Jugdement of Audiencia Provincial de Alicante of 12 January 2012, “Omega”
The Office for Harmonization in the Internal Market (OHIM) has recently published on its website a ruling delivered on 12 January 2012 by the Community Trademark Court of Second Instance seated in Alicante in case where the lawyers of Salvador Ferrandis & Partners intervened on behalf of the plaintiff.
The Court of Second Instance dismissed the appeal brought by the defendant and confirmed the decision of the Court of First Instance issued on 9 of June 2011, declaring that by importing 2250 suitcases identified by the sign “OMEGA JAPAN” and seized at the customs the defendant infringed the trademark rights of the plaintiff and took unfair advantage of the reputation and well-known character of the registered trademarks of OMEGA S.A.
The Court indicated that there is a high degree of similarity and likelihood of confusion between the trademarks registered by OMEGA S.A. and the sign “OMEGA JAPAN”. The court stressed that the additional element “JAPAN” confers no special distinctiveness to the sign and that where the registered sign consists of “OMEGA Ω”, it is clear that the dominant element of the sign is the word “OMEGA”.
Moreover, the Court acknowledged the well-known character of the plaintiff´s trademarks and recalled the basic principle in Trademark Law according to which the more reputed and distinctive is the trademark the higher the likelihood of confusion.
Regarding the argument of the counterpart that there can be no risk of confusion if the goods are of visibly worse quality, the Court concluded that it is relevant when dealing with a well-known mark and that one of the ways of damaging the reputation of a mark is precisely to use the infringing sign on goods of poor quality.
By confirming the ruling issued in the first instance, the defendant was ordered to cease the importation of the suitcases bearing the sign “OMEGA JAPAN” in the territory of the European Union, to refrain in the future from performing acts of importation, distribution and commercialization of such products and to withdraw from the commercial traffic and destroy the infringing goods, as well as all the materials and publicity documents related thereto.
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