On 10 February 2025, the Supreme Court handed down Judgment 205/2025, in which it assessed the likelihood of confusion in relation to a family of trade marks whose dominant element was of limited distinctive character, concluding that, due to the extensive use made of them, this family of trade marks had acquired a level of notoriety capable of generating a risk of confusion for the average consumer.
Background and relief sought
The judgment examines a case in which the claimants are two companies owning nine trade marks, all of them associated with two outlet shopping centres identified as La Roca Village and Las Rozas Village. All the marks are composed of two elements with limited distinctiveness: (i) a geographical reference to the location of the commercial activity and (ii) a generic concept such as Village.
The two claimants sought the invalidity of the defendant’s mark, T Torre Village, corresponding to an outlet shopping destination located in a different city (Zaragoza) and held by a different proprietor.
The judgment addresses each of the grounds raised by the appellant, but the resolution of the dispute essentially focuses on two issues: (i) whether a family of trade marks exists and (ii) whether there is a likelihood of confusion.
Family of trade marks: on the possibility of constituting a family of trade marks by “intensity of use”
The appellant challenged the judgment handed down by the Court of Appeal on the basis that it was not possible to attribute the status of a family of trade marks to the nine different signs related to the claimants’ two marks. The appellant contended that such a conclusion contradicted the case law established in the judgment of the Court of Justice of the European Union of 13 September 2007 (C-234/06 Il Ponte Finanziaria SpA), which required the existence of more than two trade marks in order to establish a family of marks.
However, the Court held that in this case: (i) there are not nine different signs, but rather nine marks grouped under two denominations, and (ii) what matters is not the number of marks but the outcome of the confusion analysis in respect of those that exist.
The Court noted that the claimants’ trade marks contain a common and predominant denominative element—Village—together with an additional reference to the geographical location of the shopping centres in question, used as distinctive signs: “La Roca” and “Las Rozas”.
What is peculiar in this matter is that the likelihood of confusion is assessed based on public recognition of these two signs.
The judgment finds that the high volume of visitors to the shopping centres and the sufficient degree of public awareness may lead to the conclusion that the emergence of another outlet shopping centre of similar characteristics in a different city, identified with the Village sign, may induce the consumer to believe that the new centre is linked to the existing two.
The relevance of the notoriety of use of a trade mark formed by a sign composed of two generic elements unrelated to the activity carried out when assessing the likelihood of confusion
Without prejudice to the specific objections raised on this point, the appellant essentially argued that it was not possible to find a likelihood of confusion between marks that commonly use a generic term unrelated to the specific activity undertaken, and which, in any event, had only acquired significance within Spanish territory.
The judgment dismisses all such grounds, acknowledging the content of the judgments of the Court of Justice of the European Union cited, and noting that although case law generally holds that there can be no likelihood of confusion between marks that share a generic element, in this case attention must be paid to another, more relevant issue for the purposes of assessing likelihood of confusion—namely, the considerable notoriety achieved by the trade marks identifying the La Roca Village and Las Rozas Village outlet centres in Spanish territory.
This argument is based on the doctrine of the Court of Justice of the European Union set out in its judgment of 15 October 2015 (C-270/13), in which the Court required the analysis of likelihood of confusion in relation to a family of marks sharing characteristics with the contested mark.
Following that analysis, the Court concluded that in this case, the average consumer, “reasonably well informed, observant and circumspect”, may believe that this third shopping centre is associated with the other two.
Accordingly, the judgment concludes that a distinctive sign such as “La Torre Village”, used to designate an outlet shopping centre in a different location, gives rise to a likelihood of confusion regarding its business origin.
As a result, the Civil Chamber of the Supreme Court accepts that the claimants’ trade marks, which follow a structure composed of two elements of limited distinctiveness (a geographical location and the term Village), may be subject to a likelihood of confusion in relation to business origin with another shopping centre that makes use of the same elements and operates in the same field, in light of the notoriety of their use and the perception of the average consumer, even where such recognition exists in only one territory within the European Union.
This situation implies not only that a generic term may acquire distinctiveness as part of a trade mark, but also that its use—following the same structure adopted by the earlier two marks—may give rise to a likelihood of confusion among average consumers, where that confusion entails a mere perception of business association between the proprietors of the marks.
In this way, once the judgment and the doctrine of the Court of Justice of the European Union have been examined, this ruling opens up a particular line of reasoning whereby the use of generic elements within a simple structure may constitute a family of trade marks which, when used by a third party for the same services, may lead to a likelihood of confusion for the average consumer if that structure has gained notoriety in a given territory.
