{"id":2125,"date":"2023-02-23T17:56:59","date_gmt":"2023-02-23T16:56:59","guid":{"rendered":"https:\/\/bamboo.legal\/lotus-dunlop-o-barcelo-se-pueden-registrar-dos-marcas-con-el-mismo-nombre\/"},"modified":"2026-02-04T06:32:15","modified_gmt":"2026-02-04T05:32:15","slug":"lotus-dunlop-or-barcelo-two-trademarks-can-be-registered-with-the-same-name","status":"publish","type":"post","link":"https:\/\/bamboo.legal\/en\/blog\/lotus-dunlop-o-barcelo-se-pueden-registrar-dos-marcas-con-el-mismo-nombre\/","title":{"rendered":"Lotus, Dunlop or Barcel\u00f3: Can two trademarks be registered under the same name?"},"content":{"rendered":"

You may have been struck by the fact that you have come across a trademark for a product that is identical to another trademark that you already knew and that distinguished another product. You may even have come to think: Do both products belong to the same company?<\/strong> Or, in case you had been able to verify that it was not the same company, you might have thought: Are the two companies related in any way?<\/strong><\/p>\n

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\"Identical<\/p>\n

Our regulations (both national<\/strong><\/a>as European<\/strong><\/a>) in trademark matters permits the coexistence in the market and registration of identical or similar trademarks provided that they distinguish or protect sufficiently differentiated goods or services.<\/strong>. For the so-called principle of speciality<\/strong>The registration of a trademark grants protection to its owner in relation to specific goods or services. If the goods or services are not sufficiently different from those of another registered trademark, there may be a possibility that such overlapping may cause the consumer to be misled as to their business origin. This is what is technically known as risk of confusion<\/strong> (the possibility that the consumer believes he is purchasing a product from one company, when in fact he is purchasing a product from another), which includes the risk of association<\/strong> (when the consumer is able to differentiate between the two companies but believes that they may be related or linked in some way).<\/p>\n

Therefore, in order for two brands to be confusable<\/strong> in the market, not only do they have to be identical<\/strong> o similar<\/strong>their own; they must also be their own products or services<\/strong>. It seems difficult (and this has been understood by the legislator) for the consumer to believe that a company that markets padlocks under the trademark \"LUMA\" has any kind of organic, structural or economic relationship with another company that offers real estate services under the same name. This constitutes a real case<\/strong> of coexistence:<\/p>\n

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\"Identical\"Identical<\/p>\n

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The Nice International Classification<\/strong><\/a>The system of harmonized grouping of goods and services by class (45), which is used when registering trademarks, may serve as a guide to assess whether two goods or services are similar, but is not, as such, binding. In fact, there are a multitude of goods belonging to different classes that can be considered more or less similar (for example, \"clothing\" in class 25 and \"handbags\" in class 18); as well as others belonging to the same class that do not seem to be related (for example, \"loudspeakers\" and \"glasses\", both in class 9). It is therefore necessary to consider the true similarity between the goods or services themselves, and not their belonging to one or another Nice class.<\/strong>. If you have doubts about how to choose goods and services for your trademark registration within the Nice Classification, you may find it useful to\u00a0this post<\/strong><\/a>.<\/p>\n

The foregoing constitutes the general rule<\/strong> for what are known as ordinary brands<\/strong>Those that are not particularly well established in the traffic. In other words, those that are not known to the majority of the public. Obviously, most of the brands we come across on a daily basis belong to this group. But what about the brands that do have a higher-than-average level of consumer awareness?<\/p>\n

This type of brands, qualified as renowned<\/strong>enjoy a superior right: their sphere of protection extends to products or services, the greater the degree of public awareness, the more disparate the products or services.<\/strong> of such trademarks. If the degree of awareness is such that the mark is known to the general public<\/strong>its protection extends to any product or service<\/strong>In other words, its owner may prohibit the use or registration of any other identical or similar trademark for totally different products or services. This would be the case, for example, for trademarks such as Coca-Cola, Google or iPhone. Even if Coca-Cola is not registered for \"automobile repair\" (class 37), The Coca-Cola Company could prohibit someone from marketing or attempting to register a Coca-Cola trademark to distinguish a car repair shop.<\/p>\n

The practical problem that gives rise to this article arises when two identical or very similar trademarks, registered and used for different products or services, reach a certain level of renown in the same territory, and their respective spheres of protection (extended to products more or less distant in terms of their level of public awareness) may come to overlap<\/strong>. This sometimes happens because when both brands began to coexist they may not have been so famous; but they gradually gained reputation, until they became generally known. In addition, the emergence of the Internet and globalization in the traffic of products and services led to brands that could only be known in a certain territory becoming known in others. The following examples come to mind at the outset:<\/p>\n