[Background]

In July 2012, Dongfang Mingri (Jinjiang) Import & Export Co. (“Dongfang Mingri”) filed an application to register the word mark “奔富酒园” in Chinese characters (in English: BEN FU WINERY, No. 11157214), which was granted in December 2015, designating, among other things, goods such as “wine, brandy” in Class 33. Following registration, Dongfang Mingri began using the trademark for wine products in the Chinese market.

Southcorp Brands Pty Limited (a subsidiary of Treasury Wine Estates, “Southcorp”) filed an application to invalidate the registration of the contested trademark “奔富酒园” in March 2016, on the grounds that the contested trademark was similar to a sign (“奔富” (pronounced: BEN FU)) that had already been used by certain Southcorp distributors and enjoyed substantial influence, in addition to the fact that the owner of the contested trademark had registered a large number of trademarks that were reproductions, imitations, or translations of well-known third-party trademarks, which was contrary to the principle of good faith.

The Trademark Review and Adjudication Board decided to invalidate the registration of the contested trademark, finding that there was a clear intent to take unfair advantage of the reputation of well-known trademarks, engage in unfair competition, and seek illegal profits, thereby violating the principle of good faith and disrupting the proper administration of the trademark registry and fair and orderly market competition. Dongfang Mingri’s activities were found to constitute“acquisition of a registration by other improper means,”as set forth in Article 44(1) of the Trademark Law of 2014 (unchanged in the 2019 Amendment to the Trademark Law).

The Beijing Intellectual Property Court rejected Dongfang Mingri's appeal, which had been remanded by the Beijing High Court.

The case is finally referred to the Supreme Court of the People's Republic of China.

[Decision]

The Supreme Court first summarized the key issue in the case, which was to determine whether the contested trademark “奔富酒园” had been registered through other improper means, such as those prohibited under Article 44(1) of the Trademark Law of 2014.

At the outset, the Court confirmed that the most relevant element of the contested trademark is the first two Chinese characters, “奔富 (BEN FU)”; the combination of the remaining two Chinese characters, “酒园,” means “winery,” which can only be treated as a common description in the relevant industry.

Southcorp provided sufficient evidence to support its argument that the sign “奔富” was first used by some of Southcorp’s distributors in the 1990s to refer to the “Penfolds” wine brand, a Southcorp product. Furthermore, from the perspective of the relevant public, long before the filing of the contested trademark application, the Chinese characters “奔富 (BEN FU)” had been regarded as a transliteration of “Penfolds” and, as a result, established a strong association with it.

Prior to the case at hand, there had been numerous disputes involving trademark infringement and unfair competition between Southcorp and Dongfang Mingri. Previous rulings had found that Dongfang Mingri and its subsidiaries had intentionally misled the public by using promotional materials for the “Penfolds” wine brand in the media, which constituted unfair competition as well as an infringement of the “PENFOLDS” trademark.

Based on the foregoing analysis, the Court concluded that, by filing the application to register the contested trademark “奔富酒园,” Dongfang Mingri intends to capitalize on the reputation of the “Penfolds” wine producer and gain an unfair advantage over it.

Furthermore, the Court found that the fact that Dongfang Mingri and its subsidiaries had registered a large number (more than 250) of trademarks copied from other well-known trademarks—such as “宾利 (BIN LI, a transliteration of BENTLEY)”—for goods and services in classes 33 and 35 went far beyond what is necessary for a normal business.

[Comments]

From the filing of the petition to invalidate the trademark registration to the issuance of the judgment of invalidity, this case has come to an end after six years.

In the appeal proceedings before the Beijing High Court, the TRAB’s decision and the Beijing Intellectual Property Court’s judgment invalidating the contested trademark were based, among other things, on the fact that the contested trademark had been used in commerce by the owner after registration.

Contrary to the opinion of the Beijing High Court, the Supreme Court clarified the concept of“obtaining registration by fraudulent or other improper means”in Art. 44(1) of the 2014 Trademark Law (there are no changes in the 2019 Amendment to the Trademark Law), holding that it should be interpreted as referring to the means employed when filing the application for registration, rather than the purpose of the registration, which is in itself improper.

