Revocation of trademarks in dairy sector

In its Judgment of October 14, 2019, the Supreme Court found in favor of “Torta del Casar,” partially upholding the revocation of a competitor’s brands based on non use.

The dispute revolved around the lawsuit filed by the Protected Designation of Origin “Torta del Casar” against Quesería Tierra de Barros S.L. in which, among other things, the complainant requested the total revocation of the brand “Tortissima” and the partial revocation of the brand “Torta de Barros,” both owned by the defendant and registered under class 29 for “milk and dairy products,” based on the lack of genuine and effective use in the market during the previous five years for all products covered by the registration.

Although the case was initially dismissed at the first hearing and in the appeal, the Supreme Court upheld the partial revocation of both brands, understanding that genuine and effective use had been made regarding just some of the products for which the trademarks had been registered.

To reach this conclusion, the Supreme Court turned to the case law of the Court of Justice of the European Union and recalled that, in effect, the effective use of a brand for just some of the products for which the trademark is registered implies protection only for the sub-category covering the product or products for which that trademark has been effectively used.

The judgment also highlighted the breadth of categories for which the products in question had been registered. In this regard, it understands that “milk and dairy products” is a broad enough category to encompass different independent subcategories without proving arbitrary.

All in all, having demonstrated the use of the disputed brands only for cheeses within the class, the Supreme Court understands that such products can be included within the subcategory “dairy products,” which have sufficient differentiation in relation to the product “milk,” which is why the partial revocation of the brands in relation to that product was upheld (the use of which by the respondent under the brand names in question was not proven).

The judgment does not accept that the revocation of the brand name “Tortissima” should be extended to all dairy products except for cheese. It was understood that the subcategory “dairy products” is not broad enough to prevent the real and effective use of cheese from not implying the protection of that subcategory in its entirety, arguing in this regard the difficulty of classifying dairy products in any specific subcategory.

Finally, in line with the judgment issued by the provincial court of appeals, the Supreme Court considers that the term “torta” to refer to cheese is a generic name within the designation of origin “Torta del Casar,” and not a traditional name that designates a foodstuff originating in a given location. Therefore, it rules against the possibility of protecting the term “torta” in isolation and confirms the dismissal of the proceedings to annul the brand name “Tortissima” for dairy products on the basis that it is allegedly in conflict with the designation of origin “Torta del Casar.”