In 2017, the company Fresh Direct Spain S.L. launched an advertising campaign in Valencia to promote its khakis under the trademark KAKIESTRELLA (figurative). This advertising campaign consisted of posters on street furniture featuring images of several khakis and a smiling child holding a khaki, accompanied by the phrase ‘New persimmon khaki ready to eat’. Likewise, the khakis supplied by this company were sold in the Corte Inglés supermarket with a label identifying them as ‘Khakis Persimon bulk’.

 

In 2018, the Regulatory Council of the protected designation of origin Kaki Ribera del Xúquer (hereinafter, the Regulatory Council), together with various affiliated agricultural cooperatives, held various trademark registrations in the European Union and Spain under the name ‘Persimon’, some of which were granted to designate products in class 31 (‘khakis’) in accordance with the specifications of the Kaki Ribera del Xúquer protected designation of origin. For this reason, they filed a lawsuit against Fresh Direct Spain S.L., arguing that the use of the terms ‘Persimmon’ and ‘Persimon’ in the advertising campaign and on the labels constituted an act of unfair competition because it created a risk of association between the khakis commercialised by the plaintiffs and the defendant. The lawsuit also included acts of imitation and unfair exploitation of the commercial reputation of the trademarks owned by the Consell, therefore they demanded the cessation of the infringing conduct, together with a ban on the future use of the disputed terms, as well as a compensation for damages.

The claim was dismissed in its entirety at first instance, as the defendant could only be held responsible for the advertising campaign, rejecting liability for the placement of labels affixed to the khakis sold in the El Corte Inglés supermarket. Furthermore, it was considered that the Regulatory Council’s trademarks were not well known, and there was no risk of confusion among consumers, as the term “persimon” had been used to identify a product (a variety of khaki).

The previous judgment was appealed, and the Court upheld part of the appeal, understanding that the commercial labels belonged to the defendant, since the advertising poster featured the same label with identical composition. However, the defendant could not be held responsible for the description on the purchase receipt because it could obey the internal nomenclature of the ‘El Corte Inglés’ supermarket. However, the reputation of the Regulatory Council’s trademarks was not upheld. The Court reasoned that there was a risk of confusion, even though the disputed term was not being used as a trademark but as an identifier for a product variety, because the defendant’s trademark also appeared in the advertising campaign and on the labels alongside the term ‘persimmon’ in a very visible manner. Therefore, its use was contrary to fair practices and likely to confuse consumers regarding the company from which the product originates.

In response to the previous judgment, Fresh Direct Spain S.L. lodged an appeal, arguing that if the Persimon trademark lacks renown, the trademark protection cannot be sought for a term that is generic in nature as it refers to a variety of the product.

The Spanish Supreme Court concludes that the existence of a variety of khaki identified by the term ‘persimon’ has been proven. Given that in the advertising campaign the term ‘persimon’ is used within the phrase ‘PERSIMMON READY TO EAT’ in the same font and size, alongside images of various khakis of the Persimon variety, it is concluded that the phrase used identifies the product by referring to one of its characteristics, and therefore the practice is not considered to be contrary to fair trade. Furthermore, the Spanish Supreme Court understands that the label on the product unit may be perceived by the average consumer as an indication of the variety of khaki.

In conclusion, the appeal decision is annulled because the way in which the name Persimon appears, together with the defendant’s trademark, suggests that there is no intention to create a likelihood of confusion in relation to khakis of this variety with the plaintiff’s designation of origin, whose trademarks have been proven not to be renowned or well known. The name Persimon has little distinctiveness, so that others cannot be prevented from using the term to describe or identify this variety of khaki.

Decision of the Spanish Supreme Court 3162/2025 of July 4, 2025.