Therefore, the fact that the contested trademark was put into use after registration—regardless of the level of advertising investment or the effectiveness of the advertising—cannot negate the “improper” nature of the means used to obtain the registration and, consequently, cannot justify the registration of the trademark.

The ruling reflects the Court’s tendency to protect best practices in trademark registration, in a manner consistent with the CNIPA, which has continued to vigorously combat malicious trademark registration in recent years.

Author: Dan Liu

In recent years, trademark and patent law has become a realthorn in theside of the legal system. Yesterday’s issue of the Official State Gazette (BOE), dated July 28, right at the close of the judicial year, provides us with a new example of this peculiar phenomenon.

Organic Law 7/2022, passed by Parliament, stems, for our purposes, from a previous reform: the most recent amendment to the Trademark Law (2019), which announced the removal of trademark invalidity and revocation actions—currently handled by the Commercial Courts—from the judicial system and their conversion into an administrative proceeding before the Spanish Patent and Trademark Office (OEPM). This far-reaching change will not take effect until January 14, 2023.

Now the legislature, aware of the reservations that thisrevolutionhad sparked among some quarters—and almost as a form ofcompensation—is turning the tables once again with this new organic amendment: alldecisions by the Spanish Patent and Trademark Office, whether or not they relate to trademark invalidity and revocation proceedings, will be subject to review through civil courts rather than through the traditional contentious-administrative appeal.

As surprising as it may seem, jurisdiction over this new civil procedure for judicial review of SPTO decisions is assigned to the provincial courts, which thus see their scope of action expanded and will face procedural scenarios that had long been forgotten. An appeal against judgments issued by commercial courts is not the same as a single-instance proceeding arising from prior action by an administrative body.

As you might expect, this change is timed to coincide with the previous one and will not take effect until January of next year. And this is not a transitional period to be taken lightly.

Indeed, the hiatus that will last until January will require professional firms to take time to reflect, because the professionals who traditionally represent clients before the Spanish Patent and Trademark Office (OEPM) are industrial property agents, while those who appear before the provincial court are attorneys. Those hybrid firms that employ both types of professionals are poised to gain a competitive advantage in this new landscape.

But at the same time—and more importantly—the reform requires companies to take a strategic, case-by-case approach to determine to what extent it is preferable to ensure that an action for the invalidation or revocation of a trademark is handled through court proceedings rather than administrative proceedings, by filing such an action before the law takes effect. The fact is that, depending on the circumstances, this procedure before the Spanish Patent and Trademark Office (OEPM) can have as many advantages as it does disadvantages.

A new challenge for all of us in this process of jurisdictional deconstruction of industrial property, to which we have already become accustomed.

Author: Enrique Armijo Chávarri

This article first appeared in Cinco Días (JUL/2022). https://cincodias.elpais.com/cincodias/2022/07/28/legal/1659010274_560496.html

In just a few months, early next year, a significant legislative reform affecting the procedures for the invalidation and revocation of Spanish trademarks will take effect in Spain: these procedures, which have traditionally been handled by civil courts, will now be managed by the Spanish Patent and Trademark Office (OEPM). This will bring them in line with their EU counterparts—trademark invalidation and revocation proceedings in the EU, which are handled by the European Union Intellectual Property Office (EUIPO) rather than through the courts. However, Spanish civil courts will continue to have jurisdiction over trademark invalidity and revocation actions filed as counterclaims in civil proceedings initiated by a trademark infringement lawsuit.

The reform was approved several years ago, in 2019, as part of the transposition into Spanish law of a 2015 EU directive on trademarks, but due to its significance, its entry into force was postponed until January 14, 2023.

Legal professionals and some academics expressed their reservations about the new judicial system at the time. Among other issues, the criticism focused on the significant evidentiary component that some trademark invalidity and revocation proceedings may involve (for example, in cases of invalidity based on a petition filed in “bad faith”), for the examination and assessment of which the Spanish Patent and Trademark Office (OEPM) lacked the extensive experience and detailed regulatory framework possessed by the courts and judicial proceedings.

