“Estrella de Castilla applied for registration of its trademark with the EUIPO and it was opposed by Estrella Galicia. The opposition was upheld and Estrella Galicia files an appeal.
The Board of Appeal recognises the high reputation of the earlier mark Estrella Galicia in Spain. Despite limited graphic similarity, moderate phonetic similarity and high conceptual similarity, global similarity is found. Factors such as the nature of the goods, proximity, target public, reputation and distinctiveness contribute to establishing a link between the conflicting marks. This supports the existence of a link, highlighting the common reputation in Spain and the proximity of the products (ham – beer).
As regards the risk of taking unfair advantage of the reputation of the earlier mark, the Board confirms the decision that such a risk exists. Furthermore, the argument of use of the mark without just cause is rejected as no just cause for such use has been established base on prior use of a similar trademark Estrella de Castilla but with very small word elements.”
