BACKGROUND TO THE DISPUTE

The entity “Hijos de Rivera, S.A.” lodged an administrative appeal against the decision of 23 October 2019 of the Spanish Patent and Trademark Office which dismissed the appeal lodged against the decision of 10 June of the same year which granted registration of trademark No. 3,741,648 “Estrella andaluza” (word graphic) applied for by the entity “Hottos 2018, S.L.” to protect goods in class 29 of the international nomenclature, definitively granting the registration.

The appeal is based on the incompatibility of trade mark no. 3.741.648 “Estrella andaluza” applied for by the entity “Hottos 2018, S.L.”.

with the trade marks in respect of which the applicant is the proprietor: M 0127544, M 0127833, M 0194804, M 0280363, M0328415, M 0696703, M 0879379, M 1035508, M 1748475, M 1748476, M 1748478, M 2555793, M 2555794, MOV 002585172, M 2827510, M 2879372, M 2946581, M 3014554, MOV A 000100875, MOV 2585172, MOV 004111803, MOV 005304613, MOV 005304621, MOV 006366108, MOV 009673419,

MUE 011852449 ESTRELLA GALICIA:

Infringement of Article 6(1)(b) of Law 17/2001 of 7 December 2001.

DECISION OF THE TRIBUNAL SUPERIOR DE JUSTICIA

There are two elements to be analysed, firstly the existence of phonetic similarities or identities and secondly the existence of similarity or identity in the fields of application of the marks.

With regard to the first question. It must be observed that the marks at issue are not identical. In the case in question, the priority marks contain the expression “estrella”, although the mark applied for by the entity “Hottos 2018, S.L.” adds the expression “Andaluza”.

On this issue, the Judgment of the 3rd Chamber of the Supreme Court of 26 February 2018 (ROJ: STS 763/2018 – ECLI:ES:TS:2018:763) has ruled that: The administrative decisions considered that the opposing marks have a well-known character in the beer marketing sector. The lower court did not question the well-known nature of the opposing marks belonging to the company DAMM (“Estrella Damm”) or the company Hijos de Rivera (the marks “Estrella especial” “Estrella Extra” “Estrella Pilsen” “Estrella Galicia”, among others) to market beer, although it considered that there were differentiating word and phonetic elements between the opposing marks, highlighting the word “DAMM” or the geographical designation (“Galicia” among others) accompanying the word “Estrella” adding “without any likelihood of confusion or association, which excludes the application of the invoked protection of well-known opposing marks, which requires, inexcusably, the existence of likelihood of confusion or association ( Judgment of the Supreme Court of 21 July 2015, rec. 3082/2013 ), which in the present case we do not see”.

In the present case, the opposing marks have a common and characteristic element, the word “Estrella”, which is a distinctive element of the marks to identify a category of beers that enjoy a reputation among consumers, so that the inclusion of that same word in the applicant mark evokes the pre-existing marks and may induce the consumer to link it with the business origin and quality of the goods protected by the well-known marks. Contrary to the criterion upheld by the judgment of the court of first instance and to a certain extent with the STS of 21 July 2015 (rec. 3082/2013 ), the word added in these cases to the term ‘Estrella’ (in the case in question ‘de Madrid’) is not a differentiating element which dispels any risk of association or link with the well-known marks, since apart from the fact that such a strict risk of confusion is not required in the case of well-known marks, it should be added that in the case of the opposing well-known marks, together with the term ‘Estrella’, they also include other words, some of them of a geographical nature (such as “Estrella Galicia”, “Estrella de Galicia”) and others which are not geographical (“Estrella Damm” or “Estrella Pilsen”), so that in the beer marketing sector the use of the word “Estrella” as a relevant element may give the impression that the goods come from the same business origin and thus take advantage of its reputation.

The notoriety of the “Estrella de Galicia” trademark is recognised both in resolutions of the Spanish Patent and Trademark Office and in judgments of the appealed Chamber and section of the 3rd Chamber of the Supreme Court, but for the beer sector, without it being possible to state that said trademark is renowned when there are other trademarks that contain the “Estrella” denomination and are notorious in other sectors such as the financial and insurance sectors.

Trade mark No 3 741 648 “Estrella andaluza” applied for by “Hottos 2018, S.L.” seeks protection in class 29 for “oils and fats for food use; olive oil; edible olive oil; extra virgin olive oil; olive oil for food use; extra virgin olive oil for food use; edible olive (oil of -)”.

These products, edible oil and fat, are very different from beer where the priority branding is notorious and the marketing channels are very different, including in supermarkets and hypermarkets the place where they are sold (aisles and shelves) and therefore sufficiently different from beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’ ‘beers and non-alcoholic beers’ ‘beers of all kinds, musts’, ‘beers’ ‘alcoholic beverages (except beers)’ ‘alcoholic beverages (except beers, spirits, liqueurs and orujos), eau-de-vie de hierbas de Galicia, liqueur de hierbas de Galicia, orujo de Galicia’ ‘wines, vermouth, ciders’ and restaurant services (food); temporary accommodation.

There is no applicable relationship and the reputation enjoyed by the trade mark “Estrella Galicia” in the beer sector cannot be extended to oils and fats for food use; olive oil; edible olive oil; extra virgin olive oil; olive oil for food use; extra virgin olive oil for food use, so that there is no dual identity/similarity, both in terms of application and denomination.

For all these reasons, the High Court of Justice dismissed the contentious-administrative appeal filed by the entity “Hijos de Rivera, S.A.” against the decision of 23 October 2019 of the Spanish Patent and Trademark Office which dismissed the appeal filed against the decision of 10 June 2019 which granted the registration of trademark no. 3,741,648 “Estrella andaluza” (word graphic) applied for by the entity “Hottos 2018, S.L.” .