Editor's note: 2015 years, Impala World Inc. Corporate action Divaro, S. A. company "HARTFORD" Brand glasses infringe its EU word trademark "HARTFORD" Trademark right. The plaintiff asked the court for judgment against the defendant on 2012 The title of a Spanish compound trademark registered in 2005 was transferred to the plaintiff, Or the defendant's trademark mentioned above shall be deemed invalid. How will the court rule? Please look down!

[background] 2015 years, Impala World Inc. Corporate action Divaro, S. A. company "HARTFORD" Brand glasses infringe its EU word trademark "HARTFORD" Trademark right (Specify use in the No 9 Class sum control 25 commodity) . The plaintiff asked the court for judgment against the defendant on 2012 The title of a Spanish compound trademark registered in 2005 was transferred to the plaintiff, Or the defendant's trademark mentioned above shall be deemed invalid. At the same time that the plaintiff filed an action for infringement, Apply for the following relief measures: (1) The defendant immediately stopped selling and/Or promise to sell sunglasses that are already on the market, A frame for functional glasses, Lenses or related accessories and other goods suspected of infringement, And temporarily prohibit the above commercial activities; (2) Withdrawal of the above goods stored at the point of sale or by third parties; (3) Seizure of goods bearing the alleged infringing trademark kept at the defendant's factory and warehouse and at the defendant's distributor; (4) Register the warning with the Spanish Patent and Trademark Office. The court of first instance ruled to grant No (1) Articles and regulations (4) Relief measures. The dispute in the second instance focuses on whether the facts of the case meet the requirements of the injunction measure "Probability of success (fumus boni iuris) " requirement?

[conclusion] The Trademark Court of the European Union has analyzed in detail the circumstances of this case——The plaintiff raised no objection to the defendant's application for registration of the Spanish trademark, Instead, after the defendant's trademark was registered, he directly requested that the defendant be prohibited from selling goods bearing the trademark in the market——Whether the court will uphold the plaintiff's claim for a temporary injunction against the alleged infringement? The Court of Appeal noted, appellant (Defendant of first instance, Translator's note) The request for appeal is based on the alleged "Exemption from registration" (immunity through registration) theory, Even the use of a registered trademark protected by law does not constitute an illegal act. but, This theory has been upheld by a previous European Court of Justice ruling (2013 years 2 month 21 day, Case number: C-561/11) And a ruling by the Spanish Supreme Court (2014 years 10 month 14 day, Case number: ECLI: ES: TS: 2014: 5089) overthrow. Appellate judgment, If the prior owner is allowed to bring an infringement action against the later registered trademark, Then there's no reason to deny the plaintiff a temporary injunction——The infringement is prohibited from continuing——The way of, To ensure the validity of future court decisions. The ruling also stated that, Although the trademarks of first instance defendants and first instance plaintiffs were not specified for use in the same class of goods or services, But there is a relationship between the main product and the ornament, Therefore, there is a possibility of confusion and misidentification between defendant's trademark and plaintiff's trademark. As can be seen from the evidence submitted, Glasses are often used as part of a fashion style or trend, It's classified as clothing and accessories. Although based on the above argument, There is no need for further analysis of the case, The judgment of the second instance still answers the question about the famous attribute of the plaintiff's trademark in the first instance. The evidence shows that the plaintiff's trademark in the first instance has gained a well-known status in France, But here's what's controversial, Whether the famous effect of the plaintiff's trademark obtained in France in the first instance can be extended to Spain? European Union Trademark Court reference 2015 years 9 month 3 The European Court of Justice in Japan C-125/14 The principles affirmed in the decision of case No, All things considered, the plaintiff in the first instance has a number of dealers in Spain, 2010 Huge annual sales and advertising in professional magazines, It is recognized that the plaintiff's trademark of first instance has a well-known status in Spain, The well-known trademark protection standards shall be applied for protection.

[comment] European Court of Justice C-561/11 The tsunami wave caused by the decision finally reached the shore of the temporary injunction. The rationale in this case has a logical basis in itself: If the trademark registration act fails to prevent others from bringing infringement proceedings against the trademark, Nor, of course, does it prevent others from seeking temporary injunctions to ensure the validity of future court decisions. however, One question in the case remains unanswered. Although the registration of the trademark with the Spanish Patent and Trademark Office does not confer the right to use the trademark (right of use, ius utendi) , That is to say, the use of the registration behavior to prevent other prior registered trademark owners from bringing infringement litigation, but, "Obtain registration" Nor can the facts be used against a request for a temporary injunction "Probability of success" (fumus boni iuris) This condition? In addition, The other surprising aspect of the case, The facts of this case do not appear to meet another requirement for a temporary injunction—— "Delay will cause irreparable damage" (periculum in mora) , Because the defendant's trademark has been registered for three years.

compile: Liu Dan, The source of Aisabri Legal Counsel: Esabaril (ELZABURU) Intellectual property rights