Judgment of the Supreme Court of October 16, 2020.

Background:  Electrodomésticos Jata S.A., filed an ordinary lawsuit against Electrodomésticos Taurus S.L, in which it requested a ruling which, among other things, “declares that the manufacture and/or marketing and/or use by the defendant Electrodomésticos Taurus, S.L. of the GALEXIA ELEGANCE roasting griddle infringes the exclusive rights held by the plaintiff, arising from its Registered Community Design number 000876.065-001, and condemns the defendant to the immediate cease of such acts and to the prohibition of their repetition in the future”. The Provincial Court of Alicante  (European Union Trademark Court) upheld the lawsuit in the above mentioned claim. The defendant filed an extraordinary appeal before the Supreme Court for procedural violation and appeal in cassation.

In the appeal for procedural violation, what is questioned is whether the Court of Appeal, in adopting the function of informed user, has ex officio practiced a test in second instance that is not protected in our procedural order. The Supreme Court’s ruling dismisses the appeal. It considers that, in general terms, in any industrial property process in which it is necessary to carry out evaluations on the infringement of an exclusive right by acts that entail a risk of confusion or association (comparison between trademarks, confrontation of designs, drawings or models, etc.), the courts must necessarily proceed to practice a perceptive and sensory activity that also inevitably involves the examination of the disputed objects, whether tangible or intangible but perceivable by the senses.

Thus, for example, in trade mark matters, the court must compare the conflicting distinctive signs in order to verify the identities or verbal, graphic, visual, phonetic and conceptual similarities of the goods or services to which the mark in question is applied, and finally be able to reach a conclusion on the likelihood of confusion after considering all these elements together.

In design matters, given that protection is “intended to safeguard objects which, although new and individualized, are of a practical nature and designed for mass production”, the courts will have to make a sensory comparison between the different objects or products in dispute, in relation to the protected design. In other words, in view of what is the object of protection, since the judgment deals with the general impression given by the formal aspect of those objects (in this case, roasting plates), it is essential that the court compares the different objects in relation to the protected design.

This sensory perception by the court of the configuring or distinctive elements of the conflicting trademarks or designs does not imply that it is taking a test of judicial recognition, in the terms provided for in Articles 353 to 359 LEC, but rather a legal assessment based on the factual elements available to the court”.

In the appeal, the appellant claims that Article 10 of Regulation (EC) 6/2002 of 12 December 2001 on Community designs has been infringed, arguing that the EUTM Court has completely disregarded the general impression that the designs in question produce on informed users.

In rejecting this ground of appeal, the Judgment considers that in the case of products such as those in dispute, whose external examination does not require special technical knowledge, there is no objection to admitting that it is the court itself that establishes the conditions that this function must have (the “eyes that look”), when it goes beyond the average consumer and the shape of the product needs to be observed with greater attention and care and that the court can carry out the prosecution from this point of view, without the need for additional technical information. In other words, as long as it is not a question of sophisticated products from very special sectors, but rather of designs of products for general consumption, aimed at broad sectors of consumers and users, the judge or court is in a position to personally verify the singular character of the design, from the perspective of the informed user.

What is decisive is that the court, starting from the point of reference of the informed user, has respected the rules for appreciating the general impression. From this point of view, in order for there to be uniqueness, features must be identified that are perfectly appreciable in the use of the products to which the registered design is applied, and which do not cause the informed user the same general impression as the appearance of the product.