Can a well-known watch brand prevent the protection of another identical or similar trademark for other types of goods such as cosmetics? The possibility of consumers’ associating the goods of a particular trademark is greater when that mark is well-known. However, relying on the reputation of such trademarks for other goods is not always easy and needs to be analyzed case by case.

The principles governing the scope of protection of a trademark are territoriality and specialty. However, the boundaries of the principle of specialty become blurred when it comes to famous trademarks, since well-known marks enjoy stronger legal protection.

But does this mean that a famous mark can extend its status and prevent the registration of third parties’ trademarks for any goods or services? No. It is necessary to prove that when coming across the contested trademark, consumers would associate it with the earlier mark. That is, that they would establish a “mental link” between the marks even if they cover different goods.

Generally speaking, trademark offices are conservative when it comes to accepting the existence of such mental link. However, they are slowly starting to surrender to the reality of the market when it comes to products that, although theoretically distinct and with a different nature, share an affinity which in some sectors is sufficient for consumers to associate the marks. Relevant factors to find a similarity between the goods are the nature, purpose, method of use and distribution channels.

An example in the case of the Spanish Patents and Trademarks Office (OEPM), is the inability to grant the trademark CAMPOFRÍO for “alcoholic beverages” in class 33, due to its reputation. This same stance was taken by the EUIPO in the proceedings pitting the famous beer brand ESTRELLA GALICIA, against trademarks for foodstuffs such as ESTRELLA DE CASTILLA in classes 29 and 35 (opposition procedure B 3 078 542) and ESTRELLA DE MURCIA in classes 29, 30, 31, 39 (opposition proceeding B 2 948 472). In these cases, the European office concluded that “it is reasonable to assume that consumers who are familiar with the well-known trademark, when coming across the contested mark for goods and services related to the food industry, will immediately recall the earlier well-known mark and will associate it with the application, possibly believing it to be a mark derived from the earlier trademark”.

In the fashion and luxury goods industry, in the case of a conflict between marks that are not well known, the examiner’s position has traditionally been to consider jewelery and watches in class 14 to be different to clothing and footwear, since the nature and main purpose of these products are different. It was considered that the main function of articles of clothing is to dress the human body, whereas jewelery and certain categories of watches are for personal adornment, and even at times, that watches are instruments for telling the time. The same occurred with handbags in class 18. It was therefore held that they had different distribution channels, that they did not compete and that they did not complement each other.

However, the reality of the market is quite different, since companies are increasingly operating under the same brand in the clothing, footwear, jewelery, watch and accessories industries. Nonetheless, when establishing that connection they need to be marks of “successful designers (economically)”, as the decision by EUIPO’s Opposition Division held in proceeding B 3 113 689 “DON ALGODÓN v DON ALGODÓN”: “Although at present some fashion designers also sell products for decorative purposes and accessories such as glasses and jewelery, it is not common practice and only occurs in exceptional cases with some successful designers (economically)”.

Indeed, cases such as opposition proceeding B 3 137 885 “ROLEX v DROLEXO” at EUIPO, extended the reputation of the watch brand to goods in class 3 (cosmetics) and class 24 (textiles). The Opposition Division held that “it is undeniable that these products are often sold as luxury items of famous well-known designers and manufacturers. As the earlier mark is very well known, it can be held that consumers of luxury wristwatches will make a connection with the applicant’s body-care, as well as cosmetic products in class 3 (06/18/2009, R 770/2008 2 and R 826/2008 2, EMIDIO TUCCI (fig.) / EMILIO PUCCI (fig.), § 129; 27/09/2012, T 373/09, Emidio Tucci, EU:T:2012:500, § 66), and also the home decoration/lifestyle products, including fabrics in class 24”.

In this same decision, the Opposition Division categorically stated that, “taking into account the reality of the market, this is an area where functionality is not the exclusive concern of buyers, but rather aesthetics”, therefore establishing a strong connection between those goods.

Therefore, skirting around the edges of the principle of specialty is not as easy as it may seem for well-known brands. Slowly but surely case law supports the reality of the market insofar as industries that were considered to be diametrically opposed are concerned. The crucial factor is the ability to prove the association that would be established in consumers’ minds. The greater the fame of the mark in question, and the easier to prove the possible overlap in the commercial sectors, the greater the association.

Natalia Ruiz Gallegos

Garrigues IP Department