[Editor's note] This case is a typical case of infringement of well-known trademark rights by registration and use of domain name and company name which obviously infringes the plaintiff's prior rights. Orange Brand Service Ltd. The company has multiple inclusion words "ORANGE" The famous EU trademark and the Spanish trademark, defendant Orange Mobile Use the company name in its publicly traded stores "ORANGE MOBILE" , And use similar graphic trademarks on its website. Read on for more details!

[background] Orange Brand Service Ltd. The company has multiple inclusion words "ORANGE" The famous EU trademark and the Spanish trademark, Specify use in the No 35 Class sum control 38 Class of goods and services. Some of the above well-known trademarks are graphic trademarks, It is shown in Figure 1 below: Figure 1 Defendant in the case Orange Mobile, S. L. Company is the plaintiff's competitor Vodafone One of the company's distributors, Provide mobile phone related goods and services. Orange Mobile Use the company name in its publicly traded stores "ORANGE MOBILE" , And on its website (www. orangemobile. es) Use the graphic identification as shown in Figure 2: FIG. 2 The plaintiff sued the defendant for trademark infringement, Be based on "European Union regulations on trademarks of the European Union (The first 207/2009 No) " The first 9. 1 article a, b, c item, and "Spanish trademark law" The first 41 article. The court of first instance upheld the plaintiff's other claims, But denied the plaintiff's request to identify the defendant's domain name (orangemobile. es) A claim for infringement of its trademark rights.

[conclusion] First of all, The defendant asserts its use "ORANGE MOBILE" The act of trademark is fair use, Because when the defendant started using the symbol, The trademark on which the plaintiff claims infringement has not yet been registered and is well known within the EU. The Court of Appeal rejected the defendant's claim. secondly, The appellate court noted that some Spanish consumers were not familiar with the plaintiff's trademark even before the specified date, However, it still cannot be ruled out that the plaintiff's trademark is "The business field is relevant to the public" (commercially significant part of that public) A familiar fact. The defendant is a company in the field of electronic communications, Rightfully belong to "The business field is relevant to the public" Category of. Therefore, Related to the defendant "Is not aware of any connection between its marks used to promote goods and services and Plaintiff's trademarks" The plea cannot be upheld. again, About the domain name registered and used by the defendant (orangemobile. es) , The appellate court ruled that the defendant had violated the plaintiff's trademark, The reason lies in: -The domain name points to websites that display goods and services associated with Plaintiff's competitors, Sufficient to cause confusion with the plaintiff's trademark identifying goods; -The site displays signs suspected of infringement during construction, The products provided by the company, such as mobile phones, are confused with the goods marked by the Plaintiff's trademark; - "Deregister domain name" It is an appropriate measure to prevent the recurrence of infringement; -Defendant updated the domain name in question after Plaintiff issued a cease and desist warning letter, The plaintiff is required to provide the facts of the domain name change fee, Indicates that the domain name is "speculation (speculative) " Domain name, The defendant registered the domain name only for the purpose of transferring the domain name when required by the trademark owner, Demand economic compensation from the trademark owner. fourth, Regarding registration and use of defendants "Orange Mobile, S. L. " The name of the company, The appellate court ruled that the name was used only for legal purposes and not for the defendant's activities in the market, The reason is that: -The defendant's website content shows part of the defendant's use of the name (removed S. L. ) Identify their trade status; -Use a graphic logo with your company's name on your website; -When searching for mobile phone device products on third party search engines, The defendant appears in the search results as the name of his company; -The way the defendant uses the name of his company, It does not conform to the principle of good faith in business and industry: (1) Use by the defendant "Orange Mobile, S. L. " The name of the company, To associate Defendant's products and services with Plaintiff's trademark identifying products and services; (2) The defendant could not deny that the connection arose as a result of his choice of company name; and, (3) The well-known nature of plaintiff's trademark intensifies the connection between the name of defendant company and plaintiff's trademark. Finally, The Court of Appeal upheld the judgment of the court of first instance as to the amount of damages and compensation.

[comment] This case is a typical case of infringement of well-known trademark rights by registration and use of domain name and company name which obviously infringes the plaintiff's prior rights.

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