On July 8 2011 Section 28 of the Madrid Court of Appeal ruled, on the one hand, on the compatibility of the Spanish trademark BAHIANA and Design 2.510.629 and the Spanish trademarks HAVAIANAS 2.341.905 (word) and 2.341.904 and design, and, on the other hand, on the infringement of the HAVAIANAS trademarks resulting from the use by one of the defendants of the unregistered sign BAHIANAS LAS ORIGINALES.(1)
Sao Paulo Alpargatas SA filed a suit against Fashion Import SA and Secret Spot SL requesting:
- a declaration of nullity of the Spanish trademark 2.510.629 BAHIANA and design, in Class 25, registered by Fashion Import (Figure 1); and
- that Secret Spot be sentenced for using an unregistered sign (Figure 2) to infringe the trademarks registered by Sao Paulo Alpargatas – 2.341.905 HAVAIANAS (word) and 2.341.904 HAVAIANAS and design in Class 25.
The sign of Trademark 2.341.904 is shown in Figure 3.
In a judgment of May 6 2009, Madrid Commercial Court No 2 declared:
- the nullity of the trademark BAHIANA and Design 2.510.629, in considering that there were similarities in both the application and the signs and consequently that the likelihood of confusion between that trademark and the HAVAIANAS trademarks belonging to Sao Paulo; and
- that the sign BAHIANAS LAS ORIGINALES used by Secret Spot to market its sandals infringed the HAVAIANAS trademarks.
This judgment was appealed by Fashion Import by rejecting the nullity action of Trademark 2.510.629 BAHIANA, and by Secret Spot by rejecting the infringement action of Trademarks 2.341.904 and 2.341.905 HAVAIANAS.
By a judgment of July 8 2011 the Madrid Court of Appeal upheld the finding that Secret Spot had infringed Sao Paulo Alpargatas's trademarks, but revoked the nullity finding in regard to Fashion Import's trademark.
With respect to the issue of infringement, the court held that there were similarities in application between the products marked with the "BAHIANAS LAS ORIGINALES" sign used by Secret Spot and the goods bearing the registered HAVAIANAS trademarks belonging to Sao Paulo Alpargatas.
Further, there was a similarity between the signs. In this regard the Madrid Court of Appeal referred to the May 25 2011 ruling of the Court of Justice of the European Union issued in connection with the application of a Community trademark identical to that used by Secret Spot which opposed Sao Paulo Alpargatas on the basis of its HAVAIANAS trademarks.
The appeal court concluded that the dominant elements of the trademarks were 'Havaianas' and 'Bahianas'. As a result, the court considered that there was a visual and phonetic similarity, and also some conceptual similarity, between the signs because although the terms 'Havaianas' and 'Bahianas' evoke different locations (Hawaii and the Bay Islands, respectively), they may be associated with the same idea: long-haul holiday resorts and the sea.
The presence of the term 'Las originales' on the sign used by Secret Spot did not exclude the similarity of the signs, given the lack of distinctiveness of the term, its location and the type of characters used, all of which considerably reduced its influence on the general impression that the sign gives to the public.
Finally, given the identity of products and the high degree of similarity of the signs, and taking into account the relevant sector of the public, there was at least a likelihood of association of the commercial origin of the defendant's goods with those of the plaintiff.
Regarding the issue of the nullity of the trademark BAHIANA and Design 2.510.629, the appeal court disagreed with the judgment of Madrid Commercial Court No 2, which established the nullity of the BAHIANA trademark on the grounds that it was nearly identical to Sao Paulo Alpargatas's HAVAIANAS trademarks, on the basis of their verbal elements and regardless of the graphic element of the BAHIANA trademark.
The appeal court revoked the declaration of nullity of the BAHIANA trademark and declared its validity based on the following considerations:
- A global assessment of the likelihood of confusion must be based on the overall impression that the signs provoke, taking into account, in particular, their distinctive and dominant elements.
- In the BAHIANA trademark registered by Fashion Import, the figurative element (consisting of the "image of a black woman walking, wearing a full skirt and headscarf and carrying a basket of fruit on her head") was dominant.
- Consequently, in this case the phonetic and, where appropriate, conceptual, similarity that exists between the words was compensated for by the figurative element of the BAHIANA trademark, which was dominant in that sign. The presence of that element diluted the likelihood of confusion or mere association because the overall impression given by the opposing signs was different.
Therefore, the appeal court disagreed with the criteria of the Opposition Division of the Office for Harmonisation in the Internal Market set out in a resolution of May 31 2011, in which it denied the registration as a Community trademark of a sign identical to Spanish trademark 2.510.629 BAHIANA as being inconsistent with the Community trademark HAVAIANAS owned by Sao Paulo Alpargatas. In agreement with Madrid Commercial Court No 2, the Opposition Division considered that the verbal elements dominated the graphics and that the phonetic and conceptual similarity of the words (despite the existence of the graphical and visual dissimilarity of the opposing signs) determined the existence of a likelihood of association.
For further information on this topic please contact Antonia Torrente at Grau & Angulo by telephone (+34 93 202 34 56), fax (+34 93 240 53 83) or email ([email protected]).