In its 23 April 2020 judgment the Barcelona Court of Appeal recognised the well-known nature of the DINOSAURUS trademark owned by Galletas Artiach (hereinafter, Artiach) and its infringement by La Flor Burgalesa (hereinafter, Florbú) for using the GALLESAUROS sign applied to biscuits.
In April 2018 Artiach filed a lawsuit against Florbú for infringing the DINOSAURUS trademark and graphic marks consisting of various shapes of different species of dinosaur and alternatively for unfair competition, as well as compensation for damages as a result.
On 3 April 2019 the lawsuit was dismissed by a Barcelona Commercial Court No 8 judgment, against which Artiach filed an appeal.
On 23 April 2020 the Barcelona Court of Appeal upheld the appeal filed by Artiach and partially revoked the Barcelona Commercial Court No 8 judgment. The Barcelona Court of Appeal declared that the sale of Florbú biscuits under the GALLESAUROS sign constitutes an infringement of the DINOSAURUS trademark and thus ordered Florbú to:
- cease the infringing activity and withdraw from the market the infringing products, packaging, commercial materials and any documents used in the marketing of such products; and
- pay Artiach 1% of the turnover generated by the infringing products in the five years prior to the filing of the lawsuit and until the cessation of their sale and marketing becomes effective.
The legal basis of the Barcelona Court of Appeal judgment can be summarised as follows:
- Contrary to the Barcelona Commercial Court No 8 judgment, the evidence in the file proved that Artiach's DINOSAURUS trademark is generally known by the relevant sector of the public at whom the corresponding products are aimed (ie, purchasers of biscuits for children), which led the court to recognise the well-known nature of the DINOSAURUS trademark.
- The Barcelona Court of Appeal recognised the well-known nature of the DINOSAURUS trademark "with all the conceptual connotation of the sign". Therefore, Artiach had the opportunity to take exclusive advantage of consumers' natural association between the well-known trademark and the dinosaur-shaped biscuits.
- The DINOSAURUS trademark's well-known nature gives it enhanced protection. This enhanced protection means that to conclude the infringement, the concurrence of risk of confusion is not required, but rather that the proximity between the opposing signs generates a link (ie, that the latter mark evokes the previous mark for the average consumer) that may entail, as established under Article 34.2(c) of the Trademark Law:
- the dilution of the mark's distinctive character;
- damage to the well-known nature of the mark; or
- an unfair advantage on the part of the infringer of the distinctive character or well-known nature of the mark.
- The degree of similarity between the GALLESAUROS sign and the well-known DINOSAURUS trademark was enough to generate such a link, given the evident similarity between such signs and their close harmony on a conceptual level.
- The products to which both signs applied shared an identity (ie, biscuits). However, like the DINOSAURUS mark, the GALLESAUROS mark was not used to identify only biscuits, but also applied to biscuits of a certain shape (among the many that can be chosen), such as the one directly linked to the terms 'dinosaurus' and gallesauros' (the dinosaur shape).
- The defendant's use of the GALLESAUROS sign meant that the latter has obtained an unfair advantage and carried out an improper use of the well-known DINOSAURUS trademark.
Therefore, in accordance with Article 34.2(c) of the Trademark Law, the Barcelona Court of Appeal considered that Florbú's sale of the relevant biscuits under the sign GALLESAUROS constituted an infringement of the well-known DINOSAURUS trademark, with all of the consequences derived from said declaration of infringement, including Florbú's obligation to pay damages to Artiach.
Grau & Angulo - Antonia Torrente
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