[Editor's note] Like most countries and regions in the world, The rulings of the Court of Justice of the European Union have important guiding significance and predictive value for understanding the legal norms of the European Union. Esabaril (ELZABURU) At the beginning of each year, typical cases of the Court of Justice of the European Union in the previous year are summarized and published, And a brief review of each case, In order to help customers and partners to understand the EU intellectual property norms. Given the importance of Chinese customers and partners, We try to publish the Chinese version of typical cases on a weekly basis, It is convenient for Chinese partners to learn the latest information in a timely manner.

　　 [background]

　　Ornua Co-operative Ltd (Hereinafter referred to as "Ornua" ) It's an Irish company, Has a number of EU registered trademarks "KERRYGOLD" , Specified for use in butter and other dairy products (The first 29 class) On merchandise, It is sold in Spain and several other European Union countries. Two of the EU registered trademarks are shown in Figure 1: Figure 1　　Tindale & Stanton (Hereinafter referred to as "T&S" ) It's a Spanish company, Imports and distributes margarine commodities to Spain, Goods are labelled "KERRYMAID" As shown in Figure 2: Figure 2　　2014 years 1 month, Ornua In accordance with the "Eu trade mark regulation (The first (EC) 207/2009 No) " The first 9. 1 (b) and (c) article, To the Commercial Court of Alicante T&S Infringed its EU trademark rights. 2015 years 3 month 18 The court rejected the plaintiff's claim. Ornua An appeal was then filed with the Court of Appeal in Alicante, The Court of Appeal was asked to request a preliminary decision from the European Court of Justice in this case, Explain the above No 9. 1 (b) and (c) To understand the provisions of the article, specifically, In determining whether there is a risk of confusion between similar marks and improper use of others' trademark reputation, The fact that the two have co-existed peacefully in parts of the EU market, Could it be extended to other areas of the EU. European Court of Justice 2017 years 7 month 20 day, Make adjustments C-93/16 adjudication (See the article by Esaberi " [Eu trademark] Factors determining whether a disputed trademark is at risk of confusion (C-93/16) " ) .

　　In accordance with the above preliminary findings, After hearing the case in the Alicante Court of Appeal, Dismissal of judgment Ornua appeal, The judgment of the first instance is affirmed.

　　 [conclusion]

　　The Alicante Court of Appeal began by summarizing the main conclusions of the European Court of Justice decision:

　　- The dispute marks parts of the EU market (Great Britain and Ireland) That there is a risk of confusion, It doesn't necessarily extend to the Spanish market, The risk of confusion in a particular area must be judged separately.

　　- Assessing the socio-cultural environment and market conditions, The whole area of the EU cannot simply be analysed as a whole, Because the average consumer in the UK and Ireland generally thinks "KERRY" Is a sign indicating geographical origin, But things are different in Spain.

　　- The controversial logo does not exist peacefully in the Spanish market, Therefore, Peaceful coexistence in other areas of the EU cannot be marked by disputes, As a legitimate reason for the use of the infringing mark in Spain.

　　This is despite the fact that the European Court of Justice has stipulated the above exceptions and precautions, After the appellate court has assessed whether there is a risk of confusion between the contested marks, The decision of the court of first instance is affirmed. Therefore, From the general consumer (Reasonable level of cognition and careful observation) After the overall assessment of whether there is confusion risk between the disputed marks, Appellate finding, Although there are some common elements between the disputed symbols, But not to the extent that there is a risk of confusion.

　　secondly, About the defendant taking undue advantage of the plaintiff "KERRYGOLD" Claim for trademark reputation, Appellate finding: (1) There is only a faint similarity between the disputed symbols, Consumers are less likely to associate the plaintiff's trademark with its reputation after seeing the defendant's trademark; (2) The defendant's business efforts should not be ignored, It imports and protects trademarks into the markets of other EU member States, It should be regarded as a significant effort by the defendant to gain a foothold and commercial development in a particular market.

　　 [comment]

　　The Alicante Court of Appeal decision has not yet taken effect, because Ornua On the grounds that the sentencing procedure is illegal, File a complaint. Ornua Think that, In its decision, the Appellate Court merely listed the prior precedents to which the court of first instance referred in determining whether there was a risk of confusion, However, the precedent itself cannot constitute the legal basis for the settlement of the dispute, Therefore, The appeal judgment was made without sufficient basis. On the other hand, Ornua In the petition, For the first time, the appeal court's decision conflicts with a similar decision by Spain's Supreme Court, The Supreme Court has held that, The risk of confusion should be assessed holistically, This is particularly important for well-known trademarks; and, In accordance with "Eu trade mark regulation (The first (EC) 207/2009 No) " The first 9. 1 (c) Provision of article, The determining factor is not the degree of similarity between the disputed symbols, but, Whether the relevant public believes there is a link. Therefore, Ornua with T&S The dispute between the two remains unresolved.

　　 [reference]

　　 " [Eu trademark] Factors determining whether a disputed trademark is at risk of confusion (C-93/16) "

　　compile: Liu Dan, Esabarry Legal Counsel　　source: Esabaril (ELZABURU) Intellectual property rights