless of whether or not the formal requirements have been complied with to authorize a third party to use the ‘Barcelona’ Trademark name, is the body who decides if the proposal contributes to “enhancing or preserving the symbolic value, prestige and good reputation of the ‘Barcelona’ Trademark”. And this final decision, in the end, is not totally objective.
2.2. The case of Barcelona World
Without going too far, different views have emerged on what it means to enhance the reputation of the city. We are referring to different positions relating to the new ‘Barcelona World’ theme park.
The Barcelona World project promoters are beginning the necessary steps for the City Council to approve use of the name as the Trademark name for the theme park.
Apparently, Barcelona’s mayor has said that it should be analysed carefully, but in principle there should be no problem, because Barcelona World will give a good image of the city.
Opposing opinions to this statement have not been slow to emerge. Equally, some citizens and politicians believe that the fact that ‘Barcelona’ is the name of a theme park is not good for the city.
We’ll have to wait and see how the controversy ends that ‘Barcelona World’ has raised. What is clear is that other than ‘authorising’, the City Council can only decide whether to oppose the registration of the trademark or not.
3.- Monopolistic situation?
3.1 City Council in dominant position?
Regulations governing use of the ‘Barcelona’ Trademark indicate that the City Council will create an agency dedicated exclusively to managing the ‘Barcelona’ Trademark.
The question is, if there is an agency dedicated exclusively to deciding and controlling who can use the Trademark, who will control the actions of the agency?
3.2 A previous case: the Dalí Foundation
Another similar case is that of the Dalí Foundation. The Dali Trademark also has an exclusive holder. Specifically, the Dalí Foundation has the name registered as a collective Trademark.
Three years ago, the Gala-Dali Foundation was reported on the grounds that it “uses its legal and factual monopoly” in the market for Dali’s work to avoid “competition from third parties, who are also rightful owners of some works by Dali”. On that occasion, the Catalan Competition Authority considered that there had not been an abuse of dominance.
What is clear is that once you have a dominant position in a certain market, especially if you are the sole owner of powerful Trademarks such as ‘Barcelona’ or ‘Dali’, the competitive restrictions made from this position should be, in all cases, reasonable and justified.
Santiago Nadal
