Background of the case

Munich S.L. is the owner of several national trade marks, which contain an X or a blade as a main element. This entity filed a lawsuit against J. Ballvé Sports SL based on trademark and design infringement including as well unfair competition actions. The defendant argued the lawsuit claiming that its trademark NOX, is a well-known trademark in the paddle industry, the trademarks have coexisted in the past without entailing likelihood of confusion. The NOX paddle only reproduces its sign and therefore does not go beyond the scope of protection of the plaintiff.

The appealed decision states that there is no risk of confusion in the field of paddles, whereas there is when using the sign for sport clothes, where only the X is used without the word NOX. The actions based on unfair competition and infringement of industrial design are dismissed in its entirety.

Decision of the Court

When assessing the notoriety of the signs, the Court argues that the plaintiff´s marks may have a notorious character as a position mark on shoes, and it cannot be concluded that it should be protected beyond its strict scope of protection. In other words, although it may be permitted to extend protection beyond the class for which it is registered, it does not authorize to enlarge its scope of protection beyond what the trademark actually protects (right to monopolize a specific appearance), also bearing in mind that this is a well-known sign of low distinctiveness.

All this must be put in line with the assessment on the likelihood of confusion. The Court highlights the fact that the plaintiff cannot be granted a monopoly on the sign X, because it does not correspond to the protection it has, based on its registered trademarks. In any case, this Court considers the graphic representation of the defendant’s “X” to be sufficiently characteristic so as not to generate a likelihood of confusion.

Therefore, the action for trademark infringement is dismissed since none of the Munich signs are likely to be confused with those used by the defendant, and especially for products related to paddle tennis, where the recognition of the defendant in this sector, prior to the plaintiff, has been proven.

Likewise, the industrial design action and the unfair competition actions are dismissed since they are based on the same facts as the trademark infringement actions.

Judgment of the Barcelona Regional Court of 21 October 2020. Judgement No. 2250/2020.