In summary, the proprietor of the mixed national trade mark KHAMA, the sign of which is

brings an action for infringement against the defendant. He bases his claim on the fact that the trade mark distinguishes the trade in mattresses, whereas the defendant distinguishes the mattresses it manufactures by means of the sign KALMA, and that there is a likelihood of confusion.

Two facts are of particular relevance. The first is that the claim could not be based on priority of use of the trade mark and invalidity of the defendant’s trade mark, since the defendant was not the proprietor of a trade mark, although it had applied for one. The defendant’s trade mark was granted after the proceedings had been initiated. The national trade mark granted was a mixed mark, the word element of which is ‘Kalma Colchón’, in Class 20, for ‘mattresses’, the graphic reproduction of which is as follows:

The second relevant fact is that the applicant’s trade mark, prior to that of the defendant, had been granted for services in Class 35: retail and wholesale and via worldwide computer networks of furniture.

The judgment examines three questions which form the basis of the dismissal of the claim: a) whether it is admissible to bring an action for infringement of trade mark rights against a person who can rely on a trade mark registration whose validity is not disputed in the proceedings; b) the scope of protection afforded to the claimant by the trade mark registration; and c) whether the signs are sufficiently similar for there to be confusion in the minds of those who purchase the goods.

In the order set out above,

First. The judgment is based on the assumption that the owner of a trademark can bring an action for trademark infringement against the owner of another trademark without requesting the invalidity of the latter, which was necessary in this case, since the defendant’s trademark was granted after the lawsuit was filed. In support of this thesis, it cites the judgment of the First Chamber of the SC, which has accepted that the owner of a registered national trademark cannot oppose the ius utendi that is formally inherent to it against the owner of another pre-existing trademark that can be confused with it, with the intention of avoiding the classification of its use as materially infringing, which cannot be accepted, thus by STS, 1st , no. 520/14, of 14 October 2014 , Speaker José Ramón Ferrándiz Gabriel. This position had previously been adopted by the STJCE of 21 February 2013, Case C-561/11 , Fédération Cynologique Internationale, even without the need for a prior declaration of invalidity of the subsequent trade mark.

Secondly. As regards the scope of protection afforded to the plaintiff by the registration of the mark, the judgment establishes that the exclusive right won by the plaintiff does not extend to the category of goods marketed by the defendant using the sign in question.

The Court considers that a simple but thorough and step-by-step judgment, considering successively the following factors: the comparison of goods and services, the target public and its degree of attention, the comparison of signs, the distinctive character of the earlier mark, the possible presence of other additional factors and an overall – and final – assessment of the likelihood of confusion.

The comparison of the signs at issue is always based on a formal examination between registration categories and specific applications within those categories. In this case, the plaintiff’s sign corresponds to a registration category that is completely different from the specific application made by the defendant to distinguish its products.

The reasoning of the judgment goes on to state that in order to gain an exclusive right to a trademark, it is not necessary to exhaust all possible present and future applications of that sign within the same registration class. A certain degree of flexibility is also necessary to appreciate that an exclusive right may be projected in respect of a category of registration other than the one formally obtained. This is a criterion close to the complementarity of goods or services, which is one of the corollaries of the confusion test, as is well known.

Thirdly. Finally, in the alternative, the Court addresses the question of whether the signs are sufficiently similar for there to be confusion in the minds of those who purchase the goods: the conclusion is negative because the comparison of the two signs does not determine a degree of similarity sufficient to not overcome the likelihood of confusion.

The category of registration in which the plaintiff’s sign was obtained and the applications made by the defendant, a unity of addressees between the goods and services distinguished by one or the other sign could not be discerned. The former is aimed at business profits for the organisation of a market and the latter at potential buyers and sellers of mattresses.

But, even after that, the comparability of signs shows big and significant differences between the two. All considering the arrangement of dominant elements in both cases, which are different, and the conceptual and phonetic differences between the two signs.

SJM Valencia 3, 13 April 2021.