Click here to read the Spanish version.
Vega Sicilia’s Macán succeeds in erasing Dacán from the trademark register. This has been ruled by the Supreme Court of Justice of Madrid, for calling to confusion to consumers and harming the group of bankers and winemakers of Ribera del Duero.
The sentence in which these two trademarks were involved or ‘confronted’ was resolved last July 27 before the court, in which the claim to annul the registration of the trademark Dacán, of the Denominación de Origen del Duero, which was accepted by the Spanish Patent and Trademark Office in 2022, was upheld.
Vega Clara, a small boutique winery located in Valladolid, registered the trademark ‘Dacán Vega Clara’ with the SPTO that year. The addition of these last two words was enough to be considered as good enough for its registration, against the appeal filed by Benjamin de Rothschild & Vega Sicilia, as the new trademark incorporated the surname ‘Vega Clara’, which provided it with the necessary distinction.
Taking this context into account, the judgment has now considered conclusive a phonetic similarity between the opposing signs. Both words, Macán and Dacán, can be confused in their speech, by creating a highly similar auditory impression. Not only because they have the same number of syllables, he adds, but also because they share the syllable ‘can’, which is the one that ‘has the greatest phonetic prominence in both marks’.
Thus, the appeal was upheld and the defendant was ordered to pay the costs. Currently, on its website, the wine appears renamed as D’Acann, although the bottles retain the original denomination.
