The Court of First Instance of the EU on Tuesday dismissed in its entirety an appeal filed by the English Court to protect its Boomerang brand, which now has a free hand to be used by a third party as a banner of telecommunications services, training and entertainment. Boomerang is the sporting goods brand of the retail giant chaired by Isidoro Álvarez.
As reported by the Community Court on Tuesday, the English Court opposed the request made in 1999 to register the figurative sign Boomerang TV as a community trademark for telecommunications, training and entertainment services.
Application filed in 1999 with the Office for Harmonization of the Internal Market (OHIM), the Alicante-based agency in charge of ensuring the legal protection of trademarks throughout the EU. And it justified its opposition based on the fact that Boomerang already appeared in certain previous word and figurative marks, of which it considers itself the owner.
different products
The first defeat of El Corte Inglés came in the Opposition Division of the OHIM, which dismissed the claim. It declared that El Corte Inglés had not specified the list of the products and services that it had invoked, despite the fact that it had been requested. And he considered that the opposition was inadmissible.
It added that El Corte Inglés had not proven the existence of certain trademark registrations and, regarding the previous registrations whose existence El Corte Inglés had effectively proven, it considered that the previous trademarks covered products and services that did not present any similarity with those for which they were registered. registration of the Boomerang TV trademark was requested. Lastly, he considered that El Corte Inglés had not provided sufficient elements to demonstrate the reputation that it claimed for some of its previous brands.
The OHIM Board of Appeal confirmed that decision, so El Corte Inglés appealed to the EU Court of First Instance, where it has just been defeated again.
Community judges have recalled that their role is not to re-examine the circumstances in light of the evidence presented for the first time before them. Thus, it considers the new evidence presented by the plaintiff for the first time before the Court of First Instance to be inadmissible and excludes the proposal by El Corte Inglés to provide additional new evidence.
An unfounded opposition
Regarding the proof of the existence of certain prior registrations, the Court confirms the conclusion of the Board of Appeal of the OHIM and the Opposition Division that El Corte Inglés had not proven the existence of certain prior trademarks and that, in Consequently, their opposition was unfounded insofar as it was based on those rights.
Regarding the evidence of the existence of well-known trademarks in Spain, Ireland, Greece and the United Kingdom, the Court considers that the evidence provided by El Corte Inglés does not demonstrate that the disputed trademarks have been used or are even known or recognized in those countries.
Regarding the risk of confusion between BoomerangTV and the previous trademarks of El Corte Inglés, the Court of First Instance considers that the products and services differ by their nature, destination and use, and are not competitive or complementary in nature. According to the Court, the links defended by the distribution giant are too imprecise and random, thus confirming that there is no risk of confusion.