Riesgo de confusión en marcas sin notoriedad

patentes y marcas

there is no likelihood of confusion when the elements of the brand are not distinctive and it lacks visibility.

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In the context of a dispute between two companies for possible risk of confusion between their brands as a result of the similarity of the terms "hojaldrinas" and "hojaldrines" who used each, the Supreme Court has confirmed that there is no such risk of confusion, whenever such terms nor they were notorious, or they composed entirely marks, also other elements were composed of distinct.

The decision has been adopted in the judgment of the First Chamber of the Tribunal Supremo Ollie # 504/2017, dictada en la fecha 15/09/2017.

As factual background may be mentioned the following:

On the one hand, the business entity Mata Products S.A.. It was the owner of the following brands:

1. Mixed national brand "HOJALDRINA", requested the 04/03/1927.
2. national word mark "HOJALDRINES" requested the 13/03/1956.
3. Mixed national brand "HOJALDRINA PRODUCTS MATA ALCAUDETE (JAÉN)"Requested the 30/12/1994.
4. Mixed national brand "EXCLUSIVE MATA MANUFACTURE FROM hojaldrinas 1927 MATA PRODUCTS, S.A. "requested the 09/09/2010.
5. Community trade mark "PRODUCTS MATA, HOJALDRINA "requested the 01/04/1996.

Moreover, Museum of the Nougat S.L.. was head of the national brand "HOJALDRINES 1880" requested the 22/02/2012, its products being produced, marketed and distributed by the company Almendra y Miel S.A.

Mata products S.A, She filed a complaint against entities of the Nougat Museum S.L.. Almond and Honey S.A. in exercising:

1) declaratory infringement of exclusive rights and priority brands;

2) Action absolute or relative invalidity of the mark "1880 HOJALDRINES", by mediating bad faith at the time of application or likelihood of confusion, respectively; and

3) declaratory acts of unfair competition acts of confusion, comparison, imitation, and exploitation of another's reputation.

That application was dismissed by Community Trademark Court Ollie # 01 Alicante sentence handed down 19/06/2014.

A trial court:

1) Nominative marks "hojaldrinas" and "Hojaldrines" lacked visibility and distinctiveness;

2) There was no bad faith in the application of the mark "HOJALDRINES 1880" by the defendant, because it was not proven that sought to take advantage of the prestige brands of the applicant;

3) There was no likelihood of confusion between the marks plaintiff and defendant, because it maintained a substantial disparity in their designs, Whereas the element "1880" brand of the defendant was a key element of it;

4) There was no risk of dilution, They marked because the applicant did not meet the requirement of reputation in Spain, and

5) there were no acts of unfair competition.

That sentence was appealed by Mata Products S.A.. before the Audiencia Provincial de Alicante, that, however, in Case 07 November 2014 He decided to fully confirm the ruling of first instance.

And the embroidery, against that judgment on appeal, Mata products S.A. formulated appeal, grounds that, a su juicio, likelihood of confusion when a mark is a sign consisting of one element of which is virtually identical to that used in a known mark.

In relation to the first ground of the appeal, el Tribunal Supremo recordó que, to determine the similarity between two marks, While it is necessary to address the triple flat graphic, phonetic and conceptual, the specific criteria used depend on the structure of signs analyzed, it is not the same compare simple word marks, that makes complex, or graphic or mixed. Specifically, indicates the court, "When the marks are compounded or mixed, its distinctiveness resides in the particular arrangement of verbal and graphical elements that form a set, and not its components " (SSTS 368/1987, of 10 June, and 382/2016, of 19 May).

From there, el Tribunal Supremo concluyó que, in the particular case, there was no such risk of confusion, y ello por dos razones fundamentales:

1) The dominant element of the mark of the defendant was "1880" (and not hojaldrines), element that clearly differentiated marks the applicant; and

2) The structure of the signs of the applicant was very different from the structure of the sign of the defendant (different images, geometries, tonalities, etc.).

Also, the Supreme Court stated that, in agreement with the criterion of "complementarity relative" used to determine the application of trade mark law, the rules on unfair competition, or both simultaneously, the absence of the likelihood of confusion I could not lead to the appreciation of conduct unfair competition, because the determining factor was the lack of similarity between the marks of the applicant company and the brand of the defendant company, so that was no attempt on the function of guaranteeing to consumers identifying the origin of the product.

On the other hand, as regards the alleged notoriety of the brands owned by Mata Products S.A., the Supreme Court also recalled that judgment notoriety It is reached taking into account, en particular, the market share held by the mark, The intensity, the geographical extent and duration of use, and the importance of the investments made by the undertaking in promoting, to which he added that the legal assessment (which it is performed by the lower court) It can not be reviewed on appeal but, for tranquility of order sought, the Supreme Court said that there was no manifest error in the conclusion reached on the lack of brand awareness of the applicant.

Therefore, the Supreme Court dismissed the appeal brought by Mata Products S.A., and he confirmed the judgment handed down by the Provincial Court of Alicante 07 November 2014, He is confirming the complete dismissal of the lawsuit filed.

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