The aforementioned criticisms must have had some effect on Spanish lawmakers, given the recent legislative reform (approved in late July 2022), which grants civil courts (specifically, the specialized divisions of the Courts of Appeal) jurisdiction to hear appeals against all final decisions of the Spanish Patent and Trademark Office (SPTO) (including, therefore, those concerning the invalidity and expiration of trademarks). This reform will also take effect on January 14, 2023.

This new situation will require the specialized divisions of the Courts of Appeals to begin adapting to ruling on appeals not only against judgments handed down by the Commercial Courts, but also against decisions issued by an administrative body (the OEPM) in the context of administrative proceedings whose procedural rules and particularities have, until now, remained outside the purview of the civil courts.

The Spanish legislature has justified this new distribution of jurisdiction based on the “high level of expertise in industrial property matters” possessed by the specialized divisions of the Courts of Appeal, as well as “the desirability of avoiding differing jurisprudential standards in this area, given that two branches of the judiciary—the contentious-administrative and the civil—have jurisdiction, thereby promoting the principle of legal certainty.”

Beyond the doubts that this reform of the jurisdictional framework for industrial property proceedings may raise regarding the suitability of the OEPM, on the one hand, and the civil courts, on the other, to hear such proceedings and appeals, the usefulness of concentrating appeals against all OEPM decisions in the specialized divisions of the Courts of Appeal seems indisputable: this will unify the case law criteria regarding industrial property law in Spain, eliminating the previously possible divergent interpretations of the same or similar issues by civil courts and administrative courts (including the corresponding civil and administrative chambers of the Supreme Court).

Author: María Cadarso

MWC 2022 will take place in just two weeks, from February 28 to March 3, in Barcelona.

This will undoubtedly be an important year for the trade show, which—following the unexpected cancellation of MWC 2020 due to the pandemic and the “hybrid” (in-person/digital) format of the next edition of the conference in 2021—is returning to a primarily in-person format at the Fira de Barcelona venue.

Since there have been no significant withdrawals among the participating companies, this year’s event is expected to return to (or at least come close to) the level of activity and impact that this major conference had in the years leading up to the pandemic.

It is likely that this “return” to the MWC as we knew it will also bring with it a resurgence of legal disputes between companies regarding potential infringements of industrial property rights (which saw a notable decline last year, undoubtedly due to the significant absence of conference participants and the “watered-down” format in which it was held). In anticipation of these disputes, and as it has been doing for years, the Commercial Court of Barcelona (together with the EU Trademark Court in Alicante) has approved a“Protocol for On-Call Service and Rapid Response”to ensure that requests for injunctions and preliminary proceedings regarding infringements of industrial property rights in the context of the conference are processed expeditiously. Thus, among other things, the Court has made the following key commitments:

• Resolve, on the same day they are filed (within 24 hours), requests forpreliminary ordersintended to prevent the issuance of injunctions without a hearing for the defendant company.
• And to rule within two days (48 hours)on requests forpreliminary proceedings, fact-finding proceedings, and injunctive relief(in the latter case, provided that the request does not require a hearing with the defendant and the defendant has not filed a preliminary brief; in such a case, a hearing would be scheduled within 10 days).

ELZABURU has accompanied its clients to recent editions of MWC and has extensive experience in handling legal disputes arising during the event (in fact, for example, of the 18 cases filed in court during the 2021 MWC, 15 were handled by ELZABURU).

Once again this year, the Firm stands ready to advise, assist, and defend its clients in connection with any disputes that may arise in the context of MWC 2022 regarding the infringement of industrial property rights.

Author: Maria Cadarso Diaz de Entre-Sotos

(Supreme Court Landmark Case No. 157)

On June 30, 2021, the Supreme People’s Court of the People’s Republic of China issued the 28th batch of guiding cases, of which Case No. 157 concerned the protection of applied artworks.

