The Spanish Supreme Court has recently handed down a new Judgment on 3D trade mark infringement. It has upheld BIC IBERIA, S.A.’s appeal against a previous Judgment of the Court of Appeals of Valencia (Audiencia Provincial de Valencia) dismissing an infringement action filed on the basis of the claimant’s registered Spanish trade mark no. 1935054 (“shape of a pen”).

The Supreme Court found that the lower Court erred in understanding the nature and subject-matter of the Spanish trade mark that constituted the basis of BIC IBERIA, S.A.’s claim. According to the lower Court, the trade mark at stake claimed only the “location of the BIC word sign and the company’s characteristic doodle in the depicted pen”. Following this interpretation of the subject matter of the trade mark, the claim was dismissed.

Making use of the Supreme Court’s authority of re-interpreting the facts at issue (only used in exceptional cases in which the lower Court “clearly erred” in the assessment of the fact in dispute), it has been declared that the appellant’s trade mark clearly constitutes a 3D trade mark, covering not only the word signs and BIC’s doodle (as found by the lower Court), but also the specific shape of a pen. According to the reported Judgment, the lower Court did not take into consideration the full scope of the sign as registered by the claimant by omitting one relevant feature: the shape of the pen itself.

The Judgment follows awarding BIC IBERIA, S.A.’ claim, and ordering the cease of the sale of the infringing pens by the respondent, who will have to pay damages and bear the expense of publishing the Judgment in three national newspaper, and also the Court costs.

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