The Spanish Supreme Court recently had to consider the likelihood of confusion between the representation of a lila mop registered as a two-dimensional trade mark and another party’s actual product, again, a lila mop. The signs at issue were the following:   Trademarks owned by the plaintiff Defendant’s use     The Court rejected the…

The Alicante Appellate Court has confirmed that the use of lists comparing fragrances to well-known perfume brands is illegal. Comparison lists compare smell-alike perfumes with the respective high-priced original perfume brand. These lists are distributed among retailers to inform customers of the “equivalence” between their fragrances and the well-known brand. Lately, retailers have been using…

In his opinion of 17 December 2015 (Case C-163/15) concerning the trade mark ARKTIS, Advocate General Wathelet proposes that recordal of the license is not a necessary condition for the licensee to be able to bring an infringement action based on a CTM. According to Article 23(1) CTMR, the transfer, rights in rem and licenses…

In two judgments rendered on 14 January 2016, the General Court confirmed OHIM’s refusal of stylized marks whose verbal elements were descriptive or non-distinctive. It is a coincidence that both decisions are only available in Spanish and French and both marks were in classes 9, 28, and 41. The cases are T-318/15 and T-663/14 and…

This article looks at whether advertisers and referencing service providers, such as Google or Bing, involved in keyword advertising can be held liable in Spain on grounds of trademark infringement on the basis of case-law from the past three years. In short, referencing services in general will not be liable, while advertisers, essentially, have to…

According to the Spanish Supreme Court, three-dimensional marks consisting of the shape of the product or its packaging are not considered to be genuinely used when used in conjunction with a highly distinctive word mark. Kraft Foods Galletas, S.A. (now Mondelez España Galletas Productions, S.L.), subsidiary of Kraft Foods Global Brands LLC (now Intercontinental Great…