TUESDAY, 27 MAY 2014
Spain: Supreme Court confirms the partial nullity of an RCD for a lollipop container

On 30 April 2014, the Supreme Court upheld a judgment of the Court of Appeal of Alicante, declaring the partial invalidity of a registered Community design (RCD) for a lollipop container. 

The dispute was started by the Italian company Perfetti Van Melle, S.p.A., owner of RCD no. 000721543-0001, a lollipop container comprising the following four views:

View 1

View 2

View 3

View 4


This company filed a claim against the Spanish company Fiesta, S.A. at the CTM Court on 21 October 2009 for RCD infringement derived from the manufacturing and marketing of lollipop containers. In the answer to the claim, the defendant denied infringement, arguing that its product was somewhat different to the RCD, which created a different overall impression in the user. Together with the answer to the claim, Fiesta filed a counterclaim seeking invalidity of the RCD for lack of novelty and individual character, as the design had been made available to the public with the marketing of giant lollipops. Alternatively, Fiesta requested the invalidity of views 1 and 2 of the RCD.

The CTM Court decided the case on 23 June 2011, confirming the infringement and dismissing the RCD invalidity request, arguing that Fiesta had not proved that the giant lollipops were containers and not lollipops themselves.  So, despite being of an already known shape, the RCD was novel as it was used with different purposes.

Fiesta filed an appeal against this judgment, which was allowed by the Court of Appeal of Alicante, revoking the first instance ruling. The Court declared the partial nullity of the RCD (views 1 and 2) and found that the remaining views had not been infringed by the product of Fiesta, as the containers were mere reproductions, in larger scale, of the lollipops that both parties were selling in the market and created a different overall impression.

The plaintiff brought the case to the Supreme Court, requesting a judicial review, based  on a number of procedural allegations (namely lack of motivation and consistency of the second instance judgment, and arbitrary assessment of the evidence) as well as arguments on the merits (validity of the RCD and infringement).

The procedural statements of the appeal were all flatly rejected by the Supreme Court in the judgment of 30 April 2014, declaring that the Court of Appeal’s decision did not lack any consistency or reasoning defects. In connection with the appeal on the merits, the Supreme Court referred in the first place to the question of specific products to which the designs are applied, and quoted Recital 14 of Regulation 6/2002 to maintain that

the assessment as to whether a design has individual character should take into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industry sector to which it belongs.

Additionally, the Court stated that normally there is an inverse relationship between the overall appearance of two designs and the similarity between the nature of the products to which they are applied: if the designs are applied to products of the same industry field, they can have the same overall impression on the users despite having some differences. On the contrary, if the industry fields are very dissimilar, designs having minor differences may create a different overall impression on informed users.

In the case at stake, the Supreme Court found out that despite being different, the products to which the designs had been applied belonged to the same industry sector, as the initial design was a lollipop and the RCD a container for lollipops. The informed user here would be the usual buyer or consumer of such sweets and other accessories directly related.

Therefore, and in view of the above, the Supreme Court confirmed the invalidity of views 1 and 2 of the RCD, as they were reproductions of the usual products to which the RCD is applied and created the same overall impression to the informed user.

Finally, in connection with the RCD valid views 3 and 4, the Supreme Court has confirmed the non-infringement declared by the Court of Appeal, interestingly stating the differences between the comparative analysis of designs and trademarks: the average consumer of the trademark perceives the sign as a whole, without paying attention to details, whereas the informed user observes the product which reproduces the design more carefully and attentively, due to his personal experience or deep knowledge of the specific industry sector.

As long as the similarities between the RCD and the contested design referred to shapes that are in the public domain, the Supreme Court found out that they were not relevant to assess the overall impression on the informed user and therefore to determine that the contested design infringed the RCD.

Consequently, the it confirmed the findings of the Court of Appeal in the sense that the analysis between designs should be focused on the elements which are different from the general shape of lollipops, and determined that there were enough differences between the RCD and the design at stake which created a different overall impression, so the infringement issue was also dismissed.

This item has been specially prepared for Class 99 by José Ángel Garcia-Zapata (Bird & Bird, Madrid). Thank you, José Ángel!

Posted by: Blog Administrator @ 17.02
Tags: Spain, RCDs, validity, lollipop container,
Link: https://www.marques.org/class99?XID=BHA550

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