Factual Background

SOCIEDAD ESTATAL LOTERÍAS Y APUESTAS DEL ESTADO, S.M.E, S.A, the plaintiff, is the proprietor of a series of national and European trade marks consisting of “LOTERÍAS”, “ADMINISTRACIÓN DE LOTERIA” and “LOTERÍAS Y APUESTAS DEL ESTADO”.

On 4 May 2020, the SPTO issued a decision dismissing the appeal lodged by the plaintiff against the decision of 10 February 2020, which granted trade mark no. 4013005 “LA TIENDA DEL LOTERO”.

The appellant filed a contentious-administrative appeal against that decision, requesting that registration be refused, on the grounds that the trade mark was contrary to the reputation of the trade marks “LOTERÍAS” and “ADMINISTRACIÓN DE LOTERÍA” of the plaintiff, that it was misleading, that the relative prohibition of Article 6.1.b) of the LM was met, that there was identity of application and, finally, that there was a likelihood of confusion and association.

That appeal having been dismissed, the appellant decided to bring an administrative appeal before the High Court of Justice of Madrid.

The contested decision

The contested decision considered that the absolute prohibition of registration under Article 5(1)(g) of the LM did not apply, because the trade mark “LA TIENDA DEL LOTERO” was not misleading, since it was made up of a series of sufficiently distinctive and differentiated word and graphic elements.

Likewise, it also stated that as regards to the relative prohibition of article 6.1.b) of the LM, after comparing the conflicting signs, there were sufficient overall differences, both verbal and graphic, and that, with regards to the conceptual dimension, they also evoked differentiated concepts.

Finally, with regards to the application relationship, the Board decided that, although there were similarities in relation to the nature, purpose, method of use or addressees, considering the differences in the graphic-denominative set of the opposing marks, and despite the relationship in their respective fields of application, their coexistence on the market did not give rise to a likelihood of confusion on the market.

Ruling of the High Court of Justice

On the prohibition relating to Article 6(1)(b) of the Trade Mark Spanish Law (LM)

Firstly, the Court, starting from the legal concept of trade mark offered by the Trade Mark Law and following the same line as the contested decision, considered that the prohibition in Article 6.1.b) of the LM did not apply, since the trade mark “LA TIENDA DEL LOTERO” did not evoke the trade marks “LOTERÍAS” and “APUESTAS DEL ESTADO”. Thus, the word “LOTERO”, added to “LA TIENDA DE”, suggested the existence of sufficient word, phonetic and conceptual differences. Moreover, apart from the word differences, the Board also found graphic differences which, in fact, made it difficult to find a likelihood of confusion.

For these reasons, the Court agreed with the SPTO in understanding that there were sufficient overall, word and graphic differences, since the mark applied for incorporated different words, “LA TIENDA DEL LOTERO”, with an integrated graphic-figurative composition, sufficiently distinctive and differentiated, where the term “LOTERO” was not exclusively claimable, making the sign applied for with the elements that made it up, a graphic-word set sufficiently differentiated from the opposing marks.

The reputation of the trademarks “LOTERÍAS” and “APUESTAS DEL ESTADO”.

To resolve this question, the High Court of Justice, in accordance with Article 8.1 of the LM and in accordance with the doctrine emanating from a Supreme Court Judgment of 6 July 2016, rec. 3712/2015 and the Supreme Court Judgment of 24 September 2018, rec. 5395/2017, started by stating that:

  • In the special protection of well-known or renowned registered trademarks, identity or similarity between the signs is required, but similarity between goods or services is not required, and a connection is required;
  • The enhanced protection of the well-known mark applies not only when there is a likelihood of confusion or association, but also in those cases in which the applicant evokes, suggests, insinuates or recalls the obstructing mark in such a way that it can be presumed that unfair advantage is being taken of it;
  • The existence of such a link must be assessed globally, taking into account the totality of the relevant factors in each case.

In such factors, it also held that account must be taken of: “the degree of similarity between the conflicting marks; the nature of the goods or services for which the conflicting marks are registered, including the degree of proximity or distinctiveness of the goods or services, as well as the relevant public; the strength of the earlier mark’s reputation; the strength of the earlier mark’s distinctive character, inherent in or acquired through use; or the existence of a likelihood of confusion on the part of the public”.

In accordance with that case-law, the Court did not consider that there was identity or similarity between the signs indicating a connection between the goods or services covered by the mark and evoking in the average consumer a link, legal or economic, between the marks, since, in fact, the signs were not identical or similar, with the graphic word combination ‘LA TIENDA DEL LOTERO’ there was no finding of unfair advantage being taken of the trademarks LOTERÍAS, ADMINISTRACIÓN DE LOTERÍA Y LOTERÍAS Y APUESTAS DEL ESTADO, since the average consumer of the services for which the trade mark is applied for could clearly differentiate between those covered by the contested trade mark and those covered by the opposing trademarks.

In view of the above, the High Court of Justice dismissed the contentious-administrative appeal brought by SOCIEDAD ESTATAL LOTERÍAS Y APUESTAS DEL ESTADO, S.M.E, S.A., upholding the contested administrative decision, as well as imposing the costs of the proceedings on the appellant.

ECLI:EN:TSJM:2022:1132 of 11 February 2022