The EUTM Court of Appeal of Spain grants Bacardi an injunction to protect the reputed Grey Goose brand against Alvisa under Article 9(2)(c) EUTMR
On 22nd December 2022, the EUTM Court of Appeal in Spain set aside the lower court’s judgment in the Grey Goose/MontBlanc case, between Bacardi (the claimant) and Alcoholes y Vinos, S.A. (“Alvisa”, the defendant). The EUTM Court of Appeal dismissed the infringement action and, in doing so, has upheld Bacardi’s appeal and declared that the MontBlanc vodka trade dress infringes Bacardi’s reputed EUTMs Nos. 890.134 and 17.563.801 registered for alcoholic drinks and vodka, respectively. Accordingly, Bacardi has been awarded a pan-EU injunction, orders to recall and remove the product, a publication of the judgment on the defendant’s websites and social media at its own cost and a declaration of causation of damages to be claimed following separate court proceedings.
As it has been consistently doing over the last few years in other cases —judgment Nos. 247/2017 of 11 May 2017 “Jaggermeister/Wunderlich”; 163/2019 of 18 February 2019 “Beefeater/Sota Bastos” and 750/2020 of 30 June 2020 “Monster/Hybrid Energy”—; the EUTM Court of Appeals of Spain has highlighted that, under the EUTM system and, in particular, Article 9(2)(c) EUTMR, registered EUTMs are protected against similar signs used in relation to identical, similar and dissimilar goods, where the asserted EUTM has a reputation in the EU and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EU trade mark.
The graphic representation of the signs at issue is the following:
Even though the Court stated that there is no likelihood of confusion between the asserted EUTMs and the Montblanc vodka trade dress, the Court of Appeal holds that there is a certain degree of visual and conceptual similarity between the marks. In particular “the mountain and water on the asserted trademarks; mountain and ice in the case of Alvisa”, and “the overall design through the location of word and device elements on a framework of a frosted glass bottle on which blue and grey tones are projected to build relatively similar images“. As a result, the relevant public would make a connection between the signs, that is to say, establish a link between them, even though such link does not lead to confusion.
In assessing the existence of this link, the Court took into account several factors. In addition to the visual and conceptual similarity between the signs, the Court also noted that the goods are identical; the relevant section of the public is the same given the nature of the goods; the sale distribution channels of the goods are identical; and the strength of the asserted EUTMs’ reputation in the EU.
As for the type of damage at issue, the Court held that the use of the MontBlanc vodka bottle takes unfair advantage of Bacardi’s reputation in their asserted EUTMs without due cause and seeks “to take advantage of its premium nature”. The Court held that use of the MontBlanc bottle would mean Alvisa was“benefitting (…) from their power of attraction, reputation and prestige”, “without any effort and without paying any financial compensation”, so riding on the coat-tails of the asserted EUTMs. The judgment stresses that Bacardi has submitted conclusive evidence of two important facts allowing the Court to conclude the existence of such link between the signs which leads the relevant public to make a connection between them. Firstly, the fact that Alvisa used a picture of the Le Logis Chateau in France on its website —an asset which has been consistently used by Bacardi to market, promote and advertise its Grey Goose brand and the asserted EUTMs— to promote its MontBlanc vodka under the infringing trade dress. Secondly, the evolution of the different designs of the MontBlanc bottle, which went, “without any explanatory logic”, from a design which was completely different from the asserted EUTMs, to the controversial version, which leads the relevant consumer to establish the mentioned link between the signs at issue.
This decision demonstrates the effect of the EU trademark enforcement system. It is worth noting that pursuant to Articles 125 (3) EUTMR and 82(3) EU Design Regulation, the Spanish EUTM and Designs Courts have international jurisdiction to hear cases on EUTM infringement and non-infringement, if neither the defendant nor the plaintiff is domiciled or has an establishment in any Member State of the Union.