"ESTARBIEN!" Trademark in Spain

In November 2022, the trademark "ESTARBIEN!" was filed in Spain for a wide variety of goods and services, namely for class 3 (cosmetic products, among others), 5 (pharmaceutical products, among others), 28 (games and toys, among others), 29 (meat, fish, among others), 30 (coffee, cocoa, among others), 31 (fresh fruits and vegetables, among others), 32 (beers, waters, etc.), 33 (alcoholic beverages) and 35 (advertising services, commercial business management, among others).

This trademark was refused both at first instance and on appeal on the grounds that the Spanish Patent and Trademark Office considered that the trademark was subject to the following absolute grounds for refusal, stating that signs cannot constitute a trademark if:

• Article 5(1)(b): are devoid of any distinctive character.
• Article 5(1)(c): consist exclusively of signs or indications which may serve, in trade, to designate the kind.

In this regard, the Office contended that the trademark applied for consisted of an exclamatory expression composed of a combination of words of a generic-descriptive nature and did not actually include any other characteristic element which would provide it with sufficient distinctiveness to individualize and distinguish the goods of the holder from the goods and services offered by other competitors on the market.

Consumers will thus not perceive the trademark 'ESTARBIEN!' as a trademark linked to a particular business origin, which is the purpose intended by a trade mark, but merely as an expression indicating the aim of the goods/services offered, the terms of which, moreover, could be used by other actors on the market.

The trademark owner, not being satisfied with this decision, filed a judicial review action against the decision of the Spanish Patent and TradeMark Office. The Madrid Court of Justice ruled that the first and second instance decisions of the SPTO were groundless on the basis of the following considerations:

• Regarding the lack of distinctive character: the Court recalls that the purpose of a trade mark is not only to identify a product/service, but also to enable consumers to associate it with a specific business origin and to differentiate it from its competitors' products.
• Concerning the prohibition in Article 5(1)(b), the Court emphasises the fact that absolute prohibitions must be applied restrictively, and determines that the sign "ESTARBIEN!" perfectly complies with the requirements to be a trade mark, since it is not descriptive as it consists of a single word together with an exclamation mark. Therefore, the sign is intrinsically suitable to enable consumers to distinguish this product from other similar products and to associate this product with its business origin.
• Finally, regarding the prohibition in Article 5(1)(c), the Court holds that the term ESTARBIEN! does not describe the goods/services claimed, as it neither provides information about the goods/services of interest, nor is it the ordinary or usual term to designate them.

Consequently, the trademark "ESTARBIEN!" is granted in Spain, as the Court upholds in its entirety the Appeal filed by the trade mark holder and confirms the suitability of the trade mark to be registered in Spain.