Editor's note: Luxotica Group SpA (Hereinafter referred to as Luxotica) Owns one EU trademark and two Spanish trademarks, Trademark by letter RAY-BAN composition, Specify use in the No 9 commodity. The defendant registered a Spanish trademark, Rotate the label 180 The degree of, Will find with Luxotica The logo is very similar, Also specified for use in No 9 commodity. Therefore, Luxotica Initiate a lawsuit.

[background] Luxotica Group SpA (Hereinafter referred to as Luxotica) Owns one EU trademark and two Spanish trademarks, Trademark by letter RAY-BAN composition (figure 1) , Specify use in the No 9 commodity. figure 1 The defendant registered a Spanish trademark (figure 2) , Also specified for use in No 9 commodity. figure 2 Rotate the label 180 The degree of, Will find with Luxotica The logo is very similar (figure 3) . figure 3 In addition, The form in which the Defendant's trademark is actually used on the goods is shown below (figure 4) : figure 4 Therefore, Luxotica Initiate a lawsuit, And make the following claims: (1) The defendant's trademark is registered in bad faith, Violation of the absolute prohibition of trademark registration law, Should be declared invalid; (2) or, Defendant's trademark and plaintiff's well-known trademark "RAY-BAN" similar, Easily lead to confusion, This is a case where registration is relatively prohibited, Should be declared invalid; (3) Special protection of well-known trademarks based on trademark law, The defendant's trademark registration has caused confusion, It shall be regarded as a tort. The court of first instance upheld all the plaintiff's claims.

[discover] First of all, The appellate court examines the appellant (Defendant of first instance) A ground of appeal that does not constitute a malicious registration. The court cited it in No 396/12 Number judgment (Case number: ECLI: ES: APA: 2012: 3010) Is determined by the criteria for determining the malicious registered trademark, The judgment was that the trademark in question was registered in bad faith, The reasons are as follows: -Although the trademark in question looks different from the trademark registered earlier, But the dispute over the trademark spins later, It can be seen that it is highly similar to the plaintiff's registered trademark; -To be able to register successfully, The defendant intentionally used his own logo, To prevent any confusion with the prior trademark from being opposed; -Because the plaintiff's registered trademark is a well-known trademark, The defendant knowingly registered the trademark involved in the case, Therefore, it is not a bona fide registration act; -Anyone else associated with the defendant (Same residential address) Attempts to register a similar trademark failed. then, The Court of Appeal examines the defendant's claim of disproportionate damages. The court of appeal noted, The court of first instance has identified the trademark in question as having the potential to cause confusion, Therefore, it is judged that the defendant's trademark registration is in line with the relative invalidity of trademark registration. Therefore, Even if the court of first instance does not examine the premises of the tort, It should also be considered that there was no error in the determination of damages. Finally, The appellate court examines the plaintiff's grounds of appeal that the damages in the first instance were wrongly calculated. The second instance determined that there were several errors in the judgment of the court of first instance. Thus, The court of Appeal asked the court of first instance to revise part of the judgment on the calculation of damages, readjudicate, Support the amount of damages sought by the plaintiff (101, 857 euro) .

[comment] The pattern presentation of a trademark in a trademark application, May be a factor in assessing whether there is a malicious registration situation.

author: Ana SANZ, Compiled by Associate Partners of Aisabri: Li Fangqian, Esaberi intern proofread: Liu Dan, The source of Aisabri Legal Counsel: Esabaril (ELZABURU) Intellectual property rights