BACKGROUND TO THE DISPUTE

RED CAR OIL S.L. is a company engaged in the retail trade of automotive fuels and fuels and owner of service stations and car wash centres. On 28 January 2019, the said company filed an application for registration of the mixed trade mark “RED CAR OIL GASOLINERAS LOWCOST”, with number 4.002. 215, to designate retail services for the retail sale of foodstuffs; retail services for the retail sale of tobacco; retail services for the sale of automotive fuels in specialised establishments, referenced in Nice Class 35 and vehicle service stations for refuelling and maintenance; services of a vehicle service station (refuelling and maintenance); automobile service station services, referenced in Nice Class 37.

On 8 April 2019, COMPAÑÍA ESPAÑOLA DE PETROLEOS, S.A.U., the owner of the RED AHORRO 24 H trade mark, opposed the earlier application for registration no. 4.002.215, claiming that the said application fell under the relative prohibition of Article 6.1.b) of the LM due to the existence of a likelihood of confusion by association between the trade mark “RED CAR OIL GASOLINERAS LOWCOST” and the trade mark “Red AHORRO 24 H”.

The OEPM agreed to suspend the registration of the NATIONAL TRADEMARK applied for, “RED CAR OIL GASOLINERAS LOWCOST”, for the following reasons: i) Incorrect classification of the services. ii) Opposition by COMPAÑÍA ESPAÑOLA DE PETROLEOS, S.A.U., owner of “RED AHORRO 24H” in relation to the classes applied for (35 and 37) due to a likelihood of confusion. In response to that decision, the applicant company, RED CAR OIL, filed an appeal, correcting the incorrect classification of the services and claiming that there was no likelihood of confusion.

The OEPM agreed to refuse registration of the mixed mark “RED CAR OIL GASOLINERAS LOWCOST” on the grounds of likelihood of confusion and association with the mark “RED AHORRO 24 H”. In response to that decision, the applicant filed an appeal, reiterating its arguments, but the OEPM dismissed the appeal, which is the subject of the present contentious administrative appeal.

THE COURT’S DECISION

The concept of a “weak mark

In industrial property law, trade marks “known as weak” are those which have little distinctive force because they are composed of words which describe the goods or services distinguished by them and over which, therefore, no exclusivity can be claimed. In other words, a trade mark is weak when it is composed of terms which, in isolation, would not be eligible for trade mark registration.

The dictionary of the Real Academia Española defines the word ‘RED’ as ‘the set of elements organised for a certain purpose’ such as, for example, the network of service stations, by which is meant the fuel supply network. Therefore, as the applicant submits, ‘RED’ is descriptive of ‘services of a service station’ (Class 37 of the Nice Classification).

There may be an identity of application, but an analysis of the opposing signs nevertheless reveals sufficient phonetic, word and overall differences between them to avoid a likelihood of confusion and association.

That identifying distinction is based on the weakness of the word ‘RED’, although the presence of the words ‘CAR OIL GASOLINERAS LOWCOST’ appear as elements with sufficient distinctive force.

Therefore, the word RED in the mark registered by the claimant does not give rise to a likelihood of confusion and association with the mark “RED AHORRO 24 H”, as it is a word qualified as “weak”.

Before the mixed mark No. 3.077.788 “RED AHORRO 24 H” applied for registration in class 37 in 2013, there were already two national marks registered in class 37. In 2013, the SPTO had no problem in accepting the registration of the mark “RED AHORRO 24 H”, despite the existence of a great similarity derived from the coincidence of the word “RED”. It is also important to note that after the registration of the trade mark “RED AHORRO 24 H”, other national trade mark registrations containing the word “RED” in class 37 have been approved and COMPAÑÍA ESPAÑOLA DE PETROLEOS, S.A. does not appear to have opposed them and, if it has opposed them, it does not appear that its opposition has been accepted.

It can therefore be understood that the word “RED” is a weak mark and that it constitutes a characteristic of the product itself, as it is already used by other mixed marks registered in Spain in class 37 “services of a service station”.

Analysis of this lack of likelihood of association and confusion: “car oil” as the dominant and most distinctive term of the word element of the mark.

The EUIPO guidelines clearly state that, according to common practice, where marks share a component with a weak distinctive character, such as the word “RED”, the likelihood of confusion assessment will emphasise the effect of the non-matching components on the overall impression of the marks. This assessment takes into account the similarities and differences and the distinctiveness of the non-matching components which in this case are “CAR OIL” vs “AHORRO 24H”.

The word “RED” is a word linked to the service station sector and cannot be monopolised, as in fact the OEPM has been applying by accepting the registration of other trade marks such as “RED AZUL”, “RED TORTUGA”, “REDOIL” and “RED CANTABRIA”.

It is true that the comparison between trade marks must be made from an overall viewpoint and taking into account the classic phonetic, graphic and conceptual elements. However, in the comparison of complex marks (mixed or complex word marks), such as those at issue here, it is necessary to look at the dominant element of the mark, that is to say, the element which leaves the strongest impression on the consumer’s mind and which dominates the imperfect image of the mark which the consumer retains in his mind. In the present case, that dominant term is CAR OIL.

It should therefore be noted that the presence of the element ‘CAR OIL’ endows the mark with distinctive character and is therefore an element which differentiates the two marks. As seen above, the word ‘RED’ is commonly used by undertakings in the sector to designate their trade marks, as it is a reference for Class 37 of the Nice Classification in respect of ‘services of a service station’.

Factual perspective: how the public perceives the trade marks “RED CAR OIL GASOLINERAS LOWCOST” and “RED AHORRO 24H”.

It is common ground in case law that trade mark terms written in a foreign language are to be considered capricious, leaving aside their meaning. Therefore, “Car Oil” and “Lowcost” are mere fancy names and the meaning of the words cannot be sought. In the appeal decision, the OEPM describes both terms as descriptive in that they can be understood by Spanish consumers to identify the services applied for.

Also erroneously in its notice of opposition, RED AHORRO 24 H argues that there is a conceptual similarity that could be inferred from the fact that the marks contain the terms “ahorro” and “lowcost” – in the English language and perfectly understandable by the average consumer, meaning “low cost” – which makes the marks conceptually identical. Such an assertion is obviously totally contrary to case-law.

In view of the above, the Court upheld the contentious-administrative appeal brought by the legal representative RED CAR OIL S.L.

Judgment of the High Court of Justice. Contentious Chamber, A Coruña. Appeal No.: 7181/2020 Decision No.: 71/2021