SUMMARY OF THE FACTS

RUBIO SNACKS S.L., the appellant, is a company which is the proprietor of both the Spanish trade mark nº2.150.852 “RUBIO” and the EU trade mark nº 17.427.725 “RUBIO”, registered for goods in Class 29 of the International Nomenclature: “Potato crisps (English fries)”;- “Potato crisps; soya and cassava crisps; potato crisps in bags; potato crisps in snack form; potato crisps in stick form; low-fat potato crisps; potato chips; dried fruit snacks; dates; dried figs.”

On 20 April 2020, the appellant filed an appeal against the decision of 13 March 2020 of the Spanish Patent and Trademark Office, hereinafter referred to as the SPTO, granting registration of trade mark nº 4030624 “PATATAS FRITAS LA RUBIA” (mixed) for goods in Class 29 of the International Nomenclature.

That appeal was dismissed by the SPTO, which, in turn, allowed the registration of the contested mark, arguing that, analysing the word elements of both signs, there were sufficient phonetic and word differences between them. Furthermore, from a visual point of view, there were differences both graphically and in terms of visual impact and that, with regard to the conceptual dimension, the conflicting signs presented sufficiently differentiated ideas.

The appellant disagreed with the SPTO’s decision, and therefore filed an administrative appeal alleging the concurrence of the relative prohibition of registration of Articles 6.1.b) and 8 of the Trademark Law.

DECISION OF THE COURT

Firstly, the court ruled that double identity or similarity is required for the mark to be ineligible for registration: firstly, is required the identity or similarity of the signs, but in addition, is also required the identity or similarity of the services or goods to be distinguished (article 8.1º Law 17/2001, of 7 December, of Trade marks).

In these general prohibitions, it is stated in the judgments of this Chamber of 29 June, 13 July and 28 September 2004, that “unlike what happens in special cases (trade mark with a reputation), it is sufficient that one of these circumstances is not present for the prohibition to disappear, and access to the Register of the trade mark applied for must be allowed. This means, firstly, that even if the signs are similar, there will be no prohibition if the goods, services and activities designated are different, and, secondly, that even if the goods, services and activities are the same, there will be no prohibition if there is no similarity in the signs“.

Therefore, the subject matter of the trade mark right is a sign in relation to a class of goods or services (the rule of the speciality of the trade mark). As the doctrine points out, “this association of sign and product is thus transformed into a true trade mark when the contemplation of the sign produces in the minds of consumers the representations concerning the business origin, quality and, where appropriate, good reputation of the goods”. 

Previous trade mark and identity of products and services

As for the identity of goods and services, the court stated that it was clear that there was identity. Trade marks Nº2.150.852 “RUBIO” and EU trade mark Nº17.427.725 “RUBIO” for goods in class 29, are priority signs to the contested trade mark Nº40.306.221 “PATATAS FRITAS LA RUBIA”, also in class 29.

Similarity of signs

The court ruled that there was word similarity, so that the relative prohibition of registration of article 6.1.b) of the Trademark Law was applicable.

In effect, it ruled that “discarding the words “crisps” contained in the contested mark because of their mere descriptive nature, we must limit the analysis to the comparison between the words “La Rubia” in the contested mark and “Rubio” in the priority marks, and in that comparison we see a great similarity given that the only difference is in the genre, which is insufficient to avoid the likelihood of confusion caused by the obvious word similarity between the opposing signs“.

Nor, it added, could the graphic element present in the contested mark be considered sufficient to undermine the impression of similarity resulting from the analysis of the verbal elements of the signs, since that graphic element did not stand out in any way from the verbal element of the contested sign, which is the one that stands out in the visual impression of the sign.

Therefore, the contentious-administrative appeal brought by “RUBIO SNACKS, S.L.” was upheld, and the contested decision was ANNULLED, and the registration of the contested trade mark “PATATAS FRITAS LA RUBIA” before the SPTO was refused, in addition to the costs being imposed on the defendant.

STSJ M 1149/2022 – ECLI:ES:TSJM:2022:1149 11 February 2022