By Jaume Mourisco Ayuso, Intellectual Property Lawyer | Litigation Department

Despite being someone capable of filling stadiums and concerts, of putting her name at the top of the music scene, this has not been enough for the General Court, in case T-118/24, to uphold Rosalía’s claims regarding the trademark “Rozaliya jewelry for enlightenment”.

This entire process began in 2016, when the Bulgarian company Raphael Europe Ltd applied to the EUIPO for the trademark “Rozaliya jewellery for enlightenment” for, among other things, jewellery and leather goods.

Although nowadays nobody is unaware of who Rosalía is, or of her importance on the national and international music scene, it was not until 2018 that the singer rose to worldwide fame, and it was not until that year that we find her first trademark application, specifically national trademark M3733838 – ROSALIA (Word).

This fact is very relevant because it indicates one of the reasons why it had to be through the channel of application for trademark cancellation, and not by opposition to the application for registration, by which Rosalía tried to remove this trademark from the registry. The fact is that Rosalía did not have any previous trademark registrations and, therefore, it was not possible to oppose the then trademark application in 2016.

Excluding this option, and practically when the five-year period established by the European Community Trademark Regulation for initiating revocation proceedings had elapsed, on 8 October 2021 Rosalía proceeded to file an application for trademark revocation in respect of the goods described in the registry subject to revocation.

Resultado de esta acción, la EUIPO resolvió la misma en diciembre de 2022, si bien de forma parcial, declarando la caducidad para todos los servicios excepto para aquellos relativos a joyas, joyas de carácter personal y para adorno personal, las joyas de adorno, los artículos decorativos para uso personal, los collares y las piezas de bisutería.

In view of this, Rosalía proceeded in February 2023 to appeal the EUIPO’s decision, on the understanding that the revocation should be upheld in its entirety.

And on 15 December 2023, the EUIPO issued a resolution, confirming the previous decision declaring partial revocation, on the understanding that in view of the evidence provided by Raphael Europe Ltd, use for jewellery products was demonstrated.

Seeing that her attempt to remove the trademark from the registry was thwarted, Rosalía decided to take the matter to the General Court of the European Union, filing an appeal with the aim of overturning the EUIPO’s decision.

Rosalía based her appeal on two main arguments.

• On the one hand, that the EUIPO had not made a correct assessment of the evidence submitted by the trademark proprietor to prove the use of the trademark during the period comprised between 8 October 2016 and 7 October 2021;

• And, on the other hand, that the EUIPO had not sufficiently substantiated the decision that was being appealed, as well as the fact that it had based its reasoning on assumptions that had no basis whatsoever with respect to the evidence submitted by the trademark proprietor.

Regarding the first of the grounds, Rosalía essentially questioned the fact that the now contested trademark appeared in the description of the invoices issued by the trademark proprietor or on the packaging of the goods, since most of the evidence to prove use consisted of different invoices, which was not sufficient to prove use of the trademark, in terms of an indication of commercial origin, for the goods at issue in class 14. Similarly, taking into account that the goods at issue are considered for everyday use, such invoices would not be suitable from a qualitative and quantitative point of view to prove the use of the disputed trademark.

The EUIPO addressed this fact in its response to the appeal, where it stated that, in accordance with the established case law, it is not necessary for the purpose of proving use of the trademark that it be located next to the goods as required by Article 58(1) of EU Trademark Regulation 2017/1001. Likewise, the EUIPO stated that the volume of sales of the goods marketed under the disputed trademark should be analysed taking into account, among other things, the company’s turnover, advertising capacity and degree of diversification, and not, on the other hand, carry out this weighting in absolute terms, so that with regard to the use of the trademark it is not always necessary to prove that it is quantitatively significant.

And as for the second of the grounds for the appeal filed by Rosalía, it questioned the fact that the EUIPO had not correctly assessed the evidence submitted by the proprietor of the contested trademark, given that said evidence was not suitable for proving its use in terms of the marketing of jewellery products within the EU. Furthermore, it stated that the EUIPO had not sufficiently and adequately explained why invoices issued for countries outside the EU sufficiently demonstrated, and that the Office thus based its decision on mere suppositions.

The EUIPO responded to this second argument by pointing to the relevant sections of the contested decision, in which the EUIPO had correctly assessed each and every piece of evidence that was submitted, and that after assessing the evidence individually and then together, it had been concluded that the use of the contested trademark had been duly proven.

Furthermore, the EGC and the EUIPO point out that Rosalía did not submit any argument in her appeal regarding the first decision issued by the EUIPO on the use of the trademark in relation to Class 35, but did so directly in the appeal filed before the EGC, and therefore the criticism made of the EUIPO for an event of which the EUIPO had no knowledge is not valid.

Thus, and with the General Court accepting the arguments put forward by the EUIPO, the Court concluded that, according to the evidence submitted at the time by the proprietor of the contested trademark, the use of the trademark for jewellery products was proven, and therefore dismissed the appeal filed by Rosalía in its entirety.

Therefore, this is a case in which a trademark has obtained significant renown in a brief period of time, but the “height” of the renown is not enough to “kick” out of the market legitimate rights holders who were there previously, and who managed to prove the use of their trademark in accordance as required under European trademark regulations. Another case in which David manages to defeat Goliath.