[Editor's note] Like most countries and regions in the world, The rulings of the Court of Justice of the European Union have important guiding significance and predictive value for understanding the legal norms of the European Union. Esabaril (ELZABURU) At the beginning of each year, typical cases of the Court of Justice of the European Union in the previous year are summarized and published, And a brief review of each case, In order to help customers and partners to understand the EU intellectual property norms. Given the importance of Chinese customers and partners, We try to publish the Chinese version of typical cases on a weekly basis, It is convenient for Chinese partners to learn the latest information in a timely manner.

　　 [background]

　　KRAFT GROUP The company is based on its registered European Union trademark and Spanish national trademark (As shown in Figure 1) , Sue GULLÓN Company sales of two types of commodity packaging appearance (As shown in Figure 2) Infringement of its trademark rights, There are also acts of unfair competition. Figure 1: KRAFT GROUP Company cited trade mark Figure 1: KRAFT GROUP Company cited trademark Figure II: GULLÓN Company dispute package appearance Figure II: GULLÓN The company disputed the appearance of the package　　The defendant filed several pleas (Juridical force (res judicata) Defense and statute of limitations defense) , And counterclaim, Demand the cancellation of plaintiff's registered trademark on the ground of no actual use.

　　The appellate court partially upheld the plaintiff's claim in the first instance, Judgment of defendant GULLÓN Company pays more than 30 Ten thousand euros in damages. The Spanish Supreme Court eventually overturned the appeal, Find that the defendant's behavior does not constitute infringement and unfair competition.

　　 [conclusion]

　　The Supreme Court first analyzed GULLÓN Counterclaim by the company, That is, on the ground of no actual use, the plaintiff's three-dimensional registered trademark of sandwich shape cookie pattern is revoked (As shown in Figure 3) . KRAFTGROUP When the company actually uses the said trademark, Always and word "OREO" simultaneity, The words are printed in the middle of the cookie, In addition, this form of words and objects is also registered as a separate trademark. Therefore, The court held that, The actual use form of the disputed trademark is different from its registration form, Remove text "OREO" after, The original registered trademark of the three-dimensional shape itself "Lack of significant distinction" . Figure 3: Sandwich shape cookie pattern three-dimensional registered trademark Figure 3: Sandwich shape cookie pattern three-dimensional registered trademark

　　then, The court examined the defendant's goods—— "MORENAZOS" biscuit——Whether the packaging bag is improperly used KRAFTGROUP company "OREO" biscuit (As shown in Figure 4) The famous packaging characteristics, Infringement of the rights of the outer packaging trademark. The judgment cites the prior judgment of the European Court of Justice——Only the concerned public thinks there is a difference between a controversial mark and a famous mark "correlation" when, In order to find the existence of infringement facts. Figure 4: OREO V. S. MORENAZOS Figure 4: OREO V. S. MORENAZOS

　　The court held that, In this case KRAFT GROUP The famous element of a company's trademark is the word "OREO" , Because the text is highlighted in a particularly large size on the package. Therefore, "Whereas this element is missing from the defendant's packaging ( "OREO" ) , Nor did it in fact imitate or use other elements similar to Plaintiff's packaging, This means that the rest of the package containing the disputed three-dimensional logo elements is not sufficiently similar to the defendant's packaging for the relevant public to believe that the two are related, It cannot be found that the defendant improperly took advantage of the famous reputation of the plaintiff's trademark" .

　　The court then examined GULLÓN company "Cookies" Does the cookie package match KRAFTGROUP company "ChipsAhoy! " Biscuit package appearance (As shown in Figure 5) There is confusion, Constitute unfair competition. Figure 5: ChipsAhoy! V. S. Cookies Figure 5: ChipsAhoy! V. S. Cookies

　　To settle the above disputes, The judgment first states that: "In accordance with "Spanish law against unfair competition" The first 6 article, When assessing whether there is confusion, It is generally considered that the use of distinct elements of text in the appearance of packaging, Can avoid consumer confusion, Is the same thing; Choosing different elements usually avoids the risk of confusion, It's another thing entirely" . The judgment explicitly states that: "Even with a different name, But if the packaging of goods because of its shape, Similar in size and color combinations, There is still a risk of confusion for the average consumer" .

　　but, The court held that "This dispute does not fall into that category, In view of the text 'ChipsAhoy! ' Significant difference between, And in KRAFTGROUP The prominence of the packaging of the company's products, Even if the defendant packaging is similar to the plaintiff packaging, But because of the lack of text 'ChipsAhoy! ' Instead, use generic trade names (Cookies, biscuit——Translator's note) , There is no risk of consumer confusion, Or as 'ChipsAhoy! ' What the cookie makers call, Risk causing consumers to think there is a link" .

　　The court rejected KRAFT GROUP The company requests recognition on similar grounds GULLÓN The company's claim that its biscuit packaging improperly exploits the plaintiff's reputation constitutes an act of unfair competition. That's all, The court stated that: "In this case, Only proof of defendant packaging (Not include 'ChipsAhoy! ' word) Similar to the composition of the plaintiff's package, And took advantage of 'ChipsAhoy! ' Biscuit reputation, To find the defendant guilty of unfair competition. But the plaintiff did not provide evidence to prove this fact. In fact, The one that really enjoys a reputation 'ChipsAhoy! ' trademark, Therefore, only the same or similar mark is used, Capitalize on its famous reputation, It's possible to be guilty of exploiting someone else's reputation" .

　　 [comment]

　　It is unhelpful to interpret the verdict without considering the actual facts of the case. The principle to which an isolated fact may apply, Is not always consistent with the principle that the court chooses to apply based on the specific facts at issue in the case. In addition, Should bear in mind, The court decided the case on the evidence presented by both parties, Rather than general interest or theoretical concepts.

　　An oversimplified interpretation of the final judgment in this case, It may lead to more malicious imitation of three-dimensional trademarks and goods in the future. For example, It is believed that simply changing text elements can avoid being deemed by the court as imitative behavior. That is not what the ruling encourages.

　　Compare the appearance of the disputed package and read the verdict carefully, Can see, The court held that this case differed from general theoretical principles——Changing names on similar goods or packaging designs does not preclude the risk of confusion. The question in this case is, The textual element part of the quoted trademark is the main element of the overall trademark, Compared to other elements, It is the character element that carries the famous nature of the trademark.

　　compile: Liu Dan, Esabarry Legal Counsel

　　source: Esabaril (ELZABURU) Intellectual property rights