(also known as Artiach v Florbú)
Roj: SJM B 184/2019 - ECLI: ES:JMB:2019:184
Juzgado de lo Mercantil no 08 de Barcelona
A decision of the Commercial Court (Juzgado de lo Mercantil) of Barcelona raised some interesting questions about the scope of a two-dimensional figurative mark to include to the three-dimensional shape of the goods themselves. The case exposed the gap between what a trade mark owner may think is covered by a trade mark registration and the reluctance of society to grant broad monopolies that may harm competition.
The plaintiff Galletas Artiach S.A.U. sued La Flor Burgalesa S.L. for infringement of several of figurative trademarks. Some of these were various dinosaur line drawings first registered in 1990. Others registered in 2015, though figurative marks, clearly depict three-dimensional dinosaurs in relief.
Articach also claimed that the respondents use of "GALLEGASUROS" constituted infringement of its international trademark (designating Spain, Portugal, and Morocco) "DINOSAURUS", a Spanish trade mark comprising a stylised version of the same word, and combined marks ('112, '114) which describe the packaging. Articach further claimed that the respondent's sale of its biscuits in packaging that contained depictions of them constituted unfair competition (competencia desleal) because it caused consumer confusion. Artiach sought a finding of infringement and unfair competition, and orders preventing further manufacture of the offending biscuits, their withdrawal from the market, and destruction of stock.
The court noted that the plaintiff was relying exclusively on figurative marks and no three-dimensional marks. It noted this situation was "extreme" (extremo) and "very relevant" (muy relevante) to the decision in the case. The court noted that the plaintiff seemed to be claiming the scope of its trademarks extended to cookies in the shape of dinosaurs. The court found that although the plaintiff had successfully registered dinosaur silhouettes as trade marks, these were two-dimensional and their scope did not extend to the three-dimensional shapes of cookies. Furthermore, it noted that the shapes of certain species of dinosaurs "belong to the general public, that is: they are in the public domain." It also noted that even if the registration had been for a three-dimensional mark, such a trade mark for cookies would have "scant distinctive value".
The court applied the now classic examination of the similarities between the signs by considering the aural, visual, and conceptual similarities. Interestingly, the comparison of the visual similarity was conducted using the stylised text figurative DINOSAUROS mark as it appears on the packaging and the GALLE SAUROS packaging. Thus the different colours were considered. The packaging was also compared and it was noted that the plaintiff’s biscuits were sold in a cardboard box, but the respondent's were in a plastic bag. On the conceptual similarity the court noted that the plaintiff's trade marks "evoke the extinct species of dinosaurs, which as a species belonging to the natural world is not, in itself and in principle, appropriable nor registrable" in the absence of some "singular" element that transforms it qualitatively. Again the decision made much of the fact that no three-dimensional trade marks were being relied upon.
The plaintiff had produced, at earlier hearings, the results of a survey it had commissioned from Ipsos Iberica.The court ruled that this survey was insufficient to demonstrate a likelihood of confusion. The court noted that the survey had not been conducted specifically for the trial. The court took issue with the methodology of the survey which was conducted online. It noted that 22% of Spanish households did not have a computer, and therefore a significant portion of the population was excluded from the survey. It raised concerns that the survey was targeted at children under sixteen years who completed the survey without the assistance of their parents. It was not be demonstrated that the children understood the questions. The court also raised concerns about the small size of the sample (300 children) and the fact that it was the parents, not the children, who made the purchases. It ruled the survey too unreliable to be useful evidence.
The court addressed the issue of extra protection for well known marks that was in force during the relevant period. It noted that these provisions were not relevant because the goods in question were the same as those for which the trade marks were registered and so the tests applied would be the same. The court chose to rule on the plaintiff's claim nonetheless. It found that that it relied too heavily on the previously dismissed survey evidence and so ruled that the well known status was not demonstrated.
