The Contentious Chamber of the Superior Court of Justice of Madrid has upheld an appeal by the Cabildo of Lanzarote against the registration of a brand of perfumery and cosmetic products with the name 'Agua de Lanzarote' in the Spanish Patent and Trademark Office.
In a ruling dated June 26, the Chamber concludes that the brands Lanzarote and Agua de Lanzarote offer "a very high level of similarity" from "a denominative and phonetic point of view" and therefore agrees to deny the registration of the brand 'Agua de Lanzarote'.
The registration of said brand was granted in July 2017 and, after that, the Cabildo filed an appeal considering that there were not enough differentiating elements between both denominations and that the brand 'Agua de Lanzarote' incurred "prohibitions" contemplated in the Trademark Law. However, it was dismissed in February 2018 by the Spanish Patent and Trademark Office considering that they did insert "sufficient differences", before which the first island institution formalized a lawsuit three months later before the Justice, which has now given it the reason.
"Risk of confusion" between both brands
"It is verified that the requested brand highlights the same element as the opposing brand 'Lanzarote', given that the words 'Agua de' applied to perfumery products is totally descriptive, as the appellant argues", points out the Contentious Chamber of the Superior Court of Justice of Madrid, which affirms that "a clear similarity of both brands is thus evidenced".
In addition, it points out that "to said denominative and phonetic similarity must be added the existing applicative identity between both". "It is true that both signs include a graphic, but it is no less true that they do not have or possess the necessary distinctive virtuality", it is pointed out in the ruling.
In this way, the Chamber considers that "a risk of confusion is noticed between the confronted signs in relation to the products protected by it" and consequently concludes that it follows that the name 'Agua de Lanzarote' incurs in "cause of prohibition" according to the Trademark Law.
Therefore, it declares the "nonconformity to law" of the resolutions issued by the Spanish Patent Office and agrees to deny the registration of the aforementioned brand "to protect the requested products and services". Likewise, it condemns the defendant to pay the costs "with a limit of 1,500 euros", although it indicates that an appeal may be filed against such a ruling.
