The Hijos de Rivera beer company has lost the last of the legal battles undertaken to date with the “Estrella” brand as the protagonist, since the Superior Court of Justice (TSJ) has dismissed its claim and has authorized an oil group from Granada the use of teaching.
The ruling, to which Efeagro has had access, confirms the resolution issued by the Spanish Patent and Trademark Office and is the latest in a series of cases that have come to court to determine whether the use of “Star” by other companies other than the Hijos de Rivera and Damm breweries conforms to the law or not.
The most recent ruling deals with the appeal filed by Hijos de Rivera (owner of Estrella Galicia) against the Hottos group from Granada, which markets olive oil under the name Estrella Andaluza.
In this case, the court recalls that to prevent the registration of an ensign there must be a phonetic similarity, but also that the services and products involved belong to the same category, something that does not happen in this case when dealing with beer and oil.
However, the legislation includes an exception for signs classified as well-known, to prevent companies that have nothing to do with taking advantage of the prestige of better-known brands by selling other products but associating themselves with the same name.
Although Estrella Galicia is a “renowned” brand, the TSJ emphasizes that it is only in the beer sector, since “there are other brands that contain the Estrella name and are notorious in other areas, such as finance or insurance.” “.
“The notoriety enjoyed by the Estrella Galicia brand in the beer sector cannot be extended to the oil sector,” concludes the ruling, which also imposes a fine of 1,500 euros on Hijos de Rivera for legal costs.
Opinion opposed to that of Estrella de Madrid
The ruling recalls another similar case resolved in 2018, when the Supreme Court agreed with both the Galician brewery and the Catalan Damm in their confrontation with a third company that intended to register the ensena “
In this case, the court agreed with Hijos de Rivera (owners of brands such as Estrella Especial, Estrella Extra, Estrella Pilsen and Estrella Galicia) and Damm (Estrella Levante, Estrella Dorada, Estrella del Sur, Estrella Roja) for considering that if there was a risk of confusion.
“The brands have a common element, the term Estrella, which is constituted as a distinctive element of the same to identify a category of beers that enjoy a reputation among consumers, so the inclusion of that same term in the applicant brand evokes the pre-existing ones”, determines the sentence.
In fact, he adds that accompanying the ensign with “from Madrid” does not imply “a differentiating element that dissipates any risk of association or connection with well-known brands”, since Hijos de Rivera and Damm already sell beers accompanied by words “of a geographical nature or others”.
More cases
However, in January 2021, Damm saw how the TSJ dropped its appeal against the inscription of the ensign “The blonde craft beer for the people of Getafe”, in this case due to the similarity in the graphic part, which in his opinion they were too similar to the ones he uses for his Star range.
Specifically, the Catalan group was protesting the use of a five-pointed star on the product’s label, although the judges rejected their claim for not finding a risk of confusion among consumers by having such different names.
