When courts are composed of several members, decisions are made by a majority. Where a member does not agree with the rest, the Spanish procedural law allows that this can be raised in the Judgment through a dissenting opinion ("voto particular"). Normally dissenting opinions attract as much attention as the judgment itself because, among other reasons, they may reveal possible weaknesses of the latter.
The dissenting opinion of Judge Sancho Gargallo in Case Tendencias Ferrera, SL against El Corte Inglés (Supreme Court Decision no. 355/2012 of 20 January 2013, RJ 2013 \ 1822), deals with the thorny situation whether the existence of likelihood of confusion between two marks can be brought, after a first instance and appeal judgments, to the Supreme Court since this can only rule on points of law. It is a principle reiterated in several judgments that the issue of likelihood of confusion can be reviewed by the Supreme Court only if the trial court did not implement the criteria set by the Court of Justice of the European Union on the interpretation of the applicable regulations or by the Supreme Court (e.g. Judgment 414/2011, of June 22 [RJ 2011, 4733]).
However, that principle is not a door wide open to appeal before the Supreme Court and is in practice applied very much restrictively. In this case, as in many others, the Supreme Court limited its review to verify that the trial court (the Audiencia Provincial de Alicante, sitting as the Community Trademark and Community Designs Appellate Court in Spain) had justified its decision on the criteria of the CJEU and the Supreme Court’s (not different than the CJEU’s). As it had been so, the Supreme Court dismissed the appeal and mentioned that the issue was limited then to a pure issue of fact that is not revisable on appeal by the Supreme Court.
This issue of fact was whether the mark ZENDRA used by El Corte Ingles for women’s wear in Class 25 was incompatible with the prior Community Trademark of Tendencias Ferrera SL, ZEDDRA for the same goods. The Juzgado de lo Mercantil of Alicante (Community Trademark and Community Designs first instance Court) had thought so, but the Appellate Court of Alicante reversed the decision and held that the marks could coexist in the market as there was no likelihood of confusion. The Supreme Court (rather most of its members) confirmed the judgment of the Appellate Court.
But the Judge Sancho Gargallo, dissenting from the opinion of the majority, argued that despite being properly addressed, the criteria of likelihood of confusion had not been applied correctly, thus opening the case for a fresh review. In this case, according to the Judge, the Appellate Court ignored that the signs must have been compared as a whole, so that the mere fact that the letter N as in ZENDRA (defendant) was not to be found in ZEDDRA (claimant) could not avoid the existence of likelihood of confusion. He argued further that, when comparing marks in the field of women’s wear, the visual aspect prevails because during the process -- which can be long -- of examining and trying on the garment, the consumer in question has several opportunities to see the label.
So, will this dissenting opinion provide with any comfort to Tendencias Ferrera, SL? Probably not, but for avid lawyers that will represent a precious gift.