Background of the case

The entity CHAPTER 4 CORP. DBA SUPREME (hereinafter, CHAPTER), filed a request for provisional measures prior to the filing of an action for infringement of the well-known trademark SUPREME in Spain and for unfair competition. The plaintiff is the owner of 130 trademark applications and registrations in more than 52 countries around the world.

The defendant has a website and two stores, where products identical or very similar to those of the plaintiff under the SUPREME mark are being offered, taking unfair advantage of its reputation. In addition, the defendant has applied in bad faith for the trademark SUPREME SPAIN. The plaintiff has subsequently filed an application for a declaration of invalidity against it. In addition, it has been requested the provisional and immediate cease of promotional and marketing items which add the sign “SUPREME” or with any other sign that includes that term, be it in physical stores or through online platforms.

The request at first instance of provisional measures was rejected on the ground that there is no appearance of goodwill, since based on the body of evidence, it was not proved that the sign “SUPREME” was a well-known mark in Spain. The plaintiff has filed an appeal against such decision.

Decision of the Audiencia Provincial de Barcelona.

  • Grounds base on urgency and necessity.

The grounds of urgency and necessity enabling the provisional measures to be taken as a prior step to a lawsuit are duly met, since it has been proved that new shops were to be opened in order to increase the infringing activity during the summer campaign.

  • Appearance of good standing. The reputation of the SUPREME mark.

CHAPTER bases its claim on its notorious trademark SUPREME, which is not registered in Spain.

Although there are no physical stores of the subject mark, the items are sold through online stores, and it has been proved that the latter received a large number of visits from Spanish consumers. Secondly, it is provided with a demoscopic study on the notoriety of the mark which is deemed to be very relevant. Certificates from different associations are also provided, which give more credibility to the claims of non-registered trademark notoriety.

To sum up, this Court considers that “in addition to the widespread dissemination among the interested public, the great prestige and reputation enjoyed by the SUPREME trademark (qualitative aspect) cannot be ignored when judging and assessing the well-known nature of the trademark, and we consider this to be uncontroversial“.

  • Danger of delay

The different market models of the plaintiff and defendant have been decisive in determining that there is indeed a risk of ineffectiveness of the judgment: “not only has enormous confusion been generated in the market by the marketing of the same products with the SUPREME mark from different business sources, confusion which has been echoed by the media and social networks, but the defendant’s business model is in direct contravention of that of the plaintiff. CHAPTER’s products, with a high price, have as target a group of consumers with medium or high purchasing power. It presents itself as a cult brand and uses a marketing system far from mass sales, precisely to preserve the exclusive nature of its articles. The shortage of supply is an essential element in marketing, since the aim is to make the SUPREME article an object of desire. CHAPTER does not have physical stores in Spain, carrying out sales through the Internet and using social networks as a primary means of promotion. On the contrary, ELECHIM markets its products through its web and through establishments open to the public. The prices are much more reduced and the demand ensures great availability in the products it offers. The massive presence of SUPREME articles in the market, therefore, causes the plaintiff a damage that goes beyond the sales that could be deviated in favour of the defendant”.

In conclusion, this Board agrees on the provisional measures that were denied at first instance.

Order of the Audiencia Provincial de Barcelona (Civil), fifteenth section, AUTO no. 14/2020 dated January 24, 2020.