In Case T-543/12, Juan Candido Rubio Ferrer and Alberto Rubio Ferrer applied for the following CTM for the following goods in Class 31 “agricultural products, fruits, etc.”, and services in Class 35, including ”import and export services” and Class 39 “distribution and transportation services”.

The opponent Xavier Grau Ferrer filed an opposition on the basis of earlier Spanish TM and earlier CTM registered for goods and services in Classes 31, 32 and 39 including “agricultural products, fruits, drinks and fruit juices, etc”.

The Opposition Division rejected partly the opposition. Firstly the existence and validity of the earlier Spanish right (represented left) had not been filed on time. Secondly, genuine use of the earlier CTM (represented right) had been demonstrated only for “fresh fruits”. For the similar or identical goods, there is a likelihood of confusion due to the similarity of the signs.

Both applicants and opponent filed appeals. The Boards of Appeal confirmed that the validity of the earlier Spanish right had not been proved on time. On the other hand, it found that the evidence filed did not demonstrate use of the CTM as it was registered, and rejected the opposition.

The opponent filed an appeal before the General Court which annulled the contested decisions.

In the first place, the BoA had failed to state the reasons why it did not take into consideration additional evidence filed for the first time before it (discretionary power according to article 76 (2) CTMR), regarding the alleged validity of the earlier Spanish right (i.e.: extract from Sitadex database).

  In the second place, the General Court found that the evidence filed by the opponent, including invoices, representing the signs above, did demonstrate sufficient genuine use for the relevant period. The additional decorative elements such as “fruits from the Spanish vegetable gardens” (frutos de la huerta espanola” or “de la huerta a casa” (from the garden to home) did not alter the distinctive character of the registered sign. The case will be sent back to the Boards which must assess whether there is a likelihood of confusion between the signs.