The Supreme Court confirms that, in the absence of a link in the mind of the consumer, the reputation of the earlier mark is irrelevant
The existence of a link in the mind of the consumer as a previous requirement for triggering the additional protection afforded to well-known marks has been a recurring issue in the case-law of the European Court of Justice, but not so much in the Spanish case. However, the Supreme Court has taken the opportunity in its judgment of February 2, 2017, to include in our national jurisprudence the latest trends set forth by the Strasbourg jurisprudence, resolving on the application of article 8 of the Spanish Trademark Law, hereinafter TML and the scope of the protection of well-known marks.
The said resolution is issued in the context of a conflict arisen between the owner of earlier rights registered in class 25, consisting of word marks that include the term “24 hours” (complete or abbreviated) and device marks with the following graphic representation:
The defendant company is the proprietor of a trademark registered also for products in Class 25, and used in connection with baby products, namely new born baskets, with the following representation:
The plaintiff filed a nullity suit based on the relative grounds set forth in articles 40, 41 and 52 of the TML in relation to Articles 6.1 (a) and 8.1 of said regulation as well as an action for compensation of damages for trademark infringement.
The defendant based its defence, on the one hand, on the procedural exception of res judicata and, on the other, on the absence of a likelihood of confusion in view of the differences between the conflicting marks, despite having acknowledged the notorious nature of the marks of the plaintiff in the field of comfortable footwear.
The judgment rendered in the first instance, subsequently upheld by the Court of Appeal, dismissed the nullity action on the grounds that the parties were previously confronted in a contentious – administrative litigation concerning the granting of the registration of the later mark and that the absence of a likelihood of confusion and association established in the contentious jurisdiction amounted to a partial res judicata in accordance with Article 53 of the TML.
The infringement action was also dismissed because the Court of Appeal and the first instance court considered that the enhanced protection of notorious marks did not operate in cases such as the present, in which there is not a sufficient degree of similarity between the opposing signs.
The only ground of appeal accepted and analysed by the Supreme Court concerns the correct application by the Court of case-law on the scope of protection of well-known marks.
The Court makes reference to the case-law established in the Judgment of the European Court of Justice of 10 December 2015, Case C-603/14, “The English Cut”, under which, pursuant to Article 8.5 of the EU Trademark Regulation (corresponding to article 8.1 of the TTML) it requires the courts to examine whether the degree of similarity between the conflicting marks, taking into account factors such as the possible notoriety or renown of the earlier trade mark, is sufficient for the public concerned to establish a link between the signs.
Likewise, the Court refers to the rulings set forth by the European Court of Justice in its Judgment of June 18, rendered in case C-487/07, L’Oréal, which set forth that, in order for an infringement of Article 9 (1) (c) of the EU Trademark Regulation (corresponding to 34.2.c LM) to take place, in addition to the link with the notorious mark, one of the following scenarios must take place:
- That the use of the sign entails an improper advantage of the distinctive character
- That the use of the sign entails an improper advantage of the notoriety of the mark.
- That the use of the sign damages its notoriety or distinctiveness.
In view of the above-referred case-law, the Supreme Court held that not only was there no link between the opposing marks, but also, that the proprietor of the earlier marks had not sufficiently proved an actual or potential damage or improper advantage in connection with the notoriety or reputation of his signs.
For the above, the doctrine of the Supreme confirms that the special protection that article 8 of the TML awards to notorious or renowned marks does not operate automatically by the mere fact that the earlier marks have such nature. On the contrary, it is subject to the proof of the necessary requirements for the breach of the principle of specialty to apply such as the existence of a link between the marks and that such a link entails an unfair advantage or damage to their reputation or distinctive character.
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