Dominant graphic element makes the difference between BAHIANA(S) marks

The Madrid Court of Appeal has reversed in part and upheld in part a decision of the Commercial Court No 2 of Madrid in a case involving the trademark BAHIANA and the unregistered sign BAHIANAS LAS ORIGINALES on the one hand, and Sao Paulo Alpargatas SA’s HAVAIANAS marks on the other (Appeal 505/2010, July 8 2011).
Sao Paulo filed suit against Fashion Import SA and Secret Spot SL, requesting:
  • a declaration of invalidity of the Spanish trademark BAHIANA (Registration 2.510.629), which is owned by Fashion Import and covers goods in Class 25 of the Nice Classification

  • that Secret Spot be sentenced for infringing Sao Paulo’s word mark HAVAIANAS (Registration 2.341.905) and device mark HAVAIANAS (Registration 2.341.904), which cover goods in Class 25, by using the following unregistered sign:
Sao Paulo’s device mark is depicted below:

On May 6 2009 the Commercial Court No 2 of Madrid declared that:
  • the trademark BAHIANA (Registration 2.510.629) was invalid because there was a likelihood of confusion with Sao Paulo’s HAVAIANAS marks; and
  • use of the sign BAHIANAS LAS ORIGINALES by Secret Spot for the marketing of sandals infringed the HAVAIANAS marks.
Both Fashion Import and Secret Spot appealed.
The Madrid Court of Appeal reversed the decision insofar as the lower court had found that Fashion Import’s trademark was invalid, but upheld the decision insofar as it had found that Secret Spot infringed Sao Paulo’s trademarks.
With regard to the infringement issue, the Court of Appeal first held that the goods covered by Secret Spot’s unregistered sign BAHIANAS LAS ORIGINALES were identical to those covered by Sao Paulo’s HAVAIANAS marks.
Moreover, the court found that the marks were similar. In this respect, it referred to the decision of the EU General Court in São Paulo Alpargatas SA v OHIM (Case T-422/09), in which an application for the registration of a trademark identical to that used by Secret Spot had been opposed by Sao Paulo’s based on its HAVAIANAS mark.
The Court of Appeal held that the dominant elements of the marks were the words ‘Havaianas’ and ‘Bahianas’. Therefore, the court concluded that there were visual and phonetic similarities between the marks, as well as a certain level of conceptual similarity - although the terms ‘Havaianas’ and ‘Bahianas’ evoked different locations (Hawaii and the Bay Islands, respectively), they were both associated with the idea of faraway seaside resorts.
The presence of the term ‘Las Originales’ in the sign used by Secret Spot could not change this conclusion, due to its lack of distinctiveness, its position at the bottom of the sign and the type of characters used. Given the identity of the goods and the similarity of the marks, there was at least a likelihood of association between the marks.
With regard to the annulment of Fashion Import’s mark, the Court of Appeal disagreed with the lower court’s conclusion that BAHIANA was confusingly similar to the HAVAIANAS marks due to the similarities between their verbal elements, regardless of the graphic element of the BAHIANA mark.
The Court of Appeal declared that the BAHIANA mark was valid based of the following considerations:
  • A global assessment of the likelihood of confusion must be based on the overall impression conveyed by the marks, taking into account, in particular, their distinctive and dominant elements.
  • In Fashion Import’s BAHIANA mark (in contrast to Secret Spot’s unregistered sign BAHIANAS LAS ORIGINALES), the figurative element (which consisted of the "image of a black woman walking, wearing a full skirt and headscarf and carrying a basket of fruits on her head”)was dominant.
  • The phonetic and conceptual similarities between the marks were, in this case, offset by the presence of the figurative element, which prevented a likelihood of confusion or association between the marks.
The Court of Appeal thus disagreed with the decision of the Opposition Division of OHIM dated May 31 2011 in which the latter had refused to register a sign identical to the BAHIANA mark on the grounds that it was confusingly similar to the HAVAIANAS marks.

Like the Commercial Court No 2 of Madrid, the Opposition Division had considered that the verbal elements were dominant, and that the phonetic and conceptual similarities between the marks created a likelihood of association.
Antonia Torrente, Grau & Angulo, Barcelona

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