Value Retail Barcelona S.L. and Value Retail Madrid S.L. brought an action before the Trademark Court of the European Union against the entities Iberebro S.A. and Impacta Publicidad y Comunicaciones S.L. The claim sought the invalidity of the trademark ‘T Torre Village’ and the signs Torre Village designating management and operation services of shopping centres (class 35), on the grounds that it infringed the exclusive rights held by the plaintiffs in relation to the shopping centres La Roca Village and Las Rozas Village.

The defendant filed a response and a counterclaim requesting the court to declare the plaintiff’s trade marks invalid on the grounds of non-use. However, the claim filed by Value Retail Barcelona S.L. and Value Retail Madrid S.L.

was upheld in its entirety, declaring the Spanish trade mark M3545901 ‘T Torre Village’ to be invalid on the grounds of a likelihood of confusion with the plaintiff’s trade marks, and the counterclaim was dismissed.

Ibero S.A. filed an appeal against the above mentioned decision, but it was dismissed. Subsequently, the appellant brought an extraordinary appeal for breach of procedure together with an appeal in cassation.

The extraordinary appeal, was based on the grounds of an unreasonable assessment of the evidence of the distinctiveness regarding the term ‘village’ and the lack of risk of confusion, as well as the exceeding of the court’s powers by considering the acquisition of distinctiveness of the term Village, although the plaintiff never substantiated this issue.

The grounds of the appeal in cassation were based on the infringement of European case-law, on the following grounds:

  • Erroneous assessment on the existence of a family of trademarks whose common denominator is the particle ‘Village’, since only two trademarks incorporating the mentioned element are identified, whereas the doctrine requires more than two in order for it to be assessed.
  • Erroneous assessment that the mere presence of the word ‘Village’ as the sole common denominator is capable of identifying a family of marks.
  • Finding the term ‘Village’ to be distinctive on the basis of intensive use, despite having concluded that it is a generic and descriptive term for services in Class 35.
  • To uphold the acquired distinctiveness of the marks whose use had to be proven for all of the EU States Members, and was only proven for the Spanish State.
  • Declaring the existence of the likelihood of confusion of the marks despite the fact that the dominant elements are different and the only aspects in which they coincide are generic.

The Supreme Court rejects the grounds of the extraordinary appeal on the basis of procedural infringement, arguing that the appeal raises substantive issues which do not fall within the jurisdiction of this court. It also states that the assessment of distinctiveness is the result of the analysis regarding the degree of distinctiveness between the conflicted  signs, therefore no excess of jurisdiction can be observed.

Regarding the grounds of appeal in cassation, the Spanish Supreme Court ruled that the applicants’ trade marks constitute a family of trade marks. Although it is true that the 9 trademarks invoked could be gathered into two large groups (Las Rozas Village and La Roca Village), they are in fact 9 different trademarks, the use of which has been proved. All of them are formed by a common (‘Village’) in conjunction with a geographical reference. The plaintiff’s trade marks are sufficiently well known to the extent that the presence of another shopping centre with the same characteristics identified by the sign La Torre Village could lead the consumer to believe that it comes from the same business origin.

The use of a trade mark must be proved in the entirety of the territories of the Union when the inherent distinctiveness of the mark is being examined in order to assess its validity. In this case, the distinctiveness being assessed is the one acquired through intensive use. According to the doctrine of the CJEU, the distinctiveness acquired through intensive use can be assessed by the public of a specific EU Member State, as a result of prolonged use in that particular territory. The word ‘Village’ has a weak distinctive character to identify a shopping centre, but the concurrence of the word ‘Village’ with a geographical location, and the intensive use of the signs, has given the plaintiffs’ trademarks a  well-known reputation in Spain.

The appellant’s allegations by which it is claimed that the mere concurrence of the word ‘village’ is not capable of identifying a family of trade marks is rejected by this court as it is a material issue. However, the Court considers that, in view of the reputation acquired by the plaintiffs’ trademarks, the sign La Torre Village creates a high risk of confusion regarding the business origin of the shopping center The case law of the CJEU considers that in order to assess a likelihood of confusion regarding a trademarks family, it must be observed that the relevant public could mistakenly believe that an independent trademark could belong to the same family. This requires for the trademark to contain certain characteristics which may suggest its association with the trademark’s family.

In the present case, the plaintiffs’ trademarks have the following structure, consisting of a geographical location, preceded by a particular article, and followed by the word “Village”. The sign used by the defendant, La Torre Village, reflects this structure, as the word “Village” also appears at the end, and is preceded by “La Torre”, which, although it is not a geographical location, is related to it to some extent.

The CJEU understands that when the conflicted signs coincide in an element of low distinctiveness or descriptive nature regarding their goods and services, the global assessment of likelihood of confusion leads to the conclusion that it can not be perceived. However, this does not exclude the possibility that this undistinctive element may have acquired notoriety through use, thereby favouring the assessment of the likelihood of confusion.Consequently, although the names La Roca Village and Las Rozas Village are made up of two elements of weak distinctive character, the use of these trademarks has given them a strong distinctive character due to their reputation.

In view of the submitted arguments, the extraordinary appeal for procedural infringement and cassation are dismissed, and the appellant is ordered to pay the costs of the procedure.

Judgment of the Spanish Supreme Court, case number 571/2025 of 10 February 2025