Four Recent Judgments of the Spanish Supreme Court relating to Trademarks (III): “Champín”
The third judgment of the Spanish Supreme Court in this series of four posts about recent case law relating to trademarks is Judgment 771/2016 of 1 March, “Champín”.
Champín is the trademark used by Industrias Espadafor for the marketing of a soda for children with taste of berries and strawberries whose packaging is far different from the packaging traditionally used for soft-drinks and for instance looks like a packaging used for champagne and sparkling wines.
The Comité Interprofessionnel du Vin de Champagne, Regulatory Council of the referred denomination of origin, considered that the use of “Champín” trademark for a product showing a presentation similar to “Champagne” bottles sought an association in consumer´s minds about Champagne wines in order to take advantage of the prestige and renown in the market of these beverages. For this reason, the Comité filed a lawsuit before the Commercial Court No. 1 of Granada, against Industrias Espadafor, S.A.. The Comité claimed the invalidity of trademark No. 2060239 “Champim” for products in class 32 (beers, mineral water and other non-alcoholic drinks, fruit drinks and fruit juices; syrups and other preparations for making beverages) because it felt within the prohibition provided for in article 5.1.g) (signs which are likely to mislead third parties about the nature or geographical origin of the product) under the Spanish Trademark Act 17/2001 of 7 December (in Spanish). Moreover, the plaintiff also applied for the declaration of an infringement of the “Champagne” denomination of origin and the existence of unfair competition acts in accordance with articles 5 (misleading), 12 (unfair advantage of another´s reputation) and 15 (rules infringement) of the Unfair Competition Law 3/1991 of 10 January (in Spanish).
The First Instance judge agreed with the Comité Interprofesionnel du Vin de Champagne in all the claims but Industrias Espadafor filed appeal the decision and the Provincial Court of Granada passed judgment on 6 September of 2013 revoking the first instance decision and acquitted the defendant.
The Comité du Champagne challenged this judgment before the Supreme Court on the basis of four cassation grounds. Amongst them, we will refer exclusively to those relating the application for trademark invalidity because it is contrary to the Law.
The Supreme Court understood that article 5.1. f) was not applicable because the products identified by the Champin trademark did not include wines or alcoholic drinks. The Court also declared that article 5.1.g) cannot be applied to this case either because the Champín trademark of the defendant did not lead the consumers to think that Champín drink is made of Champagne or that it is a Champagne-derived product.
The words of the Supreme Court were the following: “Not any evocation justifies the infringement, but it must be related to the scope of protection granted in the denominations of origin. In this case, the product using the denomination Champin and its consumers is so very different from the products protected by the “Champagne” denomination, that even the phonetic similarity of the signs does not evoke the similarity referred to in the Judgment of the Court of Justice of the European Union of 4 March of 1999, caso formaggi o Gorgonzola (C-87/97), (…)”
The Supreme Court concludes that the evocation of the “Champagne” product that may occur is weak and irrelevant since it does not generate a link in the consumer´s mind which damages the aim pursued by the denomination of origin and it does not mean either an unfair advantage of the reputation of the “Champagne” denomination of origin.
Related Posts:
- The use of trademarks as adwords cannot be considered as taking unfair advantage from a third party´s reputation
- Analysis of the Spanish Supreme Court’s Judgment of September 2015 in “Gullón” (I): Look-alike, the New Frontier for Trade Mark Infringement
- 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
- Mop´s War Arrives at the Supreme Court – Analysis of the Judgement of 15 February 2016