Conflicts regarding trade names

On April 28, 1923, under number 6,449 and in the name of Juan Inurrieta, who identified himself as the manager of the company, an application was made to register the trade name “Columbia Graphophone Company, S.A.E.” However, the application was denied by the Registry of Industrial Property on December 18th, 1923. The reasons for the denial were related to the fact that some of the words in the proposed name were already registered as trademarks. Despite an appeal, it was rejected on April 2nd, 1924.

The trade name request was resubmitted on August 20th, 1931, and it was published in the Bulletin of Industrial Property under number 12912 on September 1st of that year. Subsequently, the “Compañía del Grafófono Columbia, S.A.E.” in Barcelona filed an opposition to this concession, dated October 29th, 1931.

In their opposition notice, they presented several arguments:

The proposed trade name was written in a foreign language and contained the expression “Spanish Corporation” (S.A.E.), which was contrary to the law.

The use of the name “Columbia” in the trade name was an issue, as it belonged to the opposing company. They detailed the existing registrations of the brand and trade name dating back to their ownership, providing supporting documents.

They asserted that the concession of this trade name could lead to confusion due to its similarity with the trade name (number 6811) and the brand (number 52233) already held by the opposing company.

In response, the proceeding for trade name number 12,912 was canceled. On November 18th, 1931, the “Columbia Graphophone Company” in San Sebastian filed a counter-opposition. They argued that they had the dealership of the English company “Columbia Graphophone Company Ltd.” in London and, as an “affiliate,” their name could not be different. They provided evidence of their company’s foundation deed, validating their status as a Spanish corporation (SAE).

Additionally, they contended that there was no significant similarity between the two trade names that could be misleading to consumers. They believed that the opposition filed by the company in Barcelona should not have been accepted legally since, according to their claim, the trademark was protected throughout all the countries of the Union without registration, and the ‘Columbia Graphophone Company Ltd’ of London, a subsidiary in turn of the American namesake, existed prior to the registration number 6811 by the Barcelona company.”

Furthermore, they argued that the “Columbia” name was a geographical term, and they disputed the claim of false expression of origin made against the law by the company in Barcelona. However, they maintained that the use of the word “Columbia” was legitimate in their case since their head office was located in the place where the parent company had its headquarters.

Compañía del Grafófono “Columbia” SAE (1924)

The Company in San Sebastian also raised an objection to the use of the trade name (number 6449) in 1923, pointing out that it was applied for at a time when Juan Inurrieta, who acted as the applicant, could not legally act as a manager on behalf of the company “Columbia Graphophone Company SAE” because he did so on April 30th, whereas the company was not legally established until August 30th.

The arguments presented by the company in San Sebastian convinced the judge, who ruled in their favor on December 9th, 1931. Consequently, they obtained the certificate of registration for trade name number 12912 on the same day.

The authorization for the trade name registration was published in the Bulletin of Industrial Property on January 4th, 1932. However, in the following month, on February 26th, the Company in Barcelona filed an appeal, accompanied by compelling arguments. Firstly, they disputed that the company “Columbia Graphophone Company, SAE” in San Sebastian was an English company, not even a subsidiary of it. They pointed out that the founding document dated August 30th, 1923, indicated that the establishment of the company took place between Messrs. Iñurrieta, Vega de Seoane, and Reparaz, who were all Spanish individuals, without the involvement of the London-based company.

They further argued that the contract between the company in London and the “Sociedad Hispano Americana, Inurrieta and Co.” in San Sebastian, which was provided by Mr. Iñurrieta, was exclusive but did not serve as evidence of subsidiary status. According to their claim, the contract was a private agreement made between the London-based company and the “Sociedad Hispano Americana, Inurrieta and Co.” in San Sebastian. Therefore, Mr. Iñurrieta could not have provided the contract to the new company without the proper transfer of rights from the previous owner, the Hispanic American Society.

All the arguments put forth by the “Compañía del Grafófono Columbia, S.A.E.” in Barcelona were accepted, and on March 19th, 1932, the judge ruled in their favor. The judgment stated that the Hispanic American Society, Inurrieta and Cia was not authorized, much less Mr. Inurrieta, to register in Spain any mark or trade name that belonged to the English society ‘Columbia Graphophone Company,’ but only to use it during the contract, with the owner of ‘Columbia Graphophone Company’ retaining the ownership of these marks (clause 31 of the contract).” Additionally, it was made clear that “as soon as this contract is finished or canceled, the agent will immediately change the name and cease using any of the words associated with it.

In the following year, on October 17th, the “Compañía del Grafófono Columbia S.A.” in Barcelona sold some of its industrial title deeds. These title deeds included several trademarks and the trade name no. 6811.

A public auction was held, with the Columbia Graphophone Company SAE in San Sebastian participating. Unfortunately, the title deeds were awarded to Don Álvaro de Malibran.

Subsequently, the company initiated a series of efforts to acquire these title deeds. They sought legal advice on the appropriate procedure to follow, as they had serious concerns about Mr. Malibran. After conducting thorough research on the registered trademarks and confirming Mr. Malibran’s registration as the owner of these trademarks, which he did on December 23rd, 1933, they entered into a purchase agreement. On January 19th, 1934, the Columbia Graphophone Company in San Sebastian officially registered the ownership of these title deeds.

From this date onwards, they began registering these trademarks (1), including “Columbia” (No. 23,227) and “Dos Notas ” (Two semiquaver notes) (No. 23,226) on July 7th. Furthermore, on September 26th, other variations of trademarks (No. 53,276 and No. 52,290) were also registered.

Marca Nº 23.227

Marca Nº 23.226

(1) The well-known trademark “Viva-tonal”, used by the Columbia Graphophone Company, had been registered since December 15th 1933 under the number 96740.