Antonia Torrente May 2 2016 Supreme Court confirms validity and infringement of Cointreau 'naked bottle' mark Grau & Angulo | Intellectual Property - Spain Antonia Torrente Intellectual Property FactsDecisionIn a February 4 2016 decision the Supreme Court dismissed La Vallesana and Deva's extraordinary appeals for procedural infringement and cassation against a Barcelona Court of Appeal judgment which dismissed the invalidity of Cointreau's International Trademark 553.499, as claimed by the two companies, and which sentenced them and Vidrierias Masip for infringing that international trademark.FactsIn January 2008 Cointreau filed a suit against Masip, La Vallesana and Deva for infringing its International Trademark 553.499, protected in Spain. The mark consists of the characteristic bottle of Cointreau liqueur with no other attachments (the 'naked bottle').(1) The suit was based on the following acts:the manufacture and supply by Masip to the liqueur distillery companies of bottles which were essentially identical to the subject of the international trademark owned by Cointreau; andthe use of such bottles by La Vallesana and Deva to package and market their orange-flavoured liqueur, Orange Sec.The defendants opposed the suit, alleging the invalidity and subsidiarily, by way of exception, the expiry of International Trademark 553.499. In the suit filed by Masip, La Vallesana and Deva – which was accumulated to the proceedings initiated by Cointreau – they formally requested the invalidity of the trademark for lack of distinctiveness, and subsidiarily its expiry for non-use. The defendants alleged:in connection with the invalidity action, the bottle had a standard character for packaging orange-flavoured liqueur; andin connection to the expiry action, Cointreau had never commercialised its liqueur with a bottle as shown in the trademark (ie, unlabelled and devoid of any other elements).In an April 10 2012 judgment the Barcelona Commercial Court declared the invalidity of International Trademark 553.499, thus dismissing the infringement suit filed by Cointreau.Cointreau appealed and the judgment was revoked in substance by the Barcelona Court of Appeal, which dismissed the claims by Masip, La Vallesana and Deva of invalidity and expiry of International Trademark 553.499 to distinguish liqueurs, and upheld Cointreau's infringement suit (for further details please see "Court states that competitors took unfair advantage of Cointreau's 'naked bottle'").The court's considerations were as follows:In respect of the invalidity action, the distinctiveness and well-known character of Cointreau's naked bottle with no label, registered as International Trademark 553.499, had been established.In respect of the expiry action, the use by Cointreau of the naked bottle of the international trademark, together with other elements or other trademarks which were also owned by Cointreau, constituted use of International Trademark 553.499.In respect of the infringement action, the well-known character of International Trademark 553.499 had been proven so the defendants' use of the disputed bottle infringed the mark by taking unfair advantage of its well-known character (regardless of whether the likelihood of confusion existed).Following the appeal court's judgment, La Vallesana and Deva filed an extraordinary appeal for procedural infringement and cassation(2) based on the following grounds:Regarding the extraordinary appeal for procedural infringement:the correctness of upholding the exception of res judicata relied on by the defendants in the proceedings and dismissed by the appeal court; andan alleged infringement of fundamental rights on the basis of the alleged error in the valuation of certain evidence.Regarding the cassation appeal:infringement of Article 5.1(d) of the Trademark Act referring to the total prohibition of registration for lack of acquired distinctiveness; andinfringement of Article 39.1 of the act in relation to Articles 55 and 58, governing the expiry of the mark for lack of use.DecisionThe Supreme Court dismissed the appeal for procedural infringement on the grounds that:the conditions for upholding the res judicata exception had not occurred; andthe appeal court judgment had not committed the errors alleged by La Vallesana and Deva.The Supreme Court also dismissed the cassation appeal on considering that the appeal court had concluded correctly that:the bottle which was the subject of International Trademark 553.499 did not identify a product category ("orange flavoured liqueur"), but rather identified Cointreau liqueur, and therefore the naked bottle mark owned by Cointreau had a distinctive character; andunder Article 39.2 of the Trademark Act, the mark was used by Cointreau because the bottle that Cointreau used with other elements (eg, embossed name and label) coincided significantly with the subject of the international trademark.The Supreme Court's decision represents the final word on the validity in Spain of International Trademark 553.499 and its infringement by Masip, La Vallesana and Deva.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]). The Grau & Angulo website can be accessed at www.gba-ip.com.Endnotes(1) As noted by the Supreme Court judgment:"as stated in the register of the mentioned international trademark attached in the proceedings, it was registered for products in categories 19.7.10 and 26.1.4 of the International Classification of the Figurative Elements of marks (Vienna Classification). The category 19 corresponds to containers and packaging and paragraph 7.10 bottles or jars without neck."(2) Vidrierias Masip did not appeal the appeal court's judgment.