Background of the case

On 22 December 2016, DEEPSEACAVA was filed as a Spanish trademark application for sparkling wines under the denomination of origin cava. The Cava Regulatory Board filed an opposition against this application which was rejected by the OEPM. This decision was Appealed before the High Court of Justice in Madid, and entirely upheld by this Court. The Court agreed to reject the subject application on the grounds that it had not been authorized by said entity and therefore it may deceive the average consumer on the basis of Article 5.1.g) of theSpanish Trademark Act.

Judgement of the Supreme Court

The Supreme Court found the Appeal filed by the State attorney admissible, stating that the goal to develop new case-law “consists of finding whether the inclusion of a Protected Designation of Origin as part of a trademark is in accordance with the law, if such inclusion cannot give rise to error on the part of the consumer because the registration of the trademark has been requested for products protected by that particular Designation of Origin, and if so, if such use must be preceded by the authorization of the Regulatory Council of the Designation of Origin”.

The Court shares the ground line of the High Court of Justice judgement and confirms the risk to deceive thepublic, since consumers can understand that the products protected by the trademark have the approval of the Appellation of Origin Cava. It is in additional argued that“Deep” and “sea” included in the word part of the trademark application, can induce the public to think that these are sparkling wines manufactured in the see, according to techniques and procedures followed and approved by the Cava Denomination of Origin, reinforcing the misleading perception on the real nature, quality and geographical origin of the product. Therefore, Article 5.1. g), must be interpreted as meaning that signs incorporating word elements or words identifying or evoking a Denomination of Origin and designating wine products in Class 33, producing a false impression on consumers as to the quality or geographical origin, are not eligible for registration, without the need to prove that with the registration of the trademark an illegitimate interest or unfair and unlawful use of the reputation of the Denomination of Origin is being pursued, since the goal of the subject absolute groundis to try to avoid the profusion of trademarks that have a misleading nature in relation to the information it transmits to the consumer. It is also specified that this absolute ground has an autonomous character, due tothe particularity of the case.

Considering all the above, the trademark DEEPSEACAVA has been rejected because it falls under the prohibition of article 5.1.g) of the Spanish Trademark Act 17/2001, being settled a new case-law doctrine regarding the interpretation of the aforementioned article.

Judgement of the Supreme Court (Third Section) of 20November 2020. Judgement No. 1568/2020.