Background
Decision


In proceedings brought by Cointreau SA against Vidrierías Masip SA, Destilerías La Vallesana SA and Licores Deva SA, on July 16 2013 Section 15 of the Barcelona Court of Appeal revoked a judgment of Barcelona Commercial Court No 6 and sentenced the defendants for infringing Cointreau's international three-dimensional registered trademark (553.499), which protects the shape of the Cointreau liqueur bottle without any other elements (a so-called 'naked bottle').

Background

On January 25 2008 Cointreau filed suit against Masip, La Vallesana and Deva for infringing International Trademark 553.499, protected in Spain in Classes 32 and 33, which had been applied for on May 16 1990, with French priority dating from December 21 1989. It consists of a square-based bottle with bevelled edges, without any labelling and devoid of any other elements.

The actions that gave rise to the suit were:

  • the manufacture and supply of essentially identical bottles by Masip to liqueur manufacturers;
  • the use by La Vallesana of the Masip-manufactured bottles to package and market its orange-flavoured liqueur; and
  • the commercialisation by Deva of the orange sec liqueur produced by La Vallesana using the bottles.

The defendants opposed the suit, alleging, among other things, by way of exception, invalidity and expiration of International Trademark 553.499.

On April 8 2010 Masip, La Vallesana and Deva filed suit against Cointreau, which was consolidated with the proceedings pending before Barcelona Commercial Court No 6. In line with the exceptions articulated in their pleading, the defendants applied for a declaration of invalidity and expiration of the international mark, mainly based on the following claims:

  • With regard to the invalidity action, bottles in the shape of that protected by International Trademark 553.499 had been used by La Vallesana, Deva and other companies for orange liqueurs and other spirits before the priority date; therefore, such bottles had become the customary packaging for orange-flavoured liqueur before the trademark application date.
  • With regard to the expiration action, the international mark had not been used as shown in the trademark registration due to the fact that Cointreau had never commercialised its liqueur in a naked bottle (ie, without labels and devoid of any other elements).

On April 10 2012 the commercial court upheld the defendants' main claims, annulled International Trademark 553.499 and dismissed Cointreau's trademark infringement suit.

Cointreau filed an appeal, which was upheld in substance, thus revoking the commercial court's judgment and sentencing the defendants for infringing International Trademark 553.499.

Decision

The court of appeal considered the following points:

  • Regarding the invalidity action –
    • the distinctiveness and well-known character of the 'naked bottle', which was covered by International Trademark 553.499, had been established as Cointreau's own sign; and
    • the use by La Vallesana and Deva, before the application date of International Trademark 553.499, of a bottle similar to that of the trademark at issue and/or the existence of other imitations by third-party competitors – which departed from bona fide trade – did not support the notion that the bottle registered as a trademark by Cointreau had become the usual way of presenting this type of product (orange liqueur).
  • Regarding the expiration action –
    • the use by Cointreau of the registered bottle, together with other elements or other trademarks also owned by Cointreau, constituted use of International Trademark 553.499;(1) and
    • International Trademark 553.499 was registered in Class 32 (non-alcoholic beverages) and Class 33 (alcoholic beverages); since it had not been used in Class 32, it would be declared expired only for products in that class.
  • Regarding the infringement action –
    • the well-known character of International Trademark 553.499 had been proven; therefore, the defendants' use of the disputed bottle was considered to take unfair advantage of the well-known character of Cointreau's mark; and
    • consequently, the court declared that the defendants had infringed International Trademark 553.499 and taken unfair advantage of its well-known character.

The defendants were ordered to:

  • cease carrying out the infringing acts;
  • abstain from using bottles of the same shape as that protected by Cointreau's international trademark; and
  • recall from the market and destroy such bottles and any catalogues or other advertising material in which they appeared.

For further information on this topic please contact Antonia Torrente at Grau & Angulo by telephone (+34 93 202 34 56), fax (+34 93 240 53 83) or email ([email protected]).

Endnotes

(1) Article 6.2.3 of the Office for Harmonisation in the Internal Market (OHIM) Opposition Guidelines, November 2007 and decision of the OHIM Cancellation Division of July 28 2010. Cointreau/The Patron Spirits Company.