HOYNG ROKH MONEGIER’s Spanish team secured another success for French clothing brand HARTFORD before the European Union Trademark (EUTM) Courts in Alicante in trademark infringement and invalidity proceedings filed against Spanish optics company DIVARO (Navarro Óptico). This litigation stemmed from DIVARO’s commercial exploitation of eyewear and frames using HARTFORD’s name and logos, as well as the registration of a Spanish trademark in class 9 identical to HARTFORD’s brand as used in the market.
Following the first instance judgment, which upheld Hartford's claims at the beginning of this year, and further to DIVARO’s appeal against that decision, the EUTM Appeals Court –the most authoritative and knowledgeable Court in Spain for trademark matters- fully endorsed our client’s position again in its judgment of 26 October 2017. By rejecting DIVARO’s appeal, it endorsed that favorable first-instance judgment on all counts, reaffirming DIVARO’s infringement of HARTFORD’s trademark rights and the partial revocation of DIVARO’s Spanish trademark for the disputed goods. Furthermore, the Court ordered DIVARO to pay the legal costs of the appeal.
The core of the dispute dealt with the similarity of the goods at stake, a prerequisite for trademark infringement/invalidity due to risk of confusion. Following a thorough analysis of the arguments and evidence submitted at trial, the EUTM Appeals Court concluded that there is indeed that required degree of similarity between clothing products and eyewear. Agreeing with the first instance ruling, the EUTM Appeals Court observed a complementary relationship between those goods, as they share “the same usual purpose, to customize a person’s image according to fashion and one’s tastes”, not being “uncommon for glasses to be combined with articles of clothing as far as style, colors, etc.”. It further added that “the conflicting goods could also be very easily considered by the relevant public as elements of a wider range of fashion products, since it is customary for fashion brands to be used with products that are not strictly textiles, but also “dress” people, affording them the imprint they desire”. Especially relevant for the Court was the ample proof submitted by HARTFORD showing that the defendant itself advertised and offered the illicitly- trademarked eyewear, “emphasizing its condition as fashion ‘complements or accessories’”.
This is the fourth victory for our client before the Spanish EUTM Courts in Alicante: Hartford prevailed in both the first and appeal instances in the related preliminary injunction proceedings and on the merits of the main case (now being decided on appeal). This new judgment from the EUTM Appeals Court is not final, however, and may still be appealed in before the Spanish Supreme Court which may decide to revise the case if it considers it to have cassational interest.