Highlights of the ruling

For a work of applied art to be protected under copyright law, it must be original, possess a certain artistic value, and that artistic value must be clearly distinguishable from its practical function. Furthermore, intellectual property law protects only the aesthetic character of the work, not its technical utility.

Background

In 2009, Crosplus Home Furnishings (Shanghai) Co., Ltd. (hereinafter “Crosplus”) designed a traditional Chinese-style cabinet that it named the “Tang Yun Cabinet.” Between September and October 2011, it was displayed on a third-party website, and on December 10, 2013, Crosplus registered the copyright for the “three-dimensional design of the Tang Yun combination cabinet” through the China Copyright Protection Center.

In 2013, Crosplus discovered that Mengyang Furniture Sales Center (hereinafter “Mengyang”), a distributor of Beijing Zhongrong Hengsheng Wood Co., Ltd. (hereinafter “Hengsheng”), was selling a cabinet manufactured by Hengsheng that was substantially similar in appearance to “Tang Yun.” Crosplus then sued the Mengyang Sales Center and Hengsheng for copyright infringement of its work of applied art, the “Tang Yun Cabinet.”

The court rejected the plaintiff's claims, and the decision was overturned by the appellate court.

Conclusion

 The appellate court reviewed the case in two steps:

1. Was the “Tang Yun Cabinet” a work protected under the Intellectual Property Law?

Article 2 of the Implementing Regulations of the Copyright Law of the People’s Republic of China provides that “the term ‘work’ as referred to in the Copyright Law means original intellectual creations in the literary, artistic, or scientific fields, provided that they can be reproduced in tangible form.”
Article 4, paragraph 8, of the Implementing Regulations stipulates that “’works of art’ are two-dimensional or three-dimensional works of the visual arts created through lines, colors, or other means that produce an aesthetic effect, such as paintings, calligraphic works, and sculptures.”

Therefore, any original intellectual work that can be reproduced in tangible form is protected by the Copyright Act as a “work.”

Although China’s Copyright Law does not explicitly mention “works of applied art,” in practice they are generally protected as works of art. For an industrial product to be considered a “work of applied art,” it must—in addition to meeting the general requirements for a work (independent creation and creative expression)—have an aesthetic effect. Furthermore, the scope of protection under the Copyright Law is limited to the author’s expression and does not protect technical utility. Therefore, the protection of a work of applied art under the Copyright Law also requires that its artistic and functional aspects be clearly distinguished.

In this case, the plaintiff’s cabinet met both aesthetic and functional requirements. On the one hand, the plaintiff’s creative work is reflected in the choice of materials, patterns, and the specific placement of the accessories. The color of the furniture panels is not the natural wood grain itself, but rather imitates the color and elements of traditional Chinese furniture reimagined using abstract techniques; furthermore, the front cabinet doors, drawer handles, and drawers feature handcrafted solid brass hardware, among other characteristics.

On the other hand, the artistic nature of the closet can be clearly distinguished from its practicality, since modifying its artistic elements would not affect the closet’s practical function, which is the storage and display of clothing.

Based on the foregoing, it was confirmed that the plaintiff’s wardrobe can be considered a work of art eligible for protection under the Copyright Act.

2. Does the manufacture and sale of a product that is substantially similar in appearance to a work of applied art infringe the copyright of the latter?

To determine whether a product infringes the copyright of a protected work, the court must examine and decide whether that product is “substantially similar” to the protected work and whether the infringer had “access” to it.

As noted above, the Copyright Act protects only the artistic nature of works of applied art; therefore, the comparison between the infringing product and the protected work must be limited to the “artistic aspect.”

After comparing the two works, the court found that their creative elements were substantially similar, based, among other things, on the cabinet’s overall L-shape, the similar arrangement of the doors, the decorative accents, the pattern of the panels, and the overall shape.

Given that the defendant did not provide evidence to show when the design of the infringing products was completed, nor did it provide information about the designers—coupled with the fact that the defendant and the plaintiff were competitors in the same industry—the court found that there were grounds to believe that the defendant had “access” to the plaintiff’s works.

