Spanish Trademark Office: “Paella Catalana” too Generic to Register as Mark

Trademark, Genericness, DescriptivenessOn September 10, 2013, Barcelona chef Quim Marqués applied to the Spanish Patent and Trademark Office for registration of the trademark PAELLA CATALANA–the name of a wildly popular dish of rice, chicken, and seafood created by Marqués at the restaurant El Suquet de l’Almirall. See Application No. M3090401 (Oficina Española de Patentes y Marcas). Although many people outside Spain view paella as a national dish of Spain, it originated in Valencia and is strongly associated with that Mediterranean region of the country. Marqués’s recipe for Paella Catalana adapts the traditional Valencian meal to the unique tastes of the autonomous community of Catalonia in the east of Spain by substituting calamari, crayfish, peas, and plums from different locales within the region.

However distinctive the taste of Paella Catalana may be, according to various news reports, the Trademark Office recently determined that its name–translated as “paella from Catalonia”–is too generic or simply too descriptive of the product to be registered as a trademark. See La patente de la ‘paella catalana’ vulnera la Ley de Marcas, LaVanguardia.com (27 Mar. 2014); La Ley de Marcas frustra el registro de la denominación ‘paella catalana’, ElMundo.com (26 Mar. 2014).

Article 5(1)(b) of Spain’s Trademark Law 17/2001 explicitly prohibits the registration of marks that lack distinctive character. Subsection (c) of the same provision further declares ineligible for registration marks–

… which consist exclusively of signs or indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service or other characteristics of the product or service.

It is perhaps not surprising that these provisions forbidding the registration of purely descriptive terms seem to have frustrated Marqués’s attempt to claim exclusive rights in the name of his signature recipe. However, even without the added legal boost of a registered trademark, the mouthwatering qualities of the dish–featured in the short video below–appear more than strong enough to ensure its success in the marketplace.

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