On 2 June 2021 the Supreme Court dismissed as inadmissible the cassational and procedural infringement appeals that had been filed by Equivalenza Retail SL against a 24 January 2019 Trademark Court of the European Union (EUTM) judgment. The judgment in question confirmed a 13 February 2017 European Union Trademark Court 2 judgment, in which the aforementioned company was sentenced for trademark infringement and unfair competition by upholding the lawsuit filed by:

  • Guccio Gucci SpA;
  • Hugo Boss Trademark Management GmbH & Co KG;
  • Lacoste SA;
  • Procter & Gamble International Operations SA; and
  • Procter & Gamble Prestige Products SAU.


The defendant, in its smell-alike perfumery business (its own stores and also those of third-party licensees and distributors of its products), used the registered trademarks for perfumes owned by the plaintiffs without their authorisation. Such use of third-party trademarks was made in "comparison lists", which linked Equivalenza's perfumes with the trademarks of the plaintiff's globally known perfumes (eg, those of the firms Hugo Boss, Gucci and Lacoste), as well as in its commercial speech.


The Supreme Court dismissed the cassational appeal filed by Equivalenza on the ground of lack of interest in the case, on the understanding that the issues raised by the appellant:

  • were outside the factual basis and the ratio decidendi of the appealed judgment; and
  • did not contravene the case law invoked as infringed.

The extraordinary appeal for procedural infringement was also dismissed as the cassational appeal was inadmissible.

The Supreme Court's decision of inadmissibility made it clear that it had no doubts as to the unlawfulness of practices such as that carried out by Equivalenza – namely, using third-party trademarks to take unfair advantage of their reputation and renown. In this regard, the Court referred to an 18 June 2009 Court of Justice of the European Union (CJEU) judgment (C-487/07), issued in the well-known L'Oréal v Bellure case, that clearly ruled on this issue.

Regarding the merits of the case, the Supreme Court included in its order of inadmissibility the following considerations of interest:

  • The Court clarified that the facts constituting the infringement lay in the non-consensual use of third-party trademarks with the purpose that consumers would relate the defendant's perfumes with those designated by the plaintiffs' trademarks, thus taking advantage of their prestige. It was irrelevant for the ratio decidendi of the appealed judgment whether the conflicting uses undermined the identifying function of a business origin, since the appealed judgment considered as proven the undermining of the other functions of the trademarks relating to guaranteeing the quality of the goods, products or services distinguished with them or those of communication, investment or advertising.
  • Likewise, and with respect to the alleged descriptive use of the plaintiffs' trademarks claimed as a defence by Equivalenza, the Supreme Court referred to the L'Oréal v Bellure judgment in which it was concluded that the use in comparison lists of third-party trademarks does not pursue merely descriptive purposes (not being able, therefore, to rely on the exceptions to the ius prohibendi of the trademark owner), but has a clear advertising purpose, as an act of communication in the context of a commercial activity to promote the sale of perfumes.
  • From the perspective of comparative advertising (admissible under certain conditions and on which the defendant had also sought to rely), the Supreme Court, with reference also to the aforementioned L'Oreal v Bellure judgment, recalled that the use of comparison lists constitutes unfair advertising and is therefore unlawful. The Court explained that this is because when an imitation of a product is offered using another's trademark without the consent of its owner, advantage is taken of the trademark's prestige.

In short, the Supreme Court had no doubt about the legal issues raised by Equivalenza, understanding that they had already been resolved by the CJEU in L'Oréal v Bellure.


In Spain, the infringing and unlawful nature of the use of the trademarks of original perfumes in the context of smell-alike perfumery is a clear and conflict-free issue for the courts, which have been ruling in this sense for years. This latest Supreme Court decision confirms, once again, this jurisprudential doctrine.

For further information on this topic please contact Julia Carretero at Grau & Angulo by telephone (+34 93 202 34 56) or email ([email protected]). The Grau & Angulo website can be accessed at