[ VICTORIA vs VÍCTOR ]

Judgment of the EGC of 7 September 2016. Case T-204/14

The background of this case is as follows: VICTOR INTERNATIONAL GmbH filed a European Union Trademark Application consisting in the word sign VICTOR for goods in classes 25 and 35. The owners of

Spanish trademarks VICTORIA lodged and opposition against this EUTM application. Both the EUIPO’s Opposition Division and the Board of Appeal considered that the goods covered by the application are partially identical to those covered by the prior mark. Then, VICTOR INTERNATIONAL GmbH filed an appeal before the EGC; appeal that would be rejected.

To sum up, the EGC considered that:

(i) The opponent trademarks’ (VICTORIA) use had been proved, even though they were not used such as registered, since according to the EGC these amendments in the trademark usage do not affect its distinctive character. In this sense, the EGC considers that the prior mark’s distinctive character comes together with the word part VICTORIA, so the amendments in its usage in the market (i.e., the colours or the graphic element consisting in a “V” inside a circle) will be seen by the consumer as decorative elements and they do not affect the distinctive character of the trademarks as registered.

Registered trademark:      

Uses in the market: 
 

 

(ii) Por otra parte, el TGUE recuerda que las pruebas de uso aportadas por el oponente deben ser valoradas en su conjunto y, por tanto, del conjunto de la prueba aportada, ha quedado acreditado el uso del término VICTORIA para calzado.

(iii) Likewise, the EGC ratifies the distinctive character of the word “VICTORIA” although it is a proper name. The fact that the word “VICTORIA” is identified by the Spanish consumers as a female name does not weaken its inherent distinctive character for the goods in question. It is not either upheld that this term is commonly used – in the territory of reference (Spain) – as trademark in the clothing and footwear field.

(iv) Finally, the EGC confirms that the signs (VICTOR/VICTORIA) are similar visually, aurally and conceptually, which together with the identity and similarity of the goods and services creates the likelihood of confusion between the compared signs.  

Unipreus, S.L lodged a claim against Wallapop, S.L as they understood that using the term “Wallapop” by the defendant infringed the trademarks “Walla” owned by the claimant. Now, the Commercial Court No. 2 of Barcelona has considered that there are differences among the services rendered by each party and, besides, it is considered that the trademark “Walla” does not have a high distinctive character and it is not actually known in the market. As a consequence, it is established that there is no likelihood of confusion between these trademarks.

*Source (in Spanish): Lawyerpress

Apple cannot use the trademark “iWatch” in the United Kingdom.

The Swiss company Swatch claimed in 2014 that the brand name “iWatch” used by Apple was highly similar to their smartwatches trademark “iSwatch”. The United Kingdom Intellectual Property Office (UKIPO) rejected Apple’s arguments. They have alleged that they were the owners of a family of trademarks, all of them with the prefix “i”, so the consumer will clearly link the “iWatch” trademark with Apple and there would be no likelihood of confusion with the “iSwatch” trademark. The UKIPO will only allow the use of “iWatch”, in the United Kingdom, for software goods and computer accessories, but not for hardware, audio, video or camera devices, as well as smartwatches. 

*Source (in Spanish):  El País

[ Validated European Patents ]

Spain joins the Federated European Patent Office Register.

From the 1^st September it would be available in the Federated European Patent Register the legal data of the European Patents validated in Spain. The Federated European Patent Register provides the legal status of the European Patents validated in the different Member States. Therefore, the Spanish Patent and Trademark Office will provide the legal information of these patents in real time.

* Source (in Spanish): OEPM

[ AIPPI Milan 2016 ]

Iván Sempere participes in the Annual Congress of the International Association for the Protection of Intellectual Property – AIPPI – as expert in the design protection and defense.

After collaborating as lecturer in the XXXI Study Session on Industrial and Intellectual Protection organized by the AIPPI Spanish Group, our Legal Area Director participated presiding the Spanish group, on the question concernig design protection in the AIPPI World Congress in Milan last 19 September. 

[ XIVCONGRESSAAAML ]

The Magíster Lvcentinvs Alumni Association organizes its XIV AAAML Congress on industrial and intellectual law in Santiago de Compostela.

The XIV AAAML Congress was held last 23 September at the University of Santiago de Compostela with the participation of great professionals and experts on intellectual property. A very complete congress in which some recent issues on patents, trademarks, designs and publicity, among others, were discussed.

[ New Patent Law ]

As it was already advanced by our engineer Isabel Ibarra in her previous post IMPROVING THE SPANISH PATENT SYSTEM: THE NEW PATENT LAW 24/2015; next 1 April 2017 the new Patent Law 24/2015 will come into force, amending Law 11/1986.

In this new Blog post of our Innovation Department Coordinator, and as it has been published the draft of the Regulation for execution of the new Patent Law, she is reminding some of the novelties of the entry into force of this new law and that are established in said draft. READ NEW POST (in Spanish)…

#padimaprotege