The judgment of the Provincial Court of Madrid dated January 25, 2024, addresses an intellectual property dispute between Fertilizantes 1968 S.L. and Uber Technologies Inc. In this case, Fertilizantes 1968 S.L. applied for the registration of the “FERTIUBER” trademark for products related to vehicles and drones used in agriculture. Uber Technologies Inc. opposed this registration based on the renown and phonetic similarity of its own brand, arguing it could cause confusion among consumers and improperly benefit from the renown of the “UBER” brand.

The Spanish Office of Patents and Trademarks (OEPM) initially denied the registration of the “FERTIUBER” trademark, considering there was a risk of confusion and an infringement of Uber Technologies Inc.’s trademark rights. Fertilizantes 1968 S.L. appealed this decision to the Provincial Court.

The Provincial Court dismissed Fertilizantes 1968 S.L.’s appeal, upholding the OEPM’s decision. It was concluded that there is a risk of confusion between the trademarks due to phonetic similarity and that the use of “FERTIUBER” could unduly benefit from the renown of the “UBER” brand. It was also argued that the inclusion of “UBER” in “FERTIUBER” could lead consumers to think there exists a commercial relationship between Fertilizantes 1968 S.L.’s drones and the services of Uber Technologies Inc.

Therefore, the judgment confirmed the decision to deny the registration of the “FERTIUBER” trademark and condemned Fertilizantes 1968 S.L. to pay the costs of the procedure.

SAP M 205/2024 – ECLI:ES:APM:2024:205 Audiencia Provincial de Madrid – Appeal Number 82/2023