López de Haro vs López de Heredia and news regarding the “Wavy Baby” case

LÓPEZ DE HARO- LÓPEZ DE HEREDIA

The company Vintae Luxury Wine Specialists, S.L.U., filed an application before the EUIPO, to register as a EUTM the figurative mark with word elements “López de Haro” for “wine” (class 33 of the Nice Agreement). 

"López de Heredia" opposed this registration, pursuant to article 8.1.b) EUTMR (likelihood of confusion among the general public), on the basis of the following earlier trade marks: the EUTM word mark “López de Heredia”, which was registered for goods in class 33 (wine) and a national Spanish figurative mark, also registered for wines in class 33. 

First the opposition division, and then the Boards of Appeal of the EUIPO (BoA), appreciated likelihood of confusion between the signs and the goods at stake. When assessing the likelihood of confusion, the Court stated the existence of a medium level of visual and phonetic similarity and a high level of conceptual similarity between the marks at stake. In addition to this, the goods designated were identical. 

Vintae Luxury Wine lodged an appeal against this decision before the General Court (GC). 

With regard to the assessment of the likelihood of confusion, the Court reminded that it must be assessed globally, based on the relevant public’s perception of the signs, taking into account the different elements (visual, phonetical, conceptual) from the comparison of the signs and the similarity between the goods. In this case, the GC upheld the BoA’s decision and confirmed the existence of a medium level of visual and phonetic similarity and a high level of conceptual similarity between both signs. 

The GC highlighted the prevalence of the phonetical similarity as regards wines, as it is likely that consumers ask for these products orally and in noisy places (like pubs or restaurants), meaning that increases the risk of confusion. 

In addition to this, the Court stated that the word element "López" had the greatest impact or was predominant for a large part of the relevant non-Spanish speaking public in the European Union. Moreover, it was likely for the non-Spanish relevant public to associate the surname “López”, present in the two brands in conflict, with persons belonging to the same family of winegrowers who market their wines under their own name. This entailed a likelihood of confusion, in particular a likelihood of association, between the signs at stake.  

Consequently, there were enough factors for the Court to consider the existence of likelihood of confusion. Hence, the Court dismissed the appeal and concluded that the trade mark sought could not be registered.

PRELIMINARY INJUNCTION IN "WAVY BABY" CASE 

Our readers might remember that in our last blog post we talked about the lawsuit filed by Vans against the company MSCHF regarding the “Wavy Baby” sneakers. Vans considered that the “Wavy Baby” sneakers were allegedly infringing their iconic “Old Skool” shoes. 

For this reason, Vans requested the Court to issue a preliminary injunction in order to prevent MSCHF from selling the “Wavy Baby”, as this practice could be harmful to Vans. 

Earlier this week, the Court upheld Vans' claims and issued a preliminary injunction, stating that due to the visual similarities with the “Old Skool”, MSCHF has to refrain from advertising and marketing their “Wavy Baby”, and must cancel the pending orders, until a final judgement is delivered.  

From its side, MSCHF holds that the “Wavy Baby” are just a parody of the “Old Skool” shoes and that therefore, they are protected under the First Amendment right to artistic expression. Even though, the judge considered that the sneakers did not meet the requirements to be considered as a parody of the “Old Skool”.

We will keep you posted on the final ruling!