When the brand “YOUTUBER” died from success in Spain

10 July 2020

Madrid High Court of Justice has ruled that the term "YOUTUBER" has become generic in Spain in the case BOLILLOTUBER v. YOUTUBE.

10 July 2020

In an interesting decision handed down by the Administrative Chamber of the Madrid High Court of Justice on February 6, which resolves the contentious-administrative appeal filed by Google LLC (does the start-up ring a bell?) against the decision of the Spanish Trademark Office by which it granted the BOLILLOTUBER trademark, the TSJ has ruled that the term “YOUTUBER” has become generic in Spain, and therefore cannot be appropriated by a single agent. Although I agree with the Court’s thesis, I regret that it was necessary to go to the Oxford English Dictionary in order to argue the generalization of the word, when we have, “at home”, as reliable a reference as that of the Spanish Royal Academy itself: YouTube: La RAE explica la forma correcta de escribir “youtuber” en español

In its resolution, the TSJ holds that “TUBER”, which, although it might seem incorrect as it is a Hispanicization of the original “TOUBER” term in English, follows the RAE’s grammatical recommendation (see above); it certainly comes from “YOUTUBER” and refers to frequent YouTube users, especially those that produce content on that platform.

The verbal and phonetic differences between BOLILLOTUBER and YOUTUBE were sufficient for the court to consider, despite the recognition of the YOUTUBE trademark´s well-known character, that both are distinguishable in the market, in the first place, and that we are not facing an undue advantage or a detriment of such notoriety, since the YOUTUBE platform aims precisely at the existence and activity of youtubers like BOLILLOTUBER, which has a popular channel of contents related to the art of haberdashery.

Professionals in the sector should be happy to know that Raquel M. Adsuar can continue to teach her 31,000 subscribers the secrets of bobbin lace (“encaje de bolillos), which is, as we like saying in Spain, what her legal representatives have done to successfully confront the Californian giant, and whom I would like to congratulate.

5/5 - (2 votes)

Alfonso Sabán

Lawyer. International Relations Departments. Trademarks Department.


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