Based on the foregoing analysis, the court ultimately ruled that the products in question infringed the copyright in the work protected by the plaintiff.

Author: Dan Liu

On September 9, the Court of Justice issued a judgment in Case C-783/19, ruling on a preliminary ruling requested by the Provincial Court of Barcelona in connection with an action for infringement of the “Champagne” designation of origin brought by the Comité Interprofessionnel du Vin de Champagne (CIVC) against several tapas bars operating under the name “Champanillo.”

The Commercial Court of Barcelona had dismissed the case at first instance, ruling that there was no infringement of the designation of origin because the term “Champanillo” was not used to refer to an alcoholic beverage, but rather to hospitality services that were not comparable to Champagne wine.

When ruling on the appeal filed by the CIVC against this decision, the Provincial Court of Barcelona had some doubts regarding the interpretation of the applicable European Union regulation —Regulation No. 1308/2013—and decided to refer these doubts to the Court of Justice through a preliminary ruling.

The first of these questions concerned the possibility of protecting designations of origin, pursuant to Article 103(2) of that Regulation, against the use of designations that evoke a protected designation to identify services that are not comparable to the goods designated by the latter.

In accordance with the opinion expressed by the Advocate General, the Court has addressed this issue by stating that “the Regulation protects PDOs against conduct related to both goods and services.” In its view, the Regulation establishes “broad-ranging protection intended to cover all uses that constitute an unfair exploitation of the reputation enjoyed by products covered” by PDOs.

The Barcelona Regional Court also referred two questions to the Court of Justice regarding the criteria to be used in determining whether a designation of origin is“evoked,”within the meaning of the Union regulation. In particular, the questions focused on the relevance, for those purposes, of comparing the product protected by the PDO with the product or service designated by the disputed designation.

In this regard, the Court of Justice clarifies in its judgment that the existence of an evocative connection“on the one hand, does not require, as a prerequisite, that the product covered by a PDO and the product or service covered by the disputed sign be identical or similar; and, on the other hand, is established when the use of a designation gives rise, in the mind of an average European consumer who is reasonably well-informed and reasonably observant and circumspect, to a sufficiently direct and unambiguous link between that designation and the PDO.”

Based on these premises, it will be up to the Provincial Court of Barcelona to determine, in the case at hand and taking into account all the relevant circumstances, whether the use of the name CHAMPANILLO gives rise to that“sufficiently direct and unambiguous link”to champagne that establishes the existence of an evocative association.

Regardless of the decision the Spanish court ultimately reaches, the significance of this ruling lies in the fact that this is the first time the Court of Justice has explicitly ruled in favor of extending PDO protection to cases other than the use of similar designations to distinguish products of a similar nature to those designated by the designation of origin.

Furthermore, although this is not new compared to what the Supreme Court has stated in previous rulings, this ruling delves deeper into the distinction between the analysis of the concept of evocation and the existence of a similarity between the products distinguished by the PDO and those products or services to which the disputed designation applies. The Court thus highlights the distinction, for these purposes, between the criteria for comparison under trademark law.

Ultimately, recognizing the need to protect designations of origin from the exploitation of their reputation in various sectors—whether in relation to products or services—is essential for highly prestigious designations such as the Champagne designation. This ruling represents a significant step forward in that direction.

Author: Carlos Morán

Spanish courts spend a great deal of time on “service of process.” Thus, when a defendant in a patent infringement case files a counterclaim challenging the validity of the patent, the court must serve the counterclaim on the plaintiff. This service of process is of vital importance because it triggers the two-month deadline for responding to the counterclaim. However, this is a symbolic service because the plaintiff already has the document in their possession thanks to the “service between legal representatives.” Wouldn’t it be more logical for the time limit to begin from that earlier service? Practical, yes, but an immediate affront to the principle that the proceedings must be driven and controlled by the court. The solution is simple. At a later stage, the court issues a ruling carrying out a symbolic “service” and initiating the time limit.

