In the Judgment no. 72/2010 (cassational appeal no. 269/2005) concerning trade mark infringement and unfair competition, the Spanish Supreme Court (Civil Chamber) dismissed the respondent’s petition to have its jurisdiction declined in favor of the Courts in Milan in a clear attempt to make the later Spanish case explode by means of the so-called "Italian torpedo".

The "torpedo" in our case was a prior Italian non-infringement declaration case initiated by Zaini Luigi, S.p.A., being Ferrero S.p.A. (the trade mark owner) the respondent. The skilled readers of the blog have probably anticipated that the parties in the subsequent Spanish case were Ferrero S.p.A. (claimant) and Zaini Luigi S.p.A. (respondent).

The litigated object ("res de qua agitur") in both cases was a confectionary product consisting in egg-shaped chocolate figurine, having an empty inner space that allowed placing a little gift.

Ferrero S.p.A. sold such products in Spain under the registered Spanish marks no. 1.224.384 "Sorpresa" and no.1.577.689 "Kinder Sorpresa", and also under the international mark no. 453.759 "Kinder Sorpresa" (and device). Zaini Luigi, S.p.A. sold this product in Spain including "Sorpresa" ("surprise") in the product’s wrapping.

In its answer to the Spanish claim, Zaini Luigi, S.p.A. alleged litis pendens with the non-infringement declaration proceedings it started in Italy a year before, claiming identity of the parties and the same litigious object. It therefore requested the Spanish Court to decline its jurisdiction in favor of the Italian tribunals (alternatively, to stay the case).

Such motions were denied by the Court of First Instance in Madrid that dealt with the case, which condemned defendant on the grounds of trade mark infringement and unfair competition ("acts of confusion" and "acts of imitation"). The case was appealed to the Madrid Court of Appeals, which dismissed the appeal and upheld the Judgment in the first instance.

Zaini Luigi, S.p.A. finally appealed before the Supreme Court and reproduced the discussion on the litis pendens with the Italian prior case. But obtained no other result.

The Spanish Supreme Court understood the case did not fall under the scope of articles 21 and 22 of the Convention on jurisdiction and the enforcement of judgments in civil and commercial matters (a.k.a. Brussels Convention - applicable to the case for chronological reasons), that read:

The Spanish Supreme Court found that the prior Italian case and the subsequent Spanish litigation did not present neither "risk of irreconcilable judgments" nor "the same cause", as the litigious product in Italy was branded "Supermario" by Zaini Luigi, S.p.A. , while the product it sold in Spain was branded "Sorpresa".

Entering into the merits of the case, the Spanish Supreme Court found that the respondent acted in bad faith when commercializing in Spain a product with a get-up that could create confusion in the marketplace. On the basis of this factual finding, the Spanish Court dismissed the appeal and awarded Ferrero, S.p.A.’s claim on the grounds of unfair competition ("acts of confusion").

Any guessing on how the story ended in Italy? No infringement - you have to love international IP litigation (who doesn't?).