Defendants found to infringe 3D mark for Cointreau bottle

By a judgment of July 16 2013, the Barcelona Court of Appeal (Section 15) has revoked the decision of the Commercial Court Number 6 in proceedings brought by Cointreau SA against Vidrierías Masip SA, Destilerías La Vallesana SA and Licores Deva SA, and held that the defendants had infringed an international three-dimensional trademark (Registration No 553.499) owned by Cointreau, which consisted of the characteristic Cointreau bottle with no other elements (the ‘naked bottle’).

On January 25 2008 Cointreau filed suit against Masip, La Vallesana and Deva for infringement of international trademark No 553.499, protected in Spain in Classes 32 and 33 of the Nice Classification, and applied for on May 16 1990 with a French priority date of December 21 1989. The mark consisted of a square-base bottle with bevelled edges, with no other elements.

The events that gave rise to the suit were:

• the manufacture and supply by Masip to liquor manufacturers of bottles that were essentially identical to the trademark owned by Cointreau;
• the use by La Vallesana of the bottles manufactured by Masip to package and market its Orange Sec liquor; and
• the commercialisation by Deva of the Orange Sec liquor produced by La Vallesana in the bottle at issue.

In their defence, the defendants alleged, by way of exception, that international trademark No 553.499 was invalid, or that it had expired.

By writ of April 8 2010, Masip, La Vallesana and Deva filed suit against Cointreau, applying for a declaration of invalidity of Cointreau’s mark, or for a declaration that the mark had expired. This suit was consolidated with the proceedings pending before the Commercial Court Number 6.

The suit was based mainly on the following allegations.

Regarding the invalidity of the mark, they alleged that international trademark No 553.499 had been used by La Vallesana and Deva, as well as other firms, for orange liquors and other spirits, before the priority date of the international trademark, so that the shape had become customary for the products covered by the mark before the date of application for registration as a trademark.

Regarding the expiry of the mark, they alleged that the international trademark had not been put to genuine use because Cointreau had never commercialised its liquor in a bottle as shown in the trademark (ie, the ‘naked bottle’ without any other elements).

On April 10 2012 the Commercial Court upheld the main claim of Masip, La Vallesana and Deva, cancelled international trademark No 553.499, and dismissed the infringement action brought by Cointreau. 

Cointreau appealed. The Court of Appeal revoked the Commercial Court’s judgment and found that the defendants had infringed international trademark No 553.499.

With regard to the validity of the mark, the court held as follows:

• The distinctiveness and well-known character of Cointreau’s ‘naked bottle’ had been established.
• The use by La Vallesana and Deva, prior to the date of application of international trademark No 553.499, of a bottle similar to the mark, and/or the existence of other imitations made by third-party competitors, did not mean that the bottle registered as a trademark by Cointreau had become the usual way of presenting the product at issue.

With regard to the expiry of the mark, the court held as follows:

• The use by Cointreau of the bottle which is the object of the international trademark, together with other elements or other trademarks which are also owned by Cointreau, constituted use of international trademark No 553.499 (see Part 6.2.3 of the OHIM Opposition Guidelines, version of November 2007, and the decision of the Cancellation Division of OHIM of July 28 2010 in Cointreau v The Patron Spirits Company).
• The international trademark is registered in Classes 32 (non alcoholic beverages) and 33 (alcoholic beverages). Since it had not been used in Class 32, it had expired only for products in that class.

With regard to the infringement action, the court held that the well-known character of international trademark 553.499 had been proven. Therefore, the defendants’ use of the bottle at issue took unfair advantage of the well-known character of the mark. Thus, the court concluded that the defendants had infringed international trademark No 553.499 by taking unfair advantage of its well-known character, and ordered that the defendants:

• cease carrying out the infringing acts;
• abstain from using bottles which are the object of the international trademark; and
• recall from the market and destroy the bottles, as well as the catalogues and other advertising material where the bottles appeared.

Antonia Torrente, Grau & Angulo, Barcelona