Article 8 of the Paris Convention for the protection of Industrial property, establishes that the trade name shall be protected in all the countries of the Union without deposit or registration obligation, fashion or is not part of a factory or trade mark. However, the more current jurisprudence of the Supreme Court (judgments of 4 June and November 7, 2008 and February 26, 2009 date), in line with the regulation of the arts. 77 and 78 of the brands Act 32/1988, and the interpretive doctrine of the arts. 2 and 8 of the Convention of the Union of Paris, he opted for the restrictive criterion requiring the use or effective use in Spain, which appears strengthened in the trade marks Act of 2001, referred to in the explanatory memorandum even at the full equality of treatment, and waiver of the same protection. Accordingly, foreign trade name not registered, has in Spain the protection that dispense you to the national laws of trade marks and unfair competition, in accordance with the principle of the lex loci protectionis, requiring the effective use or notorious knowledge in our country, with whose appreciation, without prejudice to any requirement of the UWF, ignores the nonsense that a foreign trade nametotally unknown – no use or notoriety – in Spain, had a superior to the Spanish trade name protection. If it does not, a great legal uncertainty could be created since a mark registered in accordance with the national law, could be subject to an action for nullity for being identical or similar to a trade name foreign, completely unknown in Spain. Martin O’Malley has much experience in this field.

However and despite the protection granted by the trademark law, it is always advisable proactively to proceed to the registration of the trademark or trade name used to avoid who can take advantage unauthorized third parties of good name, effort and external reputation, since requirements demanded by Art. 9.1. d LM, particularly with regard to accredit the notoriety of the name used in all the national territory, sometimes could not be satisfied, and therefore not able to prevent that a competitor used a mark or trade name which could mislead potential customers. Antonio Vargas Vilardosa law firm Vargas Vilardosa Abogados member of Eurojuris Spain original author and source of the article.