Introduction

On 17 July 2020 the Alicante Commercial Court 1, acting as the European Union Trademark (EUTM) Court 1, granted an ex parte preliminary injunction, which had been filed by the German association Tüv Markenverbund, EV (TÜV) against Tuv-World ECC Certification Service, SL (Tuv-World) for infringement of its EUTM for the distinctive sign TÜV.

The court considered that the necessary requirements to adopt such exceptional measures, with effect throughout the European Union, had been met, since Tuv-World had used a distinctive sign similar to the plaintiff's well-known TÜV trademark to issue European conformity certificates for respiratory protection face masks.

Facts

The German companies TÜV, linked to the plaintiff, are world leaders in the provision of technical testing and inspections and the certification services sector.

The plaintiff, an association created by the parent companies TÜV to manage and protect the TÜV trademarks, is the owner, among others, of the well-known EUTM 013292081 TÜV wordmark for services in Classes 35 and 42, which includes:

  • technical testing;
  • authentication and quality control services;
  • technical control and inspection services; and
  • certification services.

The defendant is a company established in 2019 which issues product conformity certificates.

In its request for a preliminary injunction, the plaintiff proved that said company was issuing European conformity certificates for respiratory protection face masks, including the FFP2 and N95 categories, using the distinctive sign TUV-WORLD, which was practically identical to the well-known TÜV trademark.

In addition, TÜV submitted evidence that such conformity certificates:

  • had been issued to Chinese manufacturers of face masks for the EU market; and
  • did not meet the basic standards of conformity required by EU regulations, with the risks to public health that this entails in the current context of the COVID-19 pandemic.

Further, the plaintiff proved that the conflicting sign TUV-WORLD was also being used in the defendant's company name and domain name 'www.tuv-world.es', used by the defendant to promote its services on the Internet.

Therefore, TÜV requested the court to order immediately (with preliminary effects) and before the defendant was heard:

  • the cessation of all acts of exploitation, including but not limited to offering, promoting and providing verification, testing, inspection and certification services, making use, by whatever means, of the infringing sign TUV-WORLD and any other signs infringing the plaintiff's TÜV trademark;
  • the prohibition to issue certificates of conformity, given that these were being issued under the defendant's company name, which infringed the plaintiff's exclusive rights;
  • that the defendant provided the identity of clients for whose products the controversial certificates of European conformity were issued; and
  • the defendant to address all mentioned clients, informing them that the validity of such certificates has been revoked with immediate effect.

Decision

The EUTM Court 1 fully granted TÜV's ex parte preliminary injunction request after verifying that all of the necessary requirements for its adoption had been met.

Thus, the court found that the fumus boni iuris (apparent arguments) requirement applied, as it had been proven that:

  • TÜV is the owner of the EUTM 013292081 TÜV, which is in force;
  • the registered trademark had acquired a well-known character in the market;
  • Tuv-World used a sign to identify its services, identical to those designated with the plaintiff's trademark, that reproduced said trademark by adding a descriptive and geographical term which, in view of the similarity between the signs and the identity between in the services, did not initially avoid the infringement;
  • for the same reasons, the defendant's domain and company name were found to be initially infringing;
  • the defendant used the plaintiff's sign to give the impression that it had the certifications required under EU regulations and that they were issued by an entity that is generally known to be entitled to issue such certifications; and
  • with this behaviour, the defendant not only took advantage of the plaintiff's trademark's reputation, but may have damaged said reputation, because it was associated with respiratory protection face masks that did not comply with EU regulations on the certification of European conformity in the context of the COVID-19 pandemic.

Further, the EUTM Court 1 also found that the periculum in mora (danger in delay) requirement had been met since, in accordance with EUTM Court of Appeal doctrine, as long as it is established that an infringement has been committed, this requirement is justified, as the preliminary injunction prevents the continuation of the effects derived from the infringement.

The court added that if the measures were not adopted, the plaintiff's rights may be harmed, especially as a result of the current COVID-19 pandemic.

Likewise, the court considered that the preliminary injunction for cessation of the infringing activity and its effects, avoiding the continuation of the trademark infringements reported in the main proceedings, was adequate to guarantee an eventual condemnatory judgment.

Finally, the court added that it was impossible to assert that another less onerous measure had made the precautionary measure proportional, especially when the defendant had ignored the plaintiff's claims.

The court found that €10,000 was sufficient to cover the possible damages that could have been caused to the defendant entity in the event that the main claim was not granted.

Comment

On the basis of the above, the court preliminarily ordered (with effect throughout the European Union):

  • the provisional cessation of any act of exploitation, including but not limited to, the offering, promotion and provision of verification, testing, inspection and certification services, making use, by any means, of the infringing TUV-WORLD sign, as well as any other signs infringing the plaintiff's EUTM TÜV;
  • the provisional prohibition of the issuance of certificates of conformity, given that they were issued under the defendant's corporate name, which in itself infringed the plaintiff's exclusive rights;
  • the defendant to provide the identity of all companies or clients for which it issued the infringing European certificates of conformity; and
  • the defendant to contact every one of those natural or legal persons, informing them that the validity of the certificates issued up to that date has been revoked with immediate effect.