The COINTREAU Company filed a claim for infringement of the international, three-dimensional trade mark Nº 553.499 consisting of a bottle with certain features for Classes 32 and 33 with effect in Spain, against the companies Vidirerías Masip, S.A., Licores Deva, S.A. and Destilerías La Vallesana, S.A. for the manufacture and marketing of a liqueur presented in a bottle basically identical to that of the mentioned brand, COINTREAU, without their authorisation.   The plaintiffs opposed this claim alleging, amongst other things, the exception of lis pendens which in time changed to exception res judicata and a plea of nullity and, alternatively, revocation of the mark at issue.

The Commercial Court of First Instance declared the mark invalid as the container was considered a standard shape for certain types of liqueurs, in which case the container alone and with no other addition loses the distinctive character of the mark in order to identify it with the product.  This judgement was appealed by COINTREAU.

The Provincial Court partially upheld the appeal lodged by COINTREAU and ruled as follows:

firstly, as regards the nullity, the distinctive character and reputation of the “nude bottle” that is to say, the bottle subject of the contested mark, with no labels, was considered as proven, as well as the fact that the use of a similar bottle by the plaintiffs or other imitations by third party competitors does not confirm that the bottle registered as a trade mark has become the usual way to present this type of goods;  secondly, and with regard to the revocation action, it was considered that the usage of the bottle subject of the contested mark together with other elements or other marks under the ownership of COINTREAU constitutes a use of the contested mark regarding Class 33, but not with regard to Class 32 and therefore declared this revoked on the grounds of lack of use;  and thirdly, as regards the infringement, the reputation of the COINTREAU mark was found to be proven and consequently its use by the plaintiffs takes unfair advantage of the reputation of the featured trade mark.  This judgement was subject to an appeal of procedural infringement and an appeal in cassation by the plaintiffs.

The Judgement of the Supreme Court of 4 February 2016 resolved both appeals.   The appeal of procedural infringement is dismissed on all three grounds as the Supreme Court did not consider that the norms regarding the principle of res judicata had been infringed as no objective identity existed between the two cases as the previous judgement covered other marks also owned by COINTREAU but different from the current case; as efforts were made ex novo to introduce the denial of the three-dimensionality of the mark, when the appellants had implicitly accepted this by referring to it in their statement as “the bottle”, and because the Provincial Court had not confused the trade marks when valuing the proof.

Finally, with regard to the appeal in cassation, this is also dismissed on both grounds, analysed as follows:  i) Infringement of Art. 5.1.d) Spanish Patent Act and its case law, by upholding the judgement that the bottle representing the trade mark in question is distinctive and does not constitute one of the usual or customary ways to package liqueurs.  The Supreme Court analyses the difference between the bans that affect descriptive signs and regular signs, i.e., that the shape subject to application for registration is ontologically identifiable of the designated product category, in such a way that it has been linked to these goods since its very existence as such, or has earned this connection as a result of its market use, and becomes customary to identify such goods and has not done anything special in order to prevent this.  In this way the Provincial Court accepts that although the bottle may not originally have had a distinctive character, it had acquired this thereafter through use, perceived so by consumers, establishing that “The average consumer perceives the packaging, right from the start, and above its function as a container, as an indication of the product’s commercial origin”.

ii) Infringement of Art. 55 and 58 SPA and case law, as the judgement under appeal ignored that the established use does not refer to the contested mark but to a different mark of the owner that is unrelated to the questions discussed. On this point the Supreme Court understood that the usage of the contested mark had been made along with other marks of the same owner which in accordance with Art. 39.2.a) SPA likens this to “use of the 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”.

In conclusion, the Supreme Court accepts the distinctive character of the bottle registered as a three-dimensional trade mark by COINTREAU as it is understood that, although the bottle may not originally have been of distinctive character, it has acquired this over time by use, and that its usage in a form that does not significantly differ from its registered form does not affect its use.