Four criteria of distinctiveness of the three-dimensional brand

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Three-dimensional marks must meet four criteria to be considered distinctive

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To check the distinctiveness of a three-dimensional mark, the criteria established by the CJEU must be taken into account, as the relationship between the brand and the product, the perception that the consumer has of it, its nature and its own uniqueness.

The 9th Section of the Provincial Court of Valencia issued a ruling on 15 June 2020, with No Resolution 790/2020, dismissing the appeal filed by CASTIZZA CENTRO 21, S.L., TAXI PRODUCTS, S.L., and CHURRUCA PRODUCTS, S.A. It confirmed in its entirety the sentence handed down in the first instance, declaring the absolute nullity of the three-dimensional Spanish brand registered by CASTIZZA CENTRO 21, S.L. It also dismissed the challenge of the judgment made by STAR EXCLUSIVAS, S.L.

Fact background,,es,Juan Alberto and Paulina filed suit against FTA,,es,Asset Securitization Fund,,es,requesting the declaration of nullity for abusive of the floor and ceiling clauses contained in the novation contract of the mortgage loan of,,es,with the corresponding refund of amounts unduly collected,,es,The Securitization Fund Management Company,,es,Beech,,es,acting on behalf of FTA, he responded to said claim alleging that he lacked passive legitimacy since the entity had no legal personality and that it constituted only a private and open fund and that therefore the passive legitimization corresponded to BBVA as successor of Catalunya Banc that was the Company fund constituent,,es

CASTIZZA CENTRO 21, S.L., requested and obtained the registration of the three-dimensional Spanish trademark of a tube through which the product they marketed was accessed, a liquid treat in order to be frozen.

STAR EXCLUSIVAS, S.L., filed suit in 2012. Army trademark nullification action, alleging the lack of proper substantivity and the registration of bad faith.

CASTIZZA CENTRO 21, S.L., not only opposed the lawsuit, but, next to TAXI PRODUCTS, S.L., and CHURRUCA PRODUCTS, S.A., presented counterclaim, exercising the action of infringement of the trademark and, failing, the action of unfair competition.

Primera Instancia

The Commercial Court No. 1 de Valencia dictó sentencia el 31 July 2019, partially estimating the claim filed by STAR EXCLUSIVAS, S.L., against CASTIZZA CENTRO 21, S.L. Dismissed the counterclaim filed by CASTIZZA CENTRO 21, S.L., TAXI PRODUCTS, S.L., and CHURRUCA PRODUCTS, S.A.

The Court declared the absolute nullity of the three-dimensional Spanish brand registered by CASTIZZA CENTRO 21, S.L. He requested the Trademark Registry to cancel the registration. It cleared STAR EXCLUSIVAS, S.L. of the counterclaim raised.

Ultimately, the Court upheld the trademark nullity action, but he did not appreciate the bad faith in the registration by CASTIZZA CENTRO 21, S.L. It did not establish compensation for damages. Dismissed the counterclaim.

Provincial Court

CASTIZZA CENTRO 21, S.L., TAXI PRODUCTS, S.L., and CHURRUCA PRODUCTS, S.A., they filed an appeal.

On bad faith in the registration of the trademark and compensation for damages

STAR EXCLUSIVAS, S.L., challenged the ruling in the first instance of rejection of the bad faith in the registration of the trademark and the rejection of the compensation for damages.

The plaintiff argued that, when CASTIZZA CENTRO 21, S.L., registered the trademark, I knew that the tube was a banal container that was widely marketed in Spain and internationally, so the objective was to acquire the monopoly of the container and its technical form.

The Chamber brought up the doctrine that was established by the CJEU in the judgment of 11 June 2009, in case C.529 / 07, apartment Lindt. He noted that “to assess the existence of the applicant's bad faith in the sense of the article 51, paragraph 1, letra b), n º of Reglamento 40/94, the national court must take into account all relevant factors (…) and that existed at the time of filing the application for registration of a sign as a Community trademark, and, en particular:

– the fact that the applicant knows, or should you know, that a third party uses, in at least one Member State, an identical or similar sign for an identical or similar product that may lead to confusion with the sign for which registration is sought;

– the applicant's intention to prevent said third party from continuing to use such sign, as well as

– the degree of legal protection enjoyed by the third party's sign and the sign whose registration is requested. "

He considered the Chamber bad faith was not proven nor that the sign used enjoyed significant legal protection. Dismissing the challenge to the judgment in this regard. He did not enter to assess the question of compensation for damages, since this was linked to the estimate of bad faith (art. 54.2 Trademark Law).

On the action for annulment and the action for violation of the trademark

For the Board, It was necessary to analyze the legal doctrine on three-dimensional marks or shape marks to uphold the appeal filed against the judgment rendered in the first instance.

It considered that the sign had to fulfill the essential function of the brand, guaranteeing the consumer or end user the identity of origin of their own, distinguishing, without confusion, the origin of said product.