So far, so good. However, things became more complicated when the 2015 Patent Act allowed the patent holder to file a motion to limit the scope of the patent in response to the counterclaim. Although this had always been possible under Article 138.3 of the Spanish Civil Procedure Code (CPE), it lacked a specific procedural framework in the Civil Procedure Act, which had led to some improvisation on the part of the courts. Article 120 of the new Act changed all this by specifying that the request for limitation must be filed with the answer to the counterclaim and by setting a two-month deadline for a response. As usual, the court was required to “serve” the request on the counterclaimant, whose deadline for responding, however, began upon “receipt” of the request. This gave rise to a series of academic articles arguing that the start of this new deadline would not be the court’s “service,” but rather much earlier—from the moment of service between legal representatives.

In its order dated February 11, Commercial Court No. 5 of Barcelona ruled on this matter in favor of judicial service:“Any other interpretation of the proposals would mean leaving it up to one of the parties to determine when procedural deadlines begin to run and to drive the proceedings forward, in addition to rendering the provision set forth in the first paragraph of the statute meaningless. Taken to the extreme: if the time limit were to begin running from the moment the request is received—that is, upon transmission between legal representatives or between the parties themselves—what would be the purpose of transmission by the judge or court?” Article 120.5 “in no case authorizes circumventing or delegating the responsibility for driving the proceedings, controlling the timelines, and calculating them by the judicial body.”

Author: Colm Ahern

Barcelona’s commitment to hosting MWC 2021 appears to be firmly in place. Today, May 6, the Protocol between the Commercial Court of Barcelona and the European Union Trademark Court in Alicante was made public to ensure swift action regarding injunctive relief and preliminary proceedings for infringements of industrial and intellectual property rights.

Factors to consider:

1. MWC will be held from June 28 to July 1, 2021.
2. The Barcelona Commercial Court will rule on the same day that they are filed (within24 hours) on whether to accept requests for preliminary injunctions aimed at preventing the issuance of injunctions without a hearing against companies participating as exhibitors at the MWC.
3. Preliminary proceedings or fact-finding proceedings based on copyrights, patents, trademarks, designs, unfair competition, or advertising related to products exhibited at the MWC will be given preferential and priority treatment and will be resolved within two days (48 hours).
4. Requests for preliminary injunctions will also be given priority and will be decided within 48 hours (if granted without a hearing of the defendant) or 10 days (if a preliminary hearing is scheduled after the exhibitor has filed a preliminary brief).
5. Preliminary proceedings and injunctive relief may be sought against both in-person product presentations or displays and those conducted online and/or on any type of virtual platform.
6. Hearings on preliminary injunctions will be held primarily online.
7. Now is the time for companies, depending on their position, to establish their strategies well in advance to ensure an appropriate legal response. ELZABURU’s proven experience from several consecutive editions of the MWC is at your service.

Access the On-Call and Rapid Response Protocol for the 2021 Mobile World Congress.

Author: Enrique Armijo-Chávarri

On June 28, 2011, Kerry Luxembourg Sàrl (“Kerry”) filed an application for the EU trademark KERRYMAID (word mark) for various goods in classes 29 and 30. The Irish company Ornua Co-operative Ltd. (“Ornua”) filed an opposition based on 18 prior trademarks consisting of the sign KERRYGOLD and registered in classes 1, 5, 29, 30, 32, and 33, pursuant to Articles 8(1)(b), 8(4), and 8(5) of the EU Trademark Regulation.

The Opposition Division upheld the opposition by applying Article 8.5 of the EUTM Regulation and based on the following trademark:

In December 2013, the applicant filed an appeal against the Opposition Division’s decision. However, the proceedings before EUIPO were suspended due to the infringement action filed by Ornua in Spanish courts regarding the marketing of products under the KERRYMAID trademark.