The court also sought to clarify the distinction between an expert (perito) and an expert-witness (testigo-perito). It noted that experts were interchangeable because one "is substitutable for another who possesses the same specialised knowledge, while the expert-witness is irreplaceable because he had personal knowledge of the controversial facts". An expert-witness has "a historical relationship with the facts" whereas an expert is a stranger (ajeno) that is required to assess certain aspects of the litigation. The distinction was important because the procedural rules required that an expert-witness be "limited to giving an oral statement … about what he has seen or heard and adds his specialised knowledge without it being challenged". Nor can they challenge expert opinions. Thus the court rejected the plaintiff’s use of an expert-witness to "introduce into evidence a faulty, undercover or extemporaneous expert opinion". Evidence presented by an expert-witness based on data from Google Trends was ruled inconclusive (no ... concluyentes). A statement from Asociación para la Defensa de la Marca, a trade body, that the mark was a well known was dismissed since the plaintiff belonged to the trade body.
The court elaborated in the interaction between trade mark law and the law of unfair competition, and pointed out that the provisions prohibiting unfair competitor are only applied when the trade mark law does not. All of the actions complained of fell within the scope of trade mark law. Thus the law of unfair competition was not applicable in to this case.
Costs were awarded again the plaintiff.
Commentary
It is not clear why the court did not use the plaintiff's word mark DINOSAURUS as the reference point for the measure of similarity. Although similarities in the packaging were clearly relevant to the issues of unfair competition, it could be argued that comparing just the words alone would have been more appropriate to the question of trade mark infringement. This would have removed the colour and font from the considerations. While the court might have found that GALLEGASUROS was indeed very different from DINOSAURUS, the difference between the figurative mark in coloured lettering and the defendant's packaging was significantly greater. The scope of a word mark includes the word in all colours and typefaces. Perhaps the most appropriate test would have compared the words alone in the absence of any colours.
The chief difficulty in this case is that the plaintiff asserted that its two-dimensional trade marks gave it a monopoly on the production of biscuits with their shape. This is what made the court uncomfortable. Were this a case about the use of a dinosaur logo on the packaging of rectangular biscuits, it might have been a very different case. A monopoly on the attachment of dinosaurs to boxes of biscuits and a monopoly on the sale of dinosaur-shaped biscuits are very different things. The question the court faced was did the scope of Artiach's trade mark registrations include both. This is the central question in this case, and it went largely unanswered.
It is clear that the plaintiff was granted registration of several line drawings of dinosaurs as trade marks for biscuits. These drawings were distinctive and entirely capable of indicating the origin of goods. The courts decision that they "evoke the extinct species of dinosaurs, which as a species belonging to the natural world is not, in itself and in principle, appropriable nor registrable" was highly unusual. While the language used would be familiar to anyone who has read decisions on the distinctiveness of trade marks, the idea that something from the natural world cannot be distinctive is very wide of the mark. Apple functions perfectly well as a distinctive sign for computers. A crocodile functions very well as indicators of origin for goods sold by Lacoste. Why dinosaurs cannot function as trade marks for biscuits is not at all clear.
Assuming, for the moment, that the registration was valid, the relevant issue is the extent to which the scope of this trade mark includes the shape of the biscuits themselves. Did the registration grant a monopoly on the sale of dinosaur-shaped biscuits? The court's reluctance to grant a monopoly on dinosaur-shaped biscuits is reasonable and its assertion that the plaintiff's trade mark registrations did not give it one seems sound. But the reasoning is somewhat unsatisfactory. The court focused very much on the older registrations which were line drawings and the fact that no three-dimensional marks were relied upon. But it is arguable that the 2015 registrations (ES M3565248, M3565255, M3565267) are clearly two-dimensional renderings of three-dimensional objects. These registrations make the court's reasoning appear less sound.
The difficulty remains, however, that for most of trade marks' history they have been signs attached to goods and not the goods themselves. This is a relative new development and neither the registration process nor the courts are well equipped to address it. The trademark registration process does not make it easy to distinguish between a sign attached to goods and a sign that is the goods. There is currently no good mechanism for a manufacturer such as Articach to apply for a monopoly on the on the production of biscuits of a particular shape. It may be useful to develop a shape-of-the-goods category of trade mark. Such applications could still be assessed using the same criteria for distinctiveness as other types of mark. But it would be clear what monopoly the applicant is seeking and what has been granted.
There is a somewhat convoluted argument that might have provided the court with a solution. Drawings of dinosaurs are perfectly good badges of origin for any kinds of biscuits, expect biscuits shaped like dinosaurs. For such biscuits they are merely descriptive. But such an argument would hardly resolve the difficult question the court was asked to address.
