The plaintiff, bringing actions for infringement of trade mark rights under Article 41 of Law 17/2001, of 7 December 2001, on Trade Marks (“LM”), and actions arising from unfair competition for committing acts of obstruction and acts subsumable under Articles 6 and 12 of Law 3/1991, of 10 January 1991, on Unfair Competition.

The plaintiff uses as its title the mixed mark consisting of a representation of a desktop microphone and the word element “ESCUELA DE DOBLAJE DE ASTURIAS”, registered for services in class 41. The defendants, who operate in the market offering services consisting of dubbing workshops and courses, advertising themselves on the Internet as “Estudio La habitación con una cama”, use the hashtag “#Escuela DoblajeAsturias” in their Facebook account under the same name. The acquisition of the domain name www.escueladoblajeasturias.com is also noted.

The plaintiff’s claims were rejected on the following grounds, which were also accepted by the Court of Appeal:

  1. Because the defendants’ use of the hashtag “#EscuelaDoblajeAsturias” and the domain names www.escueladoblajeasturias.com y www.escueladoblajeasturias.es is covered by Article 37.b) of the LM.
  2. Because the word element of a mixed mark is not, in itself and in any event, decisive in determining whether there is a likelihood of confusion. that there is a likelihood of confusion if that element is descriptive. The judgments relied on by the applicant (the judgment reasons) ‘do not establish as an absolute rule the prevalence of the word component of mixed marks, as the action itself states. As for the other aspects to which the appellant refers as factors in the specific case that would lead to an assessment of the aforementioned likelihood, we must note that, without citing it, the appeal reproduces a part of the Supreme Court’s judgment of 2 March 2017 (ES:TS:2017:726) in which it is stressed that the preponderance of the word element over the graphic element, or vice versa, in making the judgment of confusion, is sometimes conditioned by the nature of the product or service and by the form in which it is usually marketed.

SAP of Madrid of 14 January 2022.