In July 2019, the Board of Appeal ruled on the appeal filed by Kerry, partially overturning the Opposition Division’s decision and upholding the opposition filed by Ornua based on Article 8.1.(b) EUTM Regulation, for all goods covered by the applied-for trademark, with the exception of“meat, fish, poultry, and game; preserved, dried, and cooked fruits and vegetables”in Class 29. The Board of Appeal concluded that the conflicting signs were similar to a moderate degree and, therefore, there was a likelihood of confusion with respect to the goods in Classes 30 and 29 that were identical or similar to the goods covered by the earlier trademark. Furthermore, the Board noted that the peaceful coexistence of the conflicting signs in Ireland and the United Kingdom did not allow for the conclusion that there was no likelihood of confusion for a portion of the relevant public that is unaware of the geographical reference contained in the term “kerry.”

Kerry’s appeal before the General Court (GC) is based on a single ground: the alleged violation of Article 8(1)(b) of the EU Trade Mark Regulation by the Board of Appeal’s decision. Kerry argues that the Board erred in concluding that there was a likelihood of confusion between the marks at issue and challenges the Board of Appeal’s findings regarding the relevant public’s perception of the geographical name “kerry,” the distinctiveness of the earlier mark, and the similarity of the signs at issue.

In its judgment of March 10, 2021 (T‑693/19), the General Court dismissed Kerry’s action and upheld the decision of the EUIPO Board of Appeal based on the following findings:

• That Kerry did not provide any evidence that could call into question the Board of Appeal’s finding that there was no clear indication that the non-English-speaking public in continental Europe would understand the term “kerry” as a geographical indication for the designated goods.
• That Kerry did not provide any evidence that could call into question the Board of Appeal’s finding that the term “kerry” included in the earlier mark had, for the majority of the relevant public—with the exception of the Irish public and, possibly, the public in the United Kingdom—distinctive character in relation to the goods for which the mark was registered.
• Although it might be argued that the relevant public as a whole perceives the term “kerry” as a geographical indication when used in connection with the goods covered by the earlier mark, there is no basis for challenging the Board of Appeal’s conclusion that the word element “kerrygold” is the dominant element of the earlier mark, insofar as—contrary to Kerry’s assertion— that conclusion was not derived exclusively from the presence of the term “kerry” in the word element “kerrygold,” but rather from the position and size of that element and the lack of distinctiveness of the figurative elements of the earlier trademark.
• The Chamber did not err in failing to find that the figurative elements of the earlier mark were not the dominant and distinctive elements of the sign, insofar as, as the Chamber noted, the depiction of a grazing cow appearing in the earlier mark, in connection with dairy products, will be perceived by consumers as a descriptive element of the nature of the designated goods, and that the other figurative elements of the sign (the flowers, the green background, the white lines, and the typeface used) will be perceived as merely decorative elements that do not serve to convey any message that consumers might remember.
• That the signs in question are visually and phonetically similar to a moderate degree due to the common element “kerry” located at the beginning of the word elements of the signs; therefore, the Chamber correctly concluded that, although the conflicting signs are not conceptually similar, the signs are similar as a whole.
• That, in light of the foregoing considerations, the Board correctly concluded that, in its overall assessment of the likelihood of confusion, in the present case, with respect to the goods covered by the applied-for mark that are similar or identical to the goods in Class 29 covered by the prior mark, there may be a likelihood of confusion on the part of the relevant public that is unaware of the geographical reference contained in the term “kerry,” which constitutes a large portion of the relevant public.

With regard to the objections raised by Kerry concerning the Board’s analysis of the likelihood of confusion, the General Court notes:

