Mop´s War Arrives at the Supreme Court – Analysis of the Judgement of 15 February 2016
Intellectual property cases give rise to a very diverse case law. However, we did not have the occasion, at least concerning trademark matters, to discuss about a judgment which deals with the product qualified as one of the best known Spanish inventions in history, the mop.
Nevertheless, as it is said, there is a first time for everything: the goal of this post is indeed to analyze a curious decision recently passed by the Spanish Supreme Court on a conflict between mops (in particular, between the two-dimensional representation of a mop and a mop as such). We are making reference to the Supreme Court Judgment 627/2016 of 15 February 2016.
The facts behind this decision are the following: MERY Y CELIM, S.A. and ROBEST, S.L. sued BETIS TEXTIL S.A. alleging that the mop manufactured and commercialized by the later under the name “GENIAL COLOR” (see image below right side), infringed the plaintiff’s European Union Trademark No. 006895651, the Spanish Trademark 2684864 and the Spanish Design No. 502523-01 (the three of them under the same representation below at the left side), and constitutes an act of unfair competition.
With regards to the Trademark Law matters of the decision, the first thing that strikes us is that both the SPTO and the EUIPO accepted the registration of both figurative trademarks (they are characterized as such according to the interpretation made by the Supreme Court) consisting of a mop-shape for “cleaning products” in class 21 of the International Trademark Classification.
In our opinion, both applications should have been rejected in relation with the said products because they are devoid of distinctive character since they just reproduce the image of the cleaning product which does not differ significantly from the uses or customs in the sector.
In our view, this simple fact would determine the impossibility of registration applying the existing case law on this matter which is quoted in the judgment “only a trademark which, significantly, differs as regards the norms or customs of the sector and which, for that reason, complies with its key role is not devoid of distinctive character under article 7, point 1, letter b (…) norms which are solely applicable to the signs, either three-dimensional or figurative, which consist of the product-shape. Thus, these signs shall show these specific requisites to complete their registration as trademarks.”
Regarding the merits of the case, both in the first instance and in the appeal stage, the claims of the applicant were rejected, and it was concluded that no trademark infringement had taken place (neither design infringement nor unfair competition actions) and both decisions were confirmed at the cassation stage.
The decision is based on the understanding that, as we have said before, the priority trademarks are figurative. As it is said this is because in the certificates of registration in both cases it is not specified that they are three-dimensional and it is assured that they are figurative signs “in the trademark registration not only it is not specified its three-dimensional character but indeed it is said that it is a graphic sign”.
Besides that this argument is more or less reasonable to us, it must be highlighted the fact that what it is now been said in order to justify the figurative character of both trademarks was previously omitted as it was said just the opposite, that is, that the trademark at stake consists – as the ones we are dealing with now- of the tow-dimensional representation of the product-shape, was indeed three- dimensional. See Judgment of the Supreme court No. 1028/2008 of 22 November (RJ 2009\413), proceeding “Boli BIC/ZAS” in which it was declared that the Spanish Trademark No. 1.935.054 of the plaintiff was three- dimensional, even though the trademark report (SITADEX) clearly stated that it was a device mark.
Well, having established the nature of the priority rights, the Court compares the confronted signs and concludes that there is no likelihood of confusion between them.
It can be considered that this conclusion of the judgment would be a proof that the there may not be likelihood of confusion between a figurative trademark and a two-dimensional trademark. In other words, that the intention of the registration holder of attacking a use made by a three-dimensional product on the basis of a figurative trademark would not be legitimate because it is outside its ius prohiendi due to the graphic nature of the rights.
Nevertheless, under my point of view the above mentioned is quite questionable. The likelihood of confusion cannot be limited because of the fact that the priority sign is figurative and the alleged infringer three-dimensional. It cannot be directly excluded that a graphic trademark can duly oppose to a infringing use carried out by a three-dimensional product. According to Art. 9.1 b) European Union Trademark Regulation 207/2009 (which is analogous to article 34.2.b) of the Trademark Act 17/2001): “The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (…) any sign where, because of its identity with, or similarity to, (…), there exists a likelihood of confusion on the part of the public.”
Therefore, the possibility of opposing to third parties uses, under the referred articles, depends sole and exclusively on the existence of a likelihood of confusion due to the non-authorized use of any sign.
This being so, we understand that a figurative trademark and a three-dimensional use can be perfectly incompatible provided that the necessary requisites are met. This means that there is similarity in the signs and in the products and services and that there exists a possible risk of confusion in the corporate origin of the referred products and services.
This is not an obstacle to consider in the case at issue under the concurrent circumstances that there is no incompatibility at all.
The court adds that the mop-shape would lack all distinctiveness, thus it could not be seen as an indicator of the company origin “(…) the mop-shape, as this is the shape resulting from the nature of the product and does not identify the company origin thereof, it lacks all distinctiveness.”
For this reason, when analyzing the likelihood of confusion, what need to be compared is not the registered trademarks that show the mop-shape commercialized by the defendant (because the consumer will not see any indication of origin), but the trademarks with the plastic wrap that covers the disputed mop, as it is such plastic wrap the part of the disputed product which is used as trademark and which identifies its company origin: “it must be taken into consideration the nature of the product and the shape under which it is commercialized by Betis Textil, because it is useful to determine which is the sign that, towards consumers, contains the trademark own messages, and in connection to which the trademark registered by the defendant has to be compared.”
In very graphic terms, what it should be compared in the end is the following:
Being this so, of course there would not exist any risk of confusion between the signs at stake.
To conclude, apart from the incompatibility issue between a two-dimensional sign and a three-dimensional sign, the decision finally justifies the lack of infringement under the fact that the infringing product would not be seen as a trademark. This judgment is a clear example that registering a right and making it effective against third party uses are completely different issues. Although it is true that depending on the cases (when there is no notoriety), the first issue is a necessary condition for the second issue, it is never a sufficient condition.
Related Posts:
- Four Recent Judgments of the Spanish Supreme Court in the Field of Trademarks (II): “Masaltos I”
- Four Recent Judgments of the Spanish Supreme Court in the Field of Trademarks (I): “Cointreau”
- Analysis of the Spanish Supreme Court’s Judgment of 2 September 2015, “Gullon” (II): Application of the European Case Law on the Genuine Use of Trade Marks
- Judgement of the General Court “Beatle”: the Court did not let it be