Rounded fuchsia cross does not imitate Red Cross emblem

Spain

The Barcelona Court of Appeal has upheld a decision of the Commercial Court Number 3 of Barcelona and dismissed a civil complaint filed by the Spanish Red Cross against Happy Pills SL, a confectionery distributor, for infringement of its rights in the Red Cross emblem.

The Spanish Red Cross sued the defendant for using the Red Cross emblem, seeking compensation for loss and damages based on the following allegations:

  • Use of the Red Cross emblem by the defendant infringed the plaintiff’s exclusive rights in the emblem (Article 53 of the Geneva Convention 1953); and
  • The defendant had engaged in unfair competition by taking advantage of a market position acquired through infringement of the law (Article 15 of the Spanish Law on Unfair Competition).

The dispute started when the defendant first used a dark pink cross on the label of its products, which implied that the sweets had a ‘curative’ effect. The cross used by the defendant was almost identical to the protected Red Cross emblem:

Following a request by the plaintiff, the defendant changed its sign by lightening the shade of pink to fuchsia and using a rounded cross:



The new sign was registered with the Office for Harmonisation in the Internal Market for goods in Classes 30 and 35 of the Nice Classification (pastry and confectionery, and advertising services).

Nevertheless, these changes were insufficient for the plaintiff. 

Following a detailed analysis of both signs, the first instance court concluded that the differences between them were sufficient to avoid confusion. Moreover, the court found that the defendant’s actions did not infringe Article 15 of the Law on Unfair Competition.

The Court of Appeal upheld the decision based on the following findings:

  • There was no infringement of the exclusive rights conferred to the plaintiff by Article 53 of the Geneva Convention, which provides that entities which are not listed in the convention cannot use the Red Cross emblem or an imitation of the emblem. In this regard, the concept of ‘imitation of an emblem’ differed from the criteria established to prevent trademark confusion or to prevent third parties from taking advantage of, or being detrimental to, the distinctive character or repute of a well-known trademark. Although the sign that was originally used by the defendant (a dark pink cross on a white background) might have been considered an imitation of the Red Cross, the new sign was sufficiently different to prevent an association with the Red Cross. Although the new sign evoked the Red Cross emblem, this was insufficient to constitute an imitation.     
  • There was no infringement of Article 15(1) of the Law on Unfair Competition. The plaintiff alleged that the defendant had infringed the following rules:
    o Article 18 of the Legislative Royal Decree 1/2007 (consumers and users legislation), which provides that the packaging and presentation of goods and/or services must reflect their nature and not cause confusion;
    o Article 4 of Act 29/2006 (guarantee of use of pharmaceutical products and medicines), which prohibits the conception, manufacturing, importation, exportation, distribution and commercialisation of products which are falsely presented as medicines; and
    o Article 4 of the Royal Decree 1907/1996, under which it is illegal to use promotional or advertising material which attributes curative, therapeutic or preventive characteristics to food products.
    The Court of Appeal found that there was no infringement of Article 15.1 of the Law on Unfair Competition mainly because there was no proof that the defendant had obtained a significant competitive advantage - a necessary condition to demonstrate infringement of Article 15.1.

The court did not expressly rule on the costs incurred.

Barbara Krystkowiak, Grau & Angulo, Barcelona

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