Infracción de marca comunitaria teniendo la marca nacional



La Audiencia Provincial de Alicante confirma la infracción de una marca comunitaria a pesar de tener el registro de la marca nacional.

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La Audiencia Provincial de Alicante ha confirmado la sentencia dictada por el Juzgado de lo Mercantil nº 01 Alicante, declaring the infracción varias marcas comunitarias al utilizar un signo similar, de manera que existía likelihood of confusion.

The uprising has taken place in judgment No 247/2016, de la Audiencia Provincial de Alicante, rendered in date 16/09/2016. The factual background were the following:

Ms.. Belinda is derived proprietor of the Spanish trade mark 1.505.085 “FITNESS Y BODYBUILDING. FIBO ", registered the day 12/06/1989, y también del dominio fibospain. Ice Sports & Events SLU, who Dª. Belinda is the sole administrator, exploits the brand and the domain as licensee.

In May 2012, during a fitness fair, Ice Sports & Events SLU utilizó el signo FIBO en la referida web fibospain de diversas formas, including "FIBO SPAIN" and "Copyright © FIBOspain".

Reed Exhibitions Deutschland GMBH, No holder of Community trade marks 7.138.472 and 4.606.406 "FIBO", con varios signos figurativos, understood that the use of the sign by Ledo FIBO Sports & Events SLU suponía una infracción de las dos marcas comunitarias de las que era titular, por existir likelihood of confusion. Thus, They filed a complaint against Ledo Sports & Events SLU and Ms.. Belinda, so that they are condemned to cease using the sign used on your website.

These, meanwhile, contestaron a la demanda alegando que se habían limitado a hacer uso de la trademark a su favor sin alteración de los elementos distintivos, de manera que el signo FIBO era percibido como una variación de la trademark. They claimed that Article shall apply 39 of the Trademark Act which provides that has consideration of use of the mark […] the use of the mark in a form differing in elements which do not alter so does the distinctive character of the mark in the form in which it was registered. Also, also they alleged that there was no likelihood of confusion because potential consumers were Spanish, while the applicant were German.

The Commercial Court No. 01 Alicante, partially upheld the claim in its judgment dated 18/02/2016, in which he declared, In summary, 1) the sole and exclusive right to the business company Reed Exhibitions Deutschland GmbH to use the No. CTMs 7.138.472 and 4.606.406 "FIBO" in the European Union; and 2) the commercial entity Ledo Sports & Events SLU and Ms.. Belinda had infringed such CTMs causing damages to Reed Exhibitions Deutschland GmbH. Ledo also condemned Sports & Events SLU and Ms.. Belinda cease such infringement.

Against that judgment, Ice Sports & Events SLU and Ms.. Belinda appealed understanding that the trial court had wrongly assessed the evidence submitted to the process, playing, essentially, the question raised in its defense: that there was no infringement because the use of the sign included in its website constitutes use of the mark within the meaning of Article 39, and because there was no likelihood of confusion between the two business entities.

The Provincial Court, attending to the grounds of appeal, it finalized the core of the conflict in the following two questions: 1) if the national brand that invokes the defendant under FIBO use of the sign was in force at the time of the alleged infringement and, if it were so, 2) if the existing national mark covers the use of the sign as it appears in the advertisement of the beast on the website of the merchant defendant, by understood that it is a use that does not change substantially trademark.

With regard to the first question, la Audiencia Provincial afirma que la marca nacional estaba vigente al tiempo de la presunta infracción, without being able understood that it was expired, because, Article according to 47 Directive 2015/2436, marks stop working expired from the date of the application for revocation, and the applicant brought the proceedings expiration long after the defendant used the mark in the above fair fitness. Thus, the court concludes that the national mark cited as justification by the defendant for the use of the sign is in effect FIBO. This determines that it is necessary to examine whether such national mark covers the use of the sign as verified in the aforementioned fair fitness.

In relation to that second question, the Provincial Court analyzes the trademark of which holds Dª. Belinda, “FITNESS Y BODYBUILDING. FIBO ", and compares it with the sign used Ledo Sports & Events at the fair SLU fitness. In this regard, the court notes that the first is composed of three verbal elements and none Figurative, and the last item, an acronym (Fitness BOdybuilding), It lacks functionality distinctive.

Conversely, as indicated by the Provincial Court, in the sign used during fitness fair on the website, the acronym FIBO includes coloring, a given spelling, It occupies much larger than the registered sign, and it is positioned Centrally, accompanied by the words Spain, professional and trainers in different colored.

De la anterior comparativa resulta que en el signo utilizado en la página web se omiten elementos de la marca registrada que tienen función distintiva, others not incorporated therein and, also, colorativos figurative elements not found in the trademark are added. This is sufficient cause, the judgment of the Provincial Court, the acronym for FIBO will become the main verbal element of the sign, Contrary just as in the national trademark, por lo que debe concluirse que no puede entenderse que el signo FIBO utilizado en la página web constituya una mera actualización del signo nacional previamente registrado y, therefore, its use is not covered in a possible update of the brand.

This reasoning that draws the Provincial Court, although the brand that holds the defendant can not be understood expired, FIBO use of the sign on the website on the occasion of the fair fitness can not be understood included in the option provided by Article 39 Trademark Law. Remains, therefore, assess whether there is a likelihood of confusion to confirm the infringement by the judgment of first instance.

In this regard, the Provincial Court recalls that verification of the risk of confusion by conflicting signs requires addressing the objective conditions under which such signs are present on the market, which involves weighing the audience they are targeted, and identity between them from a visual point of view, phonetic and conceptual. La Audiencia Provincial concluye que existe riesgo de confusión, for the following reasons:

1. Porque el signo del que es titular Reed Exhibitions Deutschland GMBH va destinado al público europeo, so the Spanish public is included.

2. Porque entre ambos signos existe identidad visual y fonética, It is the dominant element in both the same acronym FIBO.

that similarity, understands the court, coupled with the confusion of market areas, It causes the public might believe that the goods and services come from the same entity, or that both entities maintain some kind of economic links and / or production.

Therefore, la Audiencia Provincial desestima el recurso de apelación y confirmed the first instance judgment.

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