Section 2 - Likelihood of confusion in the case law of the European Court of
A. Spain
10. Canna B.V. v. Servideu S.L. y Productos Flower S.A. (27 February 2007) .54
Juzgado de lo Mercantil No. 1 de Alicante
The Dutch company Canna B.V. offers through its Spanish licensee in the Spanish market chemical fertilizers under the mark CANNA, und with the addition BIO it offers biological fertilizers. Both products are targeted mainly at fertilizing the cannabis (hashish) plant. The CTM “CANNA The solution for growth and bloom” is a mixed mark as shown below:126
Defendants also commercialize fertilizers for the cannabis plant under the junior mark Bio-Canna, which is purely a word mark and is registered in the Spanish Patent and Trade Mark Office. Claimants allege that defendant infringes their CTM.127
124 Asterix, supra note 117, at 9.
125 Asterix, supra note 117, at 8.
126 Canna B.V. v. Servideu S.L. y Productos Flower S.A. (27 February 2007), at 3 – 4.
127 Canna, supra note 126, at 4.
The Court held that there is a likelihood of confusion between the marks:
1. There is no doubt that in the composition of the mark “CANNA The solution for growth and bloom”, the element CANNA stands out and makes the complementing phrase “The solution for growth and bloom” irrelevant. It is settled that the global appreciation of the likelihood of confusion must be based on the overall impression that the marks produce, taking into particular account its distinctive and dominant elements.
In this case, the dominant element is “Canna”. Even though the CTM “CANNA The solution for growth” is a mixed mark, and defendant’s sign “Bio-Canna” is purely a word mark, a graphic similarity is still possible, since both marks have a graphic configuration that can produce a visual impression.128 There is almost a phonetic identity between the marks, since the dominant element is CANNA, even though the defendant’s sign begins with “Bio” since it is a word root with a common meaning, that is, it is generic and descriptive. As a result, there is a strong similarity from the visual and phonetic point of view, as the dominant element is the word Canna.129
2. The products are of identical nature, that is, plant fertilizers.130
3. The relevant consumers of these products are the same and must be taken into account.
11. Christ Juweliere und Uhrmacher Seit 1863 GMBG v. Ramesh Jeswani Jeswani and Gold Kramer SL (02 February 2007)
Juzgado de lo Mercantil No. 1 de Alicante
The claimant, the German company CHRIST JUWELIERE UND UHRMACHER SEIT 1863 GMBH (CHRIST Jewelers and Watchmakers Since 1863) is the owner of the CTM for the word CHRIST for precious metals and articles made thereof, jewelry,
128 T-110/01, Vedial S.A./OAMI (Hubert), 2002, at paragraph 51; T-352-02, Creative Technology Ltd./OAMI (PC WORKS/W WORK PRO), 2005 , at paragraph 33.
129 Canna, supra note 126, at 9 – 10.
130 Canna, supra note 126, at 11.
precious and semi-precious stones, and watches. The claimant alleges that defendant have infringed its CTM by using in relation to commercialization of jewelry the name GOLD CHRIST as its establishment’s name.131
There is a likelihood of confusion between the claimant’s CTM CHRIST and the sign GOLD CHRIST used by defendant, therefore infringing the CTM. The reasons are set out below:132
1. The CTM is not well-known in Spain, but this is not relevant, since it is well-known to the German public. Moreover, the defendant’s business is located in San Bartolomé de Tirajana (Spain), which is frequently visited by German tourists.
2. Although there is no absolute identity between the signs due to the addition of the word GOLD (and therefore, Art. 9(1)(a) is not applicable), this extra element (which is descriptive of these type of products and which is not unknown to the average Spanish consumer) provides no distinctiveness at all. The defendant’s sign entirely includes the claimant’s mark, where the dominant element is CHRIST. This is the word that the public retains in its overall impression of the mark, since generally the public will not consider that a descriptive element in a complex mark is the distinctive and dominant element in the overall impression left by the mark.133 Phonetically they are also similar, since the principal element is identical, causing visual and conceptual similarity as well.
3. The services are identical.
4. The public might believe that the jewelry marketed by defendant come from the claimant, or that both undertakings are economically-linked.
5. The relevant average consumer is the European public in general, since the products are not targeted at a luxury market nor are of very high prices.
131 Christ Juweliere und Uhrmacher Seit 1863 GMBG v. Ramesh Jeswani Jeswani and Gold Kramer SL (02 February 2007), at 6.
132 Christ Juweliere, supra note 131, at 8 – 9.
133 T-171/03, New Look/OAMI – Naulover, ECR II-34712004
In sum, from the eleven Spanish cases analyzed, the Court always considered the similarity of the marks and goods or services. When assessing the degree of similarity between the marks, the Spanish Community trade mark Courts assessed the phonetic and conceptual similarity, and also took into account the dominant elements of the marks.
When the dominant elements are identical, there is similarity of marks. Moreover, in the case of complex (mixed) marks, the Courts considered that the phonetic and denominative similarities are decisive, not the visual similarity, because things are asked by their names. This means that special emphasis was put on the phonetic and denominative similarities more than on the visual similarity between the marks. This way of assessing the similarity of the marks was actually developed by the Spanish Court itself.
Moreover, in all cases the Spanish Courts analyzed the association that the public might make between the two marks. Emphasis was also put on the degree of attention of the relevant average consumer and the distinctiveness of the senior mark. However, the degree of distinctiveness of the senior mark was analyzed in only about sixty percent of the eleven cases.
From the above observations we can see that the Spanish courts were not entirely consistent with the view of the seventh recital of the CTMR and of the case law of the ECJ, which state that the appreciation of a likelihood of confusion depends on numerous elements but, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified. Not all of the eleven cases analyzed assessed the distinctive character of the senior mark.
Furthermore, the Spanish Community trade mark Courts considered in only one of the cases analyzed whether there were actual incidences of actual confusion and whether the defendant acted in bad faith.