Four Recent Judgments of the Spanish Supreme Court in the Field of Trademarks (I): “Cointreau”
Between February and March 2016 the Spanish Supreme Court has issued four decisions that provide important interpretative criteria on some Trademark Law issues. Concretely these judgments are 34/2016 of 4 February 2016, “Cointreau”, 516/2016 of 19 February 2016, “Masaltos I”, 620/2016 of 26 February 2016 “Masaltos II” (ECLI:ES:TS:2016:620), and 771/2016 of 1 March 2016, “Champin”.
This post addresses the first of them, “Cointreau”, especially relevant because it refers to the application of CJEU case law regarding the acquired distinctiveness and the trademark use.
Cointreau, well-known company because it produces and markets spirit beverages, has registered in Spain as International Trademark No. 553.499 its square bottle with rounded corners and amber color for products under class 32 (non-alcoholic beverages) and class 33 (alcoholic beverages):
The French company lodged a lawsuit for trademark infringement against three Spanish distilleries based on the use of bottles showing a substantially similar shape and color. The defendants invoked as a defense the invalidity of the trademark because it consists of an object under a common and standardized shape used within the market of the products applied for in classes 32 and 33. Subsidiary, they requested for the trademark revocation on the grounds of the lack of use.
After a first judgment passed by the Commercial Court No.6 of Barcelona which rejected the lawsuit because of trademark invalidity, Cointreau appealed this decision before the Court of Appeal in Barcelona. This court understood that the trademark was fully in force, and that the co-defendants had committed an infringement concerning solely the products under class 33. As per the products under class 32 (non-alcoholic beverages) the trademark was considered to be revoked due to the lack of use.
Two codefendants filed appeal against this decision before the Supreme Court. Judgment dated 4 February of 2016 passed by the Supreme Court in this proceeding gave rise to two interesting interpretations about the following matters:
First one, regarding the referred trademark invalidity based on Art. 5.1 b) of the Trademark Act 17/2001 which provides for the following: “exclusively signs or indications which have become customary in the current language or in the bona fide and established practices of the trade”. In this case, the aim was to determine whether the three-dimensional trademark at stake was different from the rule or the practices of the field or not in order to decide if it was therefore distinctive. On the basis of the European case law (CJEU Judgments of 7 May 2015, C-445/13 P, “Voss”, 20 October 2011 C-344/10 P y C-345/10 P, “Freixenet” and 7 October 2004, C-136/02 P, “Mag Instrument Inc”) the Supreme Court considered that, even though the bottle itself may enjoy low distinctiveness, “this does not necessarily mean that it must fall outside the scope of protection of the Trademark Act, because there is a second way of enjoying distinctive character by means of acquiring such differential aptitude through the use of the sign in the market”. This way, the Supreme Court declared that, although the bottle may lack distinctive character, the distinctiveness had been acquired later through the use thereof.
Secondly, regarding the application of article 39.1 of the Trademark Act on revocation on grounds of trademark lack of use. The defendants claimed that the Cointreau bottle trademark had to be revoked because the product was not commercialized as shown in the trademark Registration. In this regard, the Supreme Court considers that Art. 39.2 of the Trademark Act allows the use of the trademark together with elements which do not modify significantly the distinctive nature of the trademark. It also adds that “the possibility of using a trademark through the use of another trademark has been admitted by the European Union case law, e.g. in the Court of Justice of the European Union Judgment of 18 April of 2013, C-12/12, “Colloseum Holding”. For this reason, the Supreme Court considers that this second ground of appeal must be also rejected.
In short, the Supreme Court accepts the distinctive nature of the trademark although the trademark itself does not have an original distinctive character and acquires it later on due to its use. Furthermore it understands that the use of the trademark in such a way that it does not differ significantly from its registration is enough to dismiss the revocation based on the lack of use.
Related Posts:
- Four Recent Judgments of the Spanish Supreme Court in the Field of Trademarks (II): “Masaltos I”
- The Supreme Court confirms that, in the absence of a link in the mind of the consumer, the reputation of the earlier mark is irrelevant
- Four Recent Judgments of the Spanish Supreme Court relating to Trademarks (III): “Champín”
- Mop´s War Arrives at the Supreme Court – Analysis of the Judgement of 15 February 2016