The European Union Court Court, in Judgment 101/2021, of July 9, which is not firm, declares that the use of the Mercedes-Benz brand by the Mercedes Sotogrande group constitutes an infraction of the brand rights ofthe mercantile Daimler Ag and condemns the commercial to cease in the use of the badges and to compensate the plaintiff.
The establishment of sale of vehicles against which the demand was directed used the distinctive Mercedes Sotogrande group with the emblem of the three -pointed star, and in its advertising used a graphic with the GMS letters identical to the Daimler's AMG bad.
The plaintiff claimed that the terms Grupo Mercedes Sotogrande and the use of these badges transmit a misleading message that the establishment is a dealership authorized by the Mercedes-Benz manufacturer, when it is not so.
In a similar procedure, the Mercedes Costa Sol establishment was recently condemned to cease to use Daimler's brands and eliminate the term ‘Mercedes’ from its denomination for not being authorized by the German company.
The judgment that has now been known confirms the renowned character of the Mercedes-Benz brands and the three-pointed star, and considers that the defendants are unduly taking advantage of that renown (parasitism or 'free riding'), at the same time as withHis behavior are diluting the image of prestige and quality of brands.
It applies, therefore, the protection granted to the brands renowned by article 9.2 c) of the European Union brand regulation.
The Spanish brand law recognizes the holders of the brand records the right to receive compensation equivalent to 1% of the business number carried out by the offender with the services or products marked illicitly when the existence of infraction is declared judicially.
The defendants declared a 2 2 business figure.057 million euros between 2015 and 2018, so Daimler requested in its demand 20.571 euros for damages that the judge has accepted to grant
Carlos Morán, Elzaburu partner.
According to Carlos Morán, Elzaburu's lawyer who has defended the interests of Daimler AG, "this sentence addresses the problem of automobile sales establishments and repair workshops that use a manufacturer brands without being part of its official network".
“Although the use of the brand of a third party is lawful when used exclusively to indicate the fate of a product or service, the European Union Court of Justice declared in its judgment of February 23, 1999 (matter C-63/1997, BMW case) that, in these cases, constitutes an infraction of the manufacturer's brand its use in such a way that it can give the consumer impression that the establishment belongs to the official distribution network or that there is a special relationship withthat manufacturer ".
“The Spanish courts have applied this doctrine repeatedly in this type of case.In that sense, this judgment is another example of the protection granted to the holders of car brands in these situations in these situations."
Brand monitoring
Offices such as Elzaburu offer many companies the monitoring of their brand in different scenarios to verify that there is no illicit use of third parties of the same.In this case it was Mercedes Benz who contacts Elzaburu so that from this dispatch litigation area this illegal use of the brand was stopped.
Morán clarifies that this seller in the southern zone of Sotogtrande had been following the track, “First we tried the extrajudicial claim, a previous step to seek an agreement and avoid the judicial route. Sin embargo, en este caso no avinieron a razones con lo cual interpusimos la demanda en diciembre del 2019 en los juzgados de marcas de la UE en Alicante, que es el lugar que fija la ley para estos asuntos".
This action is part of a campaign of Mercedes Benz itself and other manufacturers to claim establishments that are presented as official distributors or concessionaires when they are not. “De hecho, con una empresa de Marbella ganamos otro asunto parecido hace meses".
The ruling of the sentence declares that the use by the defendants of the Mercedes-Benz brand, the three-pointed star and the GMS graphic sign constitutes an infraction of the brand's rights of the mercantile Daimler Ag.
Therefore, they condemn them to cease the use of these badges and to withdraw from the market all the posters, labels and documents in which they appear, including the Internet, to modify the social denomination to eliminate the term Mercedes and to compensate the plaintiff with the1% of the business figure obtained with the unlawful products marked.
It also orders the cancellation of the Mercedes-Sotogrande domain name.com and the accounts on Facebook and Instagram of the Mercedes Sotogrande group, and condemns the defendants to the payment of the procedural costs.The sentence is not firm, it can be appealed in appeal.
Brand infraction, the key
Regarding the argument of the sentence, he explains that “the estimation of the claim in the sentence is relevant.It is indicated that the use of the brand of manufacturers in workshops and concessionaires is not illegal by itself. Lo que ocurre es que cuando ese uso se hace de tal manera que da la impresión que al consumidor que es un consumidor oficial, si hay infracción de marca".
Now the defendant has twenty days since the notification of the ruling to appeal. Son los únicos con competencia objetiva para conocer los temas de infracción de marcas de la propia UE".
That said, this expert indicates that “the second instance is the Provincial Court of Alicante, specifically the Eighth Section, as the Spanish Brand Court of the EU.That period of twenty business days, in this case as August is unusual for civil courts, the deadline ends in September. De todas formas, veremos si recurren ante una sentencia tan sólidamente argumentada".
For this advertiser jurist, tanned in a thousand judicial battles, the crux of the question of this type of matters is to prove that there is a palpable brand infraction.
In fact, from Elzaburu, graphic material and photographs of the facade, interior, of its advertising, as well as its website and account on social networks were provided to demonstrate that there was said brand infraction.
Carlos Morán explains that “the so -called brand violation is the order of the day. Es algo muy recurrente y se produce prácticamente en todos los sectores de la actividad económica en estos momentos".
In his opinion, “this is a typical assumption that affects the different manufacturers of the car sector with these false dealers or workshops that occur quite frequently. También el sector textil es proclive a que se detecten infracciones marca, con productos casi idénticos".
For this lawyer, “the difference between brand infraction and piracy is clear.The first is pursued civilly while piracy has a clear criminal component at the judicial claim level. Se ve en las falsificaciones de marcas de ropa o productos de lujo".
Cree que habrá más casos relacionados con Mercedes Benz y su uso de la marca que tendrá que atender desde su firma jurídica Elzaburu, “pese a que este tipo de fallos judiciales pueden tener un efecto disuasorio estamos convencidos que tendremos que estar presente en otros conflictos que surjan en el futuro de esta índole".
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