SHARED-USE TRADEMARKS FOR THE GEOGRAPHICAL INDICATIONS 165 In short, it can be affirmed that the use of shared trademarks is legally valid, both since the approval of the LVV and after the express recognition of this possibility in the LDOIGP. However, such use has always been subject to the condition of not generating confusion, so that such conduct or behaviour would reverse the legality of the practice. As regards the jurisprudential support for this measure, in relation to the issue of shared-use trademarks, the Supreme Court has ruled differently in two important decisions. In the first one, STS21, 3rd Chamber, of 6 May 2009 (the “DOCa Rioja” case), the provision of the designation regulation limiting the use of trademarks is considered to be in accordance with the law. This is reflected in FJ22 5 of the aforementioned decision, which states the following: “Article 28, therefore, has legal coverage in Law 24/2003, and far from restricting the right of ownership of the trademark and trade name protected by Law 17/2001, of 7 December, with respect to those producers or industrialists who also market other wines, which do not have the distinctive or denomination of the protected name “Rioja”, requires that in order to be able to use their brand or trade name with respect to those wines that they also produce or make and which do not have that name, they must inform the Control Board, which will submit a proposal to the Directorate-General for Agri-food Industry and Food, for the relevant purposes of authorisation; This measure safeguards the good reputation of “Rioja” wine for the benefit of the whole community”. The second one concerns STS, 3rd Chamber, of 5 March 2012 (the “DO Penedés” case), which ruled on several aspects of interest: 1) the non-existence of regional competences in trademark matters, as this corresponds exclusively to the State; 2) not considering valid the requirement in a Regulation for a geographical indication of specific trademarks in order to market wines from this DO; and 3) endorsing the simultaneous use of a trademark for wines from different origins, understanding that there is no reason for it to lead to confusion. Specifically, FJ 8 refers to the ruling of 6 May 2009, stating that “it must therefore be considered to be qualified by the present ruling so as to admit the possibility of a trademark designating wines from different protected wine regions or areas (without the requirement of “additional marks” being imposed in any case) provided that the designation and presentation of the wines clearly and simply allow the designation of origin to be identified in such a way as not to lead to error or confusion. Consistent with the above, the regulatory provisions adopted by the Autonomous Communities may not require “specific marks” in order to generally prevent 21 Spanish acronym for “Judgment of the Supreme Court”. 22 Spanish acronym for “Legal Basis”.
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