120 WINE LAW are short signs, and even the minor differences are more easily perceived by the consumer. Descriptive expressions widely used by wine producers are not taken into account in the assessment of similarity. As an example, the Spanish expression “castillo de”, which corresponds to the equivalent words in other EU languages, i.e. “château”, “castello”, “Schloss” or “castle”, as well as in the designation of wines – has been dismissed when assessing the similarity between the prior sign Castillo de Liria and the applied sign, which were found to be similar47. A specific and extended protection is granted by article 8(5) EUTMR for registered trademarks concerning dissimilar goods or services unlikely to arouse confusion, provided they benefit from a reputation. This article sets forth cumulative requirements that must be satisfied: the prior trademark must enjoy a reputation; the signs must be identical or similar; there must be a link between the trademarks at issue on the part of the public; the use of the opposed trademark must be without due cause; and the use of the opposed trademark must be detrimental to or take unfair advantage of the distinctive character or reputation. In order to determine whether a trademark enjoys a reputation, all the relevant facts should be taken into consideration, particularly the market share held by the trademark, the intensity, the geographical scope, the duration of its use and the investments made by the company to promote it. Once the reputation of the trademark and the existence of a link between the trademarks at issue are proved, it must be established that there is detriment to the reputation or an unfair advantage, taking into account all the factors and circumstances of the case. Detriment to the reputation would imply the tarnishing of the reputation, i.e., an actual deterioration of the image of the prior trademarks., while unfair advantage would entail the image that the renowned trademark projects being transferred to the goods covered by the subsequent trademark, 47 See fn. 45.
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