About cookies and three-dimensional trademarks. European General Court judgment of May 20, 2020 (Twins Cookie Sandwich)

A few years back, on September 2, 2015, the Spanish trademark scene was rocked by a Supreme Court judgment that, among other notable issues, addressed the use of three-dimensional trademarks and the scope of their protection (OREO case, Kraft Foods Global Brands v. Galletas Gullón, Judgment 4245/2015, ECLI:ES:TS:2015:4245).

More specifically and with regard to what is at stake here, in that decision the Supreme Court ruled that Spanish trademark 1997588 (reproduction of a sandwich cookie comprising two black cookies and a white filling with no trade name) had expired due to lack of use, on the grounds that the use of the product with the trade name OREO specifically altered the mark as it was registered, since the trade name was what made the mark distinctive. It also ruled that EU trademark 8566176 (cookie as described above but with the name OREO stamped in the center) and Spanish trademark 2845539 (package with representation of the cookies and the trade name OREO) had not been infringed, even though it considered them to be renowned, on the understanding that the absence of Gullón’s trade name on its cookies meant that the public would not relate the cookies to the registered trademark and, in the case of the package, because even though the public might make that relation, the court found that it did no harm to the recognition and distinctiveness of the brand and was not unfair use of them, because the Gullón package was labeled Morenazos, which is clearly distinct from OREO.

The Supreme Court judgment is of enormous interest, although if we bring it up here it is to compare some of its conclusions with those of the European General Court in its recent judgment of May 28, 2020, of the Twins Cookie Sandwich case (ECLI:EU:T:2020:229).

In this case, the conflict arose around Gullón possibly registering a figurative sign consisting of an image of two sandwich cookies on a blue background with various names (Gullón, Twins, Cookie, Sandwich), which is opposed by EU trademark 8566176 and Spanish trademark 2845539: i.e., the same brands the Spanish Supreme Court considered in its judgment. However, the European General Court ruled in favor of an overall examination of the trademarks without finding that, in the case of trademark EU 8566176, the OREO name is the dominant element. The General Court acknowledged the trademarks’ recognition but, unlike the Supreme Court judgment, it found that this recognition does not come just from the OREO name, but is extended to the shape of the product. The General Court ultimately concluded—based on an analysis of the factors considered by the Appeals Chamber—that the relevant public could establish a link between the brands in question and that, in view of the renown of the OREO brand, the fact that the