• That the assessment of the likelihood of confusion conducted by EUIPO necessarily involves an abstract evaluation, which is not based on the circumstances of the marketing of the goods, but rather on the “objective” manner in which the goods designated by the marks at issue are marketed; and, therefore, the manner in which the earlier trademark is used is irrelevant for the purposes of analyzing the likelihood of confusion, and the Board of Appeal was not required to take into account the evidence submitted by Kerry.
• That, in any event, even assuming that taking that evidence into account would have allowed the Board of Appeal to conclude that the term “kerry” had Irish connotations for the relevant public, mere connotations cannot suffice to establish that the relevant public as a whole perceives the term “kerry” as a geographical indication when used in connection with the goods covered by the earlier mark, since this would require a sufficiently direct and specific link between the sign and the goods, enabling the relevant public to perceive immediately, without further ado, a description of the goods in question or of one of their characteristics.
• That the ECJ judgment of January 7, 2004, Gerolsteiner Brunnen (C-100/02, EU:C:2004:11), relied upon by Kerry, is not applicable to the present case because a reading of that judgment does not indicate that the Court of Justice examined whether the term “Kerry,” in connection with the goods at issue, would be understood by the relevant public as an indication of their geographical origin.
• That the Chamber did not err in failing to take into account the judgments of the Provincial Court of Alicante and the EU Trade Mark Court rendered in the context of the infringement action brought by Ornua, insofar as EUIPO is not bound by the decisions of EU trade mark courts rendered in the context of infringement actions, in the context of exercising its exclusive jurisdiction over the registration of EU trademarks and, in particular, when, in doing so, it examines oppositions filed against applications for the registration of EU trademarks.
• That, with regard to the alleged peaceful coexistence of the trademarks at issue, contrary to what Kerry contends, the burden of proof lies with the party alleging the existence of such peaceful coexistence; furthermore, when an opposition to the registration of an EU trademark is based on an earlier EU trademark, peaceful coexistence must be proven throughout the entire territory of the European Union.

In light of the foregoing considerations, the General Court concludes that the Board of Appeal correctly found that there was a likelihood of confusion on the part of the relevant non-English-speaking public between the mark applied for and the earlier mark, within the meaning of Article 8(1)(b) of the EU Trade Mark Regulation, with respect to the goods in question.

Author: Ana Sanz

The court dismissed Heineken's claim and found no evidence of misleading advertising or unfair competition in the advertising for the Spanish brand represented by ELZABURU.

Judgment No. 9/2021, dated January 18, issued by Section 28 of the Provincial Court of Madrid, has upheld the dismissal of the unfair competition lawsuit filed by Heineken against its competitor Mahou in connection with the advertising campaign for the launch of Mahou Cinco Estrellas Radler in the summer of 2018.

The advertisements released as part of that campaign to launch the new product included the slogans“The First Cinco Estrellas Radler”and“The First Cinco Estrellas Radler with Natural Lemon Juice,”along with an image of the bottle or can of the beer in question.

Heineken argued in its complaint that the words “the first” in that advertising slogan could only be interpreted in two ways: in a chronological sense, as the first Radler-style beer to appear on the market; or in a sense of preeminence in terms of quality, above all other Radler-style beers. Since, according to Heineken, neither of these two interpretations was true, the advertisement constituted misleading advertising with an exclusionary tone, prohibited by Articles 5 and 7 of the Unfair Competition Act.

The message conveyed by the controversial advertisement, however, differed from the only two interpretations put forward by the plaintiff. The prominent image of the Mahou beer bottle or can, with its famous “Mahou Cinco Estrellas” brand in the foreground, informed the viewer that this was the brand’s first “Radler”-style beer—or beer with lemon—to appear on the market. The advertisement therefore had a chronological significance, though not an absolute one, and specifically referred to Mahou’s well-known Cinco Estrellas beer.

This was the understanding of both the Madrid Commercial Court No. 12, at the first instance, and the Provincial Court of Appeal. Both courts applied the legal doctrine according to which advertisements must be considered as a whole to assess whether they are misleading.

The analysis proposed by Heineken, which excluded the advertisement’s main graphic element—the image of the beer being advertised—was flawed and led to a misinterpretation of the message conveyed.

The court’s ruling was further supported by a market study submitted by Mahou as part of the proceedings, in which only 3% of respondents spontaneously interpreted the advertisement in any of the ways argued by Heineken, compared to more than 20% who understood it as an advertisement for the first “Radler”-style beer from the Mahou brand.

Access to the article published in Expansión Jurídico.

Author: Carlos Morán