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
As anticipated a few weeks ago in the first part of the analysis of the case “Kraft v. Gullon“, in its judgment no. 450/2015 of 2 September 2015 (ECLI: ES: TS: 2015: 4245) the Spanish Supreme Court not only ruled on a look-alike issue – regarding in particular the commercialization of Gullón’s biscuits and their packaging which were similar to several trade marks owned by Kraft – but also on the application of the ECJ case law on the concept of genuine use of a mark. In particular, such case-law includes the CJEU’s judgments of 25 October 2012, C-553/11, “Rintisch”, 18 April 2013, C-12/12, “Colloseum Holding AG” and 18 July 2013, C-252/12, “Specsavers”. This second post precisely concerns this matter.
The Supreme Court interpreted the concept of genuine use of a mark in the context of the counterclaim for revocation for lack of use brought by Gullón in order to request the cancellation of one of the marks claimed by Kraft as basis of its main actions. The contested mark is the Spanish tridimensional mark no. 1997588 as represented below:
The Supreme Court revoked the contested mark upholding Gullón’s claims. It stated that the three-dimensional mark consisting of the shape of the Oreo biscuit had only been used by Kraft in a form comprising both the appearance of the product and the word mark Oreo, placed at the center of the cookie itself. Accordingly, the sole three-dimensional mark used was the Community trade mark no. 8566176, reproduced below:
In support of its decision, the Supreme Court recalled that the concept of genuine use of a mark is regulated under Article 39 of the Spanish trade mark law 17/2001 (LM) – which had implemented Article 10 of Directive 2008/95 (TMD) – and under Article 15 of Regulation 207/2009 (CTMR)
The first paragraph of those three provisions contains the rules in order for the requirement of genuine use of a mark to be fulfilled so that the trade mark holder can maintain the trademark rights when the mark has been registered for at least five years:
“1. If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for nonuse” (Art. 15 CTMR).
The second paragraph of the referred provisions points out that the condition of the genuine use of a mark is also satisfied where the mark is used in a way that differs from that in which the mark was registered, as long as the mark’s distinctive character is not altered in the view of the use of such different version.
“The following shall also constitute use within the meaning of the first subparagraph:
(a) use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered;
(b) affixing of the Community trade mark to goods or to the packaging thereof in the Community solely for export purposes (Art. 15 CTMR)”.
As the Supreme Court noted, the ECJ had already established in “Rintisch” that trade mark holders can exploit their marks using signs that do not strictly mirror the form in which the trade marks were registered in order to adapt to the necessities imposed by the promotion and commercialization of the claimed goods and services. However, the differences between the mark as it was registered and the form used in trade need to concern elements that do not alter the distinctive character of the trade mark registration.
All this is even more relevant in view of the concept of “genuine use” construed by the CJEU in “Colloseum Holding“: “use” of a mark generally encompasses both its independent use and its use as part of another mark taken as a whole or in conjunction with that other mark, and the combination of the two marks is itself registered as a trade mark.
It is simply important that consumers of the relevant products and services continue perceiving the mark as it was registered as an indication of commercial origin of those products and services.
The Supreme Court considered that the contested three-dimensional mark had weak distinctive character simply derived from the biscuit’s pattern along its contour. Therefore, the use of the term Oreo at the center of the product was deemed to significantly alter the distinctiveness of the three-dimensional mark.
Possibly, the Supreme Court reached these conclusions by literally applying paragraph 31 of the judgment in “Specsavers“:
“[…] the condition of ‘genuine use’, within the meaning of those provisions, may be fulfilled where a Community figurative mark is used only in conjunction with a Community word mark which is superimposed over it, and the combination of those two marks is, furthermore, itself registered as a Community trade mark, to the extent that the differences between the form in which that trade mark is used and that in which it was registered do not change the distinctive character of that trade mark as registered.”
In the view of these considerations the Supreme Court considered that the use of the Spanish three-dimensional mark could not be established on the basis of the use of the Community trade mark no. 8566176, namely the mark consisting of the appearance of the Oreo biscuit and the term Oreo over it. Therefore, the Spanish three-dimensional trademark at the stake was revoked for lack of use.
The Supreme Court held that the term Oreo was an element that altered the distinctive character of the contested three-dimensional mark, while also gathering the distinctiveness of the Community trade mark solely used by Kraft.
It is true that the CJEU showed in “Specsavers” that the addition of a word element in an empty sign can usually alter the distinctive character of that sign. However it is also necessary to ascertain whether that sign alone can be still perceived by the relevant consumer as a trade mark, and if the above referred addition of a word element does not lead to a significant alteration of the sign’s distinctiveness where assessing the genuine use.
The Supreme Court may have deemed that, contrary to the presumption of a minimum distinctiveness of any trademark, the Spanish consumer cannot perceive the shape of the Oreo cookie as a commercial origin identifier because of its low distinctiveness which only stemmed, according to the Court’s appreciation, from the biscuit’s pattern along its contour.
Consequently, it is possible that the Supreme Court carried out an assessment on the degree of distinctiveness of the contested three-dimensional mark instead of daring to consider whether, given the use of the Community trade mark no. 8566176, the Spanish consumer could recognize Kraft’s products looking at a sandwich biscuits characterized by a cream filling and the same pattern along the contour such as the revoked tridimensional mark.
Related Posts:
- Analysis of the Spanish Supreme Court’s Judgment of September 2015 in “Gullón” (I): Look-alike, the New Frontier for Trade Mark Infringement
- Four Recent Judgments of the Spanish Supreme Court in the Field of Trademarks (II): “Masaltos I”
- On the perception of the terms “ifitness” and “fit” in the mind of the Spanish average consumer.
- Four Recent Judgments of the Spanish Supreme Court in the Field of Trademarks (I): “Cointreau”