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Dinosaurs and Gin

Developments in Spanish Case Law on "Lookalike" Products in the Food and Beverage Sector

13 June 2019

Spanish courts have traditionally held a strict view on trademark and unfair competition actions against "lookalike" products, culminating in the Spanish Supreme Court's landmark decision in the 2015 "Oreo®" case. Two recent judgments of the Barcelona Commercial Courts and the Alicante Court of Appeal in cases concerning dinosaur-shaped cookies and gin bottles provide new – if at times contradictory – clues as to the current position of Spanish trademark law in relation to lookalikes.

Dinosaurs: judgment of Barcelona Commercial Court No. 8 of 3 April 2019

This case pitched two leading Spanish confectionary companies against each other. The plaintiff held various trademarks protecting its "Dinosaurus" range of cookies. The cookies, which come in the two-dimensional shape of dinosaurs, have been highly popular with Spanish children for decades. In addition to mixed trademarks protecting the "Dinosaurus" logo, the plaintiff also had a series of figurative (but not three-dimensional) trademarks protecting each of the dinosaurs.

The defendant sold dinosaur-shaped cookies under the "Gallesauros" brand, albeit in a significantly different format: smaller bite-sized cookies which are meant to be eaten from a bowl with milk, much like breakfast cereals.

Barcelona Commercial Court No. 8 dismissed both the plaintiff's trademark infringement and  unfair competition action. The Court's findings on the figurative dinosaur trademarks are of particular interest. The Court did not assess whether there was a likelihood of confusion between the defendant's cookie and the plaintiff's dinosaur trademarks. Instead, it found that the drawings of the dinosaurs were non-distinctive and lacked any peculiar individualising features. In doing so, the Court relied in part on the "Oreo®" precedent from the Spanish Supreme Court, which had found that the shape of "Oreo®" sandwich-type cookies lacked distinctiveness.

The application of these two cases may represent a markedly strict view on distinctiveness. The Court also strongly emphasised that the trademarks were two-dimensional drawings, as opposed to three-dimensional trademarks. Although this was not the key deciding factor (since the Court found that the trademarks would not have been sufficiently distinctive even if they had been deemed three-dimensional), it is surprising. The Court also emphasised – within the context of trademark infringement – the differences in the shape and format of the products' packaging (cereal-type bag vs "flowpack"-type packaging).

The Court took a strict view on the evidence required for proving the reputation of a trademark. In a very lengthy discussion on the distinctions between experts, witnesses and hybrid "expert witnesses" (which may impact evidentiary practice beyond IP cases), the Court rejected a panoply of market research studies and instead relied on the defendant's expert report from an academic expert on branding and IP valuation.

Overall, rightsholders and companies in the food industry can learn several lessons from this:

  • Spanish courts may apply a strict benchmark on the distinctiveness of signs protecting foodstuffs in the shape of animals, fantasy characters or other similar shapes. Distinctive, "cartoonish" designs seem to be required;
  • Filing applications in respect of three-dimensional signs (as opposed to mere two-dimensional drawings) may minimise risks;
  • Packaging may matter, even if the trademark dispute does not concern the packaging as such; and
  • For the purposes of establishing a sign's reputation, empirical evidence (market research, marketing budgets etc.) is often best supplemented with academic expert reports.
Gin: judgment of Alicante Court of Appeal (Section 8) of 18 February 2019

Conversely, this decision from the all-important Section 8 of the Alicante Court of Appeal is a recent example of successful enforcement against lookalike products. The plaintiffs, wine and spirits giant Pernod Ricard and legacy brand Allied Domecq, brought trademark infringement and unfair competition actions against a local competitor, which sold gin in bottles with an overall design which was very similar to the classic Beefeater® bottles. However, the brand name was completely different and, instead of Beefeater®'s classic Yeomen Warder, the lookalike product featured the "jack" or "knave" from Spanish playing cards. The product was clearly aimed at the lower end of the spirits market.

The Court found that the Beefeater® three-dimensional and word trademarks had a reputation. It held that they had been infringed pursuant to Article 9(2)(c) of the European Trademark Regulation, which governs the infringement of trademarks with a reputation even in the absence of likelihood of confusion. The Court found that, although consumers were able to tell the two products apart due to the different names and characters on the bottles, the overall impression to consumers meant that the defendant was taking unfair advantage of Beefeater®'s reputation. In fact, the clear difference in quality of the two brands only served to confirm infringement.

This judgment is welcome news for the spirits industry in Spain, which in recent years has witnessed the proliferation of lookalikes of popular brands. An infringers' usual strategy of imitating overall design while introducing different brand names and graphic elements to avoid confusion may no longer work.

Key take away issues
  • Recent decisions from the Spanish courts are shaping trademark law in the context of "lookalike" products in the food and beverage sector.
  • One of Barcelona's Commercial Courts has taken a narrow view on the "distinctiveness" of trademarks protecting confectionery products in creative shapes. It has made findings that impact product design, trademark prosecution and enforcement strategies. In turn, the Alicante Court of Appeal has curbed a commonly-used lookalike strategy in the spirits sector.