According to the Spanish Supreme Court, three-dimensional marks consisting of the shape of the product or its packaging are not considered to be genuinely used when used in conjunction with a highly distinctive word mark.

Kraft Foods Galletas, S.A. (now Mondelez España Galletas Productions, S.L.), subsidiary of Kraft Foods Global Brands LLC (now Intercontinental Great Brands LLC) owned a three-dimensional Spanish trademark filed in 1996 consisting of the shape of the well-known “Oreo” biscuit with an embossed pattern on the upper side but no word elements. The mark is shown below on the left. On the right is an image of the biscuit as it actually looks, namely, with the word “OREO” in the center of the biscuit:

Oreo1Oreo2

The shape as actually used (i.e. with the word OREO) is also registered, as is of course the word mark OREO (both as CTMs).

Based on its earlier CTMs and the Spanish mark shown above as well as on its earlier CTM referred to the Oreo packaging, Kraft sued the Spanish company Galletas Gullón (“Gullón”) in the CTM Court in Alicante for trademark infringement and unfair competition for marketing, under the brand “Morenazos”, the following product:

Oreo3

In the first and second instance, Kraft´s action was essentially successful – Gullón’s use was enjoined and damages were awarded. However, with its almost 50-page ruling of 2 September 2015, the Supreme Court annulled the decision of the second instance and dismissed Kraft’s action against Gullón in its entirety. In addition, the Spanish 3D mark in the name of Kraft was revoked due to lack of use.

The Spanish Supreme Court referred to the CJEU rulings of 25 October 2012 (C-553/11) “Rintisch”; 18 April 2013 (C-12/12) “Colloseum Holding” and of 18 July 2013 (C-252/12) “Specsavers”. However, in spite of these rulings, the Court considered the inscription OREO to be essential. It held that the distinctive strength of the 3D mark consisting exclusively of the shape of a biscuit was very limited, lying only in the particular embossed pattern on the surface of the biscuit. Therefore, it concluded that the distinctive character of the 3D mark as registered was altered significantly with the incorporation of the word OREO, which moreover is very distinctive and indeed a well-known brand.

Owners of 3D marks consisting of product shapes or packaging must therefore bear in mind that, in spite of Colloseum and Specsavers, genuine use of these marks continues to be a challenge. Evidence of the (independent) distinctiveness of the shape mark is often indispensable for convincing courts that the shape mark is genuinely used in the presence of other, often highly, distinctive elements of the branding.

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