In a recent decision (20th January 2013) the Spanish Supreme Court decided about a very simple (and usual question): did the lower court adjust the ruling to the accepted standards for the required level of likelihood of confusion?. In other words: is the challenged decision “logical, rational and lawful” as the Law for the Civil Procedure requests?. It seems to be for all the judges… except for one!.

Dissenting opinions are extremely unusual in Trademark Law rulings, especially in those issued by the Supreme Court. This one brings to discussion the difficulties of balancing the nature of the cassation appeal (facts and its interpretation for the ruling made by the lower Court shall not be discussed by the Supreme Court except in those cases where the ruling is irrational, arbitrary or unlawful) and the interdependence principle issued by the Court of Justice (see pg. 19, Lloyd Schuhfabrik Meyer & Co. GmbH case C-342/97) which sometimes can be, a simple desideratum.

The case is very simple: a trademark infringement based on letter b) article 9 EC 207/2009 is declared by the CTM Court. Both trademarks are phonetically close and they identify exactly the same products (women clothes). However, the decision is upheld by the Province Court  on the ground that clothes are displayed before consumers in a way that makes the visual aspect of the trademark, the dominant one. Thus, both trademarks are so different visually that likelihood of confusion cannot appear.

Was this reasoning legally sound for the judges of the Supreme Court?. The majority thought so and consequently decided not to review the merits of the case. For them and even surprisingly for the dissenting judge, who expressly refers to Court of Justice case C-498/07 La Española vs. Carbonel in support, visual similarity can prevail over phonetics in some cases.

However – and here lies the quid of the discussion – while the majority think that all the elements to determine the existence of likelihood of confusion were correctly assessed by the lower Court (and thus the decision cannot be reviewed), the dissenting judge understands that the Province Court performed a mere formality and missed something.

Indeed and according to the dissenting opinion, the lower Court could not ignore the fact that both signs identified the same exact goods. According to  the interdependence principle, such intensity should diminish the impact that phonetic and visual differences could have on the likelihood of confusion. In the end, the first instance decision was right and the trademarks incompatible.

Incidentally, the appeal brings other interesting questions such as the difficult role market surveys play in IP litigation and how vague the concept of average consumer can be for Courts and plaintiffs. A recent and exhaustive discussion on this regard has arisen before UK Courts regarding Interflora, Inc. Interflora British Unit v Marks and Spencer PLC Flowers Direct Online Limited (2009 EWHC 1095 (Ch). However it is a pity that the Supreme Court missed this chance to enlighten us on the particular. Maybe next time!.