Barcelona court confirms that Tommy Hilfiger’s use of ‘TH’ is legitimate
- The owner of a mark including the element ‘TH’ sued Hilfiger Stores Spain for trademark infringement for its use of the sign ‘TH’; the defendant counterclaimed for the cancellation of the plaintiff’s mark for non-use
- The court ordered the partial revocation of the plaintiff’s mark, which remained valid only for “occasion hats” and “women’s formal party hats”
- The court found that there was no likelihood of confusion between the signs
By judgment of 4 December 2019, the Barcelona Commercial Court Number 6 dismissed the action for trademark infringement brought against Hilfiger Stores Spain SL (‘HSS’) and upheld the latter’s counterclaim. The court ordered the partial revocation for non-use of the plaintiff's Spanish trademark, registered for "clothing, footwear, hats" in Class 25, leaving it registered exclusively for "occasion hats" and "women's formal party hats".
The plaintiff was the owner of the Spanish trademark TH TOLENTINO HAUTE HATS SEVILLA (mixed), which consisted of the interlocking letters ‘TH’ with the word element ‘Tolentino Haute Hats Sevilla’ underneath, registered for the aforementioned goods in Class 25. The plaintiff brought an action for trademark infringement against HSS for its marketing of certain products (bags, wallets, ties and jewellery) bearing the sign 'TH' (the acronym of the name Tommy Hilfiger) together with other elements.
HSS denied the existence of trademark infringement and counterclaimed for the total cancellation of the plaintiff's trademark on the grounds that he was not using the mark as registered. Alternatively, and to the extent that the court found that the plaintiff’s trademark was indeed being used, HSS brought an action for partial cancellation of the trademark on the grounds that it was used exclusively for some of the goods for which it was registered, namely “women’s formal hats and occasion hats”.
Counterclaim for total/partial cancellation for non-use
Having reviewed the Spanish and Community case law on the requirements for genuine use of a trademark, the court examined the proof of use submitted by the plaintiff and considered that:
- the proof of use submitted in relation to women’s bags and wallets was irrelevant as a defence to the cancellation action, since the plaintiff’s trademark was not registered for that type of goods, but only for goods in Class 25;
- the evidence submitted by the plaintiff failed to prove the extent, place, time and duration of the actual and effective use of its registered trademark in relation to all the goods for which it is registered (order forms, invoices or delivery notes directly linked to the goods bearing the registered trademark were not provided, and many of the documents submitted were not dated or did not refer to the period of interest); and
- the trademark was used as registered for several elements linked to the marketing of the goods (eg, boxes, packaging, business cards and website), but only for the sub-category of “occasion hats” and “women’s formal hats for parties”.
The court therefore declared the partial cancellation of the plaintiff’s trademark in respect of “footwear, clothing and hats”, with the exception of “occasion hats” and “women’s formal hats for parties”.
Trademark infringement action
The court clarified that the examination of the goods was limited to those for which the plaintiff’s trademark remained valid and those identified by the defendant with the sign in question - that is, handbags, wallets and bags (Class 18), ties (Class 25) and jewellery (Class 14). Following the case law of the Court of Justice of the European Union, the court stated that the issue was whether there was identity or similarity between the signs and goods in question which would create a likelihood of confusion. The court held as follows:
- As far as the comparison of the goods was concerned, the court found that the goods were not identical and that “hats” and “jewellery” were not similar, since they are not competing or interchangeable goods. It considered, however, that there was a slight similarity between the plaintiff’s hats and the handbags and wallets marketed by the defendant, since they are aimed at the same sector of the public, and are displayed in similar spaces and with similar conditions of accessibility.
- As regards the comparison of the signs, the court pointed out that such comparison must be made between the plaintiff’s mark TH TOLENTINO HAUTE HATS SEVILLA, in its registered form, and the sign used by the defendant on the market, which consists of the interlocking letters ‘TH’, together with other elements. Contrary to the plaintiff’s allegations, the court found that the conflicting signs were not identical.
- The court also found that there was no likelihood of confusion between the signs at issue, since:
- in the plaintiff’s trademark, the dominant element is not the interlocking ‘TH’, but ‘Tolentino’, which has a strong distinctive character, and the expression ‘Haute Hats’ (the plaintiff had highlighted the term ‘Tolentino’, for example on his business cards and publications; according to the court, this was an acknowledgement that such sign fulfilled the function of identifying the business origin of his products);
- even if ‘TH’ was the dominant element of the plaintiff’s sign, an average consumer would remember it along with the other elements, especially ‘Tolentino’, which cannot be ignored; and
- on the defendant’s handbags and wallets, the sign ‘TH’ was placed together with the well-known brand name Tommy Hilfiger, which supported a finding of a lack of a likelihood of confusion.
The court sentenced the plaintiff to pay the costs of both the claim and the counterclaim.
This judgment is not final.
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