On 2 October 2018 the EU Trademark Court Number 1 of Alicante granted the interim injunction application filed by Xiaomi Inc against Blablatel Mobile SL for trademark infringement due to the parallel import of technological products from outside the European Economic Area.

Facts

China-based company Xiaomi is a world leader in the design, production and sale of mobile phones and electronic devices. In order to distinguish its products, Xiaomi owns the well-known Spanish, international and EU trademarks XIAOMI, MI, MIUI, MIBOX and REDMI, among others.

Blablatel, a Spanish company based in Asturias, is dedicated to the sale of mobile phones and technological accessories through franchises throughout Spain. Blablatel owned Spanish trademarks 3.638.080 (XIAOMI MIUI MOBILE INTERNET) and 3.639.146 (MI XIAOMI), which it applied for after Xiaomi had registered its trademarks.

As Blablatel's trademarks conflicted with Xiaomi's well-known prior marks, Xiaomi filed a cancellation and trademark infringement claim plus an interim injunction application against Blablatel.

Xiaomi sought:

  • the cancellation of Blablatel's XIAOMI MIUI MOBILE INTERNET and MI XIAOMI trademarks based on Article 34 of the Spanish Trademark Act 17/2001 and Article 9 of the EU Trademark Regulation (2017/1001), as they:
    • conflicted with its well-known prior marks XIAOMI, MI, MIUI, MIBOX and REDMI; and
    • had been applied for in bad faith; and
  • trademark infringement based on the fact that Blablatel was selling through its website products from outside the European Economic Area which were identified with Xiaomi's trademarks and constituted parallel imports under Article 36 of the Spanish Trademark Act and the equivalent Article 15 of the EU Trademark Regulation.

In the same writ, Xiaomi applied for interim injunctions against Blablatel consisting of:

  • ceasing the illegitimate import, sale, promotion and marketing of infringing goods and any other activity that could be qualified as infringing Xiaomi's well-known prior trademarks;
  • retaining and depositing any infringing goods that it had in stock; and
  • publishing the court's decision in the 'News' section of its website, through which it communicates with its franchisees in order to advise them of the illicitness of the products that they were selling.

Decision

By order of 2 October 2018, the court upheld Xiaomi's arguments and granted the requested interim injunctions in their entirety.

In its decision, the EU Trademark Court Number 1 of Alicante considered that Xiaomi's interim injunction request complied with the requirement of the likelihood of success in the main case, as Blablatel's Spanish trademark applications had been made in bad faith. The court based this decision on the following arguments:

  • the defendant had acknowledged the existence of Xiaomi's well-known prior trademarks as it had not disputed their well-known nature;
  • Blablatel's trademarks were almost identical to Xiaomi's prior trademarks and were registered for the same products; and
  • Blablatel had registered its trademarks after Xiaomi.

The court also considered that the need of urgent relief requirement had been complied with and thereby ignored the defendant's argument that the infringing conduct had already ceased. In this respect, the court held that Blablatel had not proved said cessation; therefore, the claim had to be rejected.

Bearing in mind that applications made in bad faith are invalid in accordance with Article 51 of the Spanish Trademark Act, the EU Trademark Court considered that it was appropriate to order Blablatel to cease the parallel import of products identified with Xiaomi's trademarks from outside the European Economic Area without Xiaomi's consent. Further, the court considered that the interim injunctions requested were necessary and proportional to ensure a possible favourable judgment for Xiaomi.

Considering the above, the EU Trademark Court of Alicante Number 1 granted the requested interim injunctions in their entirety and ordered Blablatel to comply with all of the measures requested by Xiaomi.

Blablatel has not appealed this decision and it is therefore final. Further, on 19 November 2018 the EU Trademark Court of Alicante Number 1 upheld the complaint in the main case and convicted Blablatel for trademark infringement.

Comment

This decision is notable, as it confirms that importing goods that were originally intended to be marketed outside the EEA without the trademark owner's consent constitutes trademark infringement.

For further information on this topic please contact Paula Gutiérrez at Grau & Angulo by telephone (+34 93 202 34 56) or email (p.gutierrez@ga-ip.com). The Grau & Angulo website can be accessed at www.ga-ip.com.

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