In a June 10 2016 judgment, Section 8 of the Alicante Court of Appeal – acting as the EU Trademark Court –confirmed in full the February 11 2016 Alicante Commercial Court No 2 judgment which declared that the use of a mark as well as corporate and domain names that were similar to Orange Brand Services Ltd's well-known trademarks constituted trademark infringement.
Orange Mobile Services Ltd, filed a trademark infringement claim against Orange Mobile, SL for its use of:
- the mark ORANGE MOBILE;
- the domain name 'www.orangemobile.es'; and
- the corporate name Orange Mobile, SL.
The first-instance judgment found in favour of the plaintiff. As a result, Orange Mobile, SL filed a writ of appeal before Alicante Commercial Court No 2.
In its writ of appeal, the appellant claimed that its use of the mark ORANGE MOBILE should be protected on the basis of fair cause, as it had used the mark in good faith before the plaintiff's marks had become well known in Spain, following the launch of its national Orange mobile phone services in 2006.
The appellant alleged that the plaintiff's marks had been unknown in Spain until October 2006 and that, therefore, its use of the mark before this date could not constitute infringement. The appellant also argued that October 2006 was the date that must be considered to determine trademark infringement, rather than the filing date or the date on which the plaintiff's marks had become well known in Spain.
However, in its June 10 2016 judgment, the EU Trademark Court rejected the fact that the infringement had been declared due to the likelihood of confusion between the appellant's mark and the plaintiff's earlier marks. Rather, the court made a clear and independent distinction between trademark infringement that is based on a likelihood of confusion and that which is based on the enhanced protection granted to well-known marks.
The court established that the appellant's use of the mark after the plaintiff's ORANGE marks had been registered could not be deemed to have been in good faith – especially as the plaintiff's marks had been well known in Spain before the appellant had used the ORANGE MOBILE mark.
Further, the court held that even if the appellant's corporate and domain names had been registered in 2003 and 2005 (respectively), it had not proved their use before 2007, by which time the ORANGE marks were well known in Spain. As a result, the court held that this constituted trademark infringement under the enhanced protection provided to well-known marks.
The appellant alleged that its use of the domain name 'www.orangemobile.es' did not constitute trademark infringement, as its website had been under construction. However, the court held that a website under construction is not a blank website that is inaccessible to the public. Rather, the website had given users the impression that it would offer products in future. Further, the court highlighted that undertaking serious and effective preparations before launching a product constitutes the effective use of a mark.
The court also held that the domain name qualified as a 'speculative' domain name, as the appellant had:
- renewed its registration in successive years; and
- stated that "any change that may occur, must have an economic compensation offer in return".
The court also confirmed the trademark infringement regarding the appellant's registration and use of its corporate name, stating that:
- the corporate name was not used strictly in a legal context as a subject of rights and obligations and was not completely separate from the appellant's market performance; and
- there was a link between the products and services associated with the corporate name.
The court supported this ruling with the following facts:
- the name Orange Mobile identified the appellant to the extent that it appeared without the acronym that indicated its corporate form (ie, SL);
- the distinctive graphic mark used by the appellant had contained the name Orange Mobile; and
- search results for the appellant had included content relating to the plaintiff's promotional Orange offers.
As a result, the court concluded that the appellant could not ignore the fact that the public concerned might establish a link between the Orange Mobile company name and the ORANGE marks, and that this link was heightened due to the well-known character of the ORANGE marks.
In light of the above, the court:
- dismissed the writ of appeal;
- confirmed the Alicante Commercial Court No 2 judgment; and
- ordered the appellant to bear the costs incurred by the appeal.
Orange Mobile, SL has appealed the judgment before the Supreme Court.
For further information on this topic please contact Elisenda Perelló at Grau & Angulo by telephone (+34 91 353 36 77) or email ([email protected]). The Grau & Angulo website can be accessed at www.gba-ip.com.