"So, the brand must allow distinguishing the origin or provenance of the products and services in the market. The consequence of this is that, if the brand does not allow such differentiation, the trademark will be void for incurring an absolute prohibition. Thus, article 5.1.b) of the Trademark Law establishes that signs that lack distinctive character may not be registered as a trademark. "

The STJUE of 13 September 2018, in Case C-26/17 P, señaló que "The distinctive character of a brand in the sense of article 7, paragraph 1, letra b), del Reglamento 207/2009 means that this trademark allows the product for which registration is requested to be identified by attributing to it a specific business origin and, therefore, distinguish this product from those of other companies. "

The Chamber assessed the criteria that the CJEU offered to verify the distinctive character of a three-dimensional mark that did not contain any word or graphic element for the specific case and then specified them:

PRIMER CRITERIO DEL TJUE: the distinctive character of a trademark must be appreciated, on the one hand, in relation to the products and services for which registration has been requested and, otherwise, in relation to the perception of it by the public to whom the product is directed.

For Hearing: 1º).- It is necessary to find out if it is a sign that is capable of identifying the business origin of a product or service due to its own nature.

SECOND CRITERION OF THE CJEU: the relationship that the brand has with the perception that, her, has the target audience for the product.

For Hearing: 2º).- You have to determine who the audience is for the product. The, which is the same, what type of consumer or user of the product is the one who has to identify the business origin. Based on the previous answer, what diligence should we require of that consumer or user when doing the business origin analysis when viewing the product.

THIRD CRITERION OF THE CJEU: the nature of the product will determine the brand used for its identification.

For Hearing: 3º).- It must be determined whether the brand in question involves a special shape that allows it to differentiate itself from the rest of the shapes of that product (in our case, packaging) that fall within the common, the use or custom in the sector and if you need a labeling that contains a word or graphic type mark to be able to identify the business origin of the products it contains.

FOURTH CRITERION OF THE CJEU: It is not possible to confuse what is the uniqueness of the product of the design with what is distinctiveness. "

For Hearing: 4º).- Last, inquire if this special shape serves only to be attractive or also serves to identify the business origin of the product

The Chamber concluded, based on these criteria, that “(…) the form or container, considered from a conceptual point of view, is capable of identifying the product that contains. And, also, from a conceptual point of view, could identify business origin; (…) the analysis of the distinctiveness of the brand will be done from the perspective of an average consumer, understanding by this a consumer normally informed and reasonably attentive and insightful of the product; (…) the brand in question supposes a form that is not differentiated from the rest of the forms of this product, packaging, that fall within the common, the use or custom in the sector. And, also, It needs a labeling that contains a word or graphic type mark to be able to identify the origin of the products it contains., alone, does not serve to identify business origin; (…) a packaging that has no uniqueness of its own (…)”.

On the action of unfair competition

STAR EXCLUSIVAS, S.L., commissioned a Chinese company to supply an imitation product that was acquired and marketed by CASTIZZA CENTRO 21, S.L., TAXI PRODUCTS, S.L., and CHURRUCA PRODUCTS, S.A.

STAR EXCLUSIVAS, S.L., attempted trademark registration, knowing that CASTIZZA CENTRO 21, S.L., had a virtually identical trademark. This request was denied in June 2014.

From September 2016, STAR EXCLUSIVAS, S.L., began the importation and marketing of a similar product, a liquid treat to freeze. In 2017, STAR EXCLUSIVAS, S.L., commercialized a new product identified with another brand. It did not carry out any advertising or propaganda activity for its products. CASTIZZA CENTRO 21, S.L., considered that it was taking advantage of the effort and reputation of CASTIZZA CENTRO 21, S.L., TAXI PRODUCTS, S.L., and CHURRUCA PRODUCTS, S.A.

Thus, in the counterclaim, they stated that the facts constituted acts of unfair competition provided for in arts. 4, 6 and 12 the Unfair Competition Law, produciéndose una parasitación en las inversiones en el lanzamiento y consolidación de los envases de su producto.

The Chamber concluded that “no se considera que haya acto de confusión en el mercado en relación con los consumidores y usuarios a la vista de los distintos productos utilizados por una y otra sociedad. So, por mucho que sea cierto que el envase sea ciertamente similar, ello no supone que se pueda generar una situación de confusión en el mercado.”

Tampoco consideró que hubiera aprovechamiento de la reputación porque el tubo no era un signo distintivo con derecho de exclusiva, pues se declaró la nulidad del registro de la marca.

Last, en cuanto a la parasitación, la Sala estableció en la sentencia que “(…) el envase de las mismas características empleadas por ambas empresas no permite hacer la vinculación al origen empresarial. Thus, la utilización de ese envase por la demandada reconvenida no suponía un acto de parasitación ni de aprovechamiento del esfuerzo comercial realizado por las demandantes reconvencionales.”

For all the above, la Sala desestimó el recurso de apelación.

Conclusion

Se protegerá por nuestro ordenamiento jurídico el empleo de un producto tridimensional que pueda provocar confusión en cuanto al origen empresarial del producto. El carácter distintivo del producto y de la marca afectará, no solo a su derecho a registrarla, sino también al grado de protección que se le pueda dar.

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