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19 April 2021
In an 18 January 2021 judgment, the Barcelona Court of Appeal confirmed the 4 December 2019 judgment of Barcelona Commercial Court 6 which dismissed a trademark infringement action brought against Hilfiger Stores Spain (HSS), SL. The appeal court partially upheld HSS's counterclaim against the plaintiff's trademark – which was registered for goods in Class 25 (ie, clothing, footwear and hats) – for cancellation on grounds of non-use. The trademark was revoked for clothing and footwear but remains registered for hats.
The plaintiff was the owner of a trademark that consisted of a mixed sign comprising a logo made up of the interlocking letters 'T' and 'H' and, beneath the logo, the words 'Tolentino Haute Hats Sevilla'. The plaintiff filed a trademark infringement action against HSS for its alleged marketing of certain products (mainly handbags and wallets) which incorporated the TH sign (ie, an acronym of the firm's name, Tommy Hilfiger) and other elements. HSS rejected the plaintiff's trademark infringement claim and filed a counterclaim to request the revocation of the plaintiff's trademark on grounds of non-use (for further details please see "Barcelona court confirms legitimacy of Tommy Hilfiger's use of TH sign").
In view of the rejection of its claims by Barcelona Commercial Court 6, the plaintiff filed an appeal regarding:
The Barcelona Court of Appeal opined as follows.
Cancellation action for lack of use
The Barcelona Court of Appeal first summarised the requirements of what is understood by the actual and effective use of a trademark. It confirmed the first-instance court's reasoning that the plaintiff's proof of use for fashion accessories (ie, women's handbags and belts), which the plaintiff had intended to assert for clothing and footwear, was irrelevant. The Barcelona Court of Appeal recalled that handbags are protected exclusively by registration in Class 18 of the Nice Classification, a class in which the plaintiff's trademark was not registered.
The Barcelona Court of Appeal further stated that if a trademark is registered for goods or services which are so precisely and narrowly defined that it is impossible to establish significant divisions within the category in question, the proof of genuine use of the trademark for those goods or services necessarily covers the entire category.
In this case, the Barcelona Court of Appeal found that footwear and clothing were sufficiently distinct from hats, even though they all belonged to the same class (ie, Class 25). In considering whether subclasses could be distinguished within the general category of hats, the Barcelona Court of Appeal highlighted that this would depend on whether a consumer would associate all of the goods and services in question with the same trademark.
The Barcelona Court of Appeal found that it was impossible to distinguish subclasses within the general category of hats (ie, headgear and women's hats – the categories considered by the first-instance court). Therefore, the Barcelona Court of Appeal declared that the plaintiff's proof of use for women's hats also constituted proof of use for the entire category of hats.
Trademark infringement action
The Barcelona Court of Appeal confirmed the absence of likelihood of confusion, which had to be assessed from the perspective of an average consumer. According to the court, the average consumer in this case had high purchasing power and would pay attention to small details.
The Barcelona Court of Appeal considered that only a low level of similarity existed between the goods, and that this resulted only from the complementary nature of the plaintiff's hats and the wallets and handbags pursued, even though they were protected in different classes.
Further, the Barcelona Court of Appeal highlighted that an assessment of the similarity of the signs had to consider:
The Barcelona Court of Appeal found that a slight similarity existed between the signs, but that this was insufficient for the purposes of the confusion test since:
This Barcelona Court of Appeal judgement is not final.
For further information on this topic please contact Beatriz Bejarano at Grau & Angulo by telephone (+34 93 202 34 56) or email (email@example.com). The Grau & Angulo website can be accessed at www.ga-ip.com.
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