The Spanish team of HOYNG ROKH MONEGIER successfully represented French clothing brand HARTFORD before the Community (soon to be EU) Trade Mark Courts of Alicante and obtained a preliminary injunction to prevent the continuation of the alleged infringement of HARTFORD’s (name) Community Trade Mark by a Spanish optics Company which was responsible for the importation, sale and marketing of a line of sunglasses and frames using the HARTFORD name and logos.
Community Trade Mark Court No. 2 of Alicante found in its Decision (Decision No. 367/15 of 4 December 2015) that the evidence supported a prima facie case in favor of trade mark infringement due to the risk of association created because of the very significant similarities between the signs and the close connection between the goods, despite a formal difference in the Classification:
“…the similarity between the products offered by the defendants (Glasses, both frames for lenses and sunglasses) and the goods protected by the “Hartford” mark belonging to IMPALA (clothing and accessories in general) is self-evident. Although the goods which are offered and marketed by the defendant companies under the signs Hartford and Hartford are formally encompassed in class 9, there is a connection between eyewear and the fashion industry, so this is not an obstacle to understand that there is a risk of association by the average consumer, who may believe that they all stem from the same origin, although this might not be the case”.
Further, it also ruled in favor of HARTFORD on the basis of the HARTFORD brand’s well-known nature, which led the Court to consider that the Defendants might be taking undue advantage of the prestige and reputation associated with the HARTFORD mark.
This is a relevant step in the protection of HARTFORD’s brand in Europe, as well as an important development from the Spanish IP litigation perspective, because the preliminary injunction was obtained despite the coverage that the alleged infringers argued was granted by a Spanish mixed logo Trade Mark comprising the same name, registered after HARTFORD’s own prior CTM and which HARTFORD had not opposed (as it had with a more recent application pending before the Contentious-Administrative Courts upon rejection by the SPTO during opposition proceedings).
By awarding the preliminary injunction against the infringers despite their allegation of use of their own HARTFORD registered trade mark, the Court’s decision is a step further in the alignment and harmonization of Trade Mark Law in Spain. It implies one of the first practical applications, at the preliminary injunction phase, of the recently settled doctrine both at the EUCJ (Judgment of the Court (First Chamber) of 21 February 2013 in Case C 561/11, Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza, ECLI:EU:C:2013:91) and the Spanish Supreme Court (Judgment of the Spanish Supreme Court (First Chamber) of 14 October 2014, No. 520/2015 in Case Denso Holding GMBH v Productos Denso Pla y Cía., S.L., RJ/2014/6128) for the merits which corrected the previous Spanish Case Law doctrine of the so-called “registration immunity,” according to which it was not possible to obtain injunctions against the owner of a registered trade mark without previously obtaining the revocation of said trade mark, based on a wrong understanding of an alleged Jus Utendi (right to use) by all trade mark owners.
The Decision by the Community Trade Mark Court of Alicante is not final and may be appealed.