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24 December 2018
On 2 October 2018 the EU Trademark Court Number 1 of Alicante granted the interim injunction application filed by Xiaomi Inc against Blablatel Mobile SL for trademark infringement due to the parallel import of technological products from outside the European Economic Area.
China-based company Xiaomi is a world leader in the design, production and sale of mobile phones and electronic devices. In order to distinguish its products, Xiaomi owns the well-known Spanish, international and EU trademarks XIAOMI, MI, MIUI, MIBOX and REDMI, among others.
Blablatel, a Spanish company based in Asturias, is dedicated to the sale of mobile phones and technological accessories through franchises throughout Spain. Blablatel owned Spanish trademarks 3.638.080 (XIAOMI MIUI MOBILE INTERNET) and 3.639.146 (MI XIAOMI), which it applied for after Xiaomi had registered its trademarks.
As Blablatel's trademarks conflicted with Xiaomi's well-known prior marks, Xiaomi filed a cancellation and trademark infringement claim plus an interim injunction application against Blablatel.
In the same writ, Xiaomi applied for interim injunctions against Blablatel consisting of:
By order of 2 October 2018, the court upheld Xiaomi's arguments and granted the requested interim injunctions in their entirety.
In its decision, the EU Trademark Court Number 1 of Alicante considered that Xiaomi's interim injunction request complied with the requirement of the likelihood of success in the main case, as Blablatel's Spanish trademark applications had been made in bad faith. The court based this decision on the following arguments:
The court also considered that the need of urgent relief requirement had been complied with and thereby ignored the defendant's argument that the infringing conduct had already ceased. In this respect, the court held that Blablatel had not proved said cessation; therefore, the claim had to be rejected.
Bearing in mind that applications made in bad faith are invalid in accordance with Article 51 of the Spanish Trademark Act, the EU Trademark Court considered that it was appropriate to order Blablatel to cease the parallel import of products identified with Xiaomi's trademarks from outside the European Economic Area without Xiaomi's consent. Further, the court considered that the interim injunctions requested were necessary and proportional to ensure a possible favourable judgment for Xiaomi.
Considering the above, the EU Trademark Court of Alicante Number 1 granted the requested interim injunctions in their entirety and ordered Blablatel to comply with all of the measures requested by Xiaomi.
Blablatel has not appealed this decision and it is therefore final. Further, on 19 November 2018 the EU Trademark Court of Alicante Number 1 upheld the complaint in the main case and convicted Blablatel for trademark infringement.
This decision is notable, as it confirms that importing goods that were originally intended to be marketed outside the EEA without the trademark owner's consent constitutes trademark infringement.
For further information on this topic please contact Paula Gutiérrez at Grau & Angulo by telephone (+34 93 202 34 56) or email (firstname.lastname@example.org). The Grau & Angulo website can be accessed at www.ga-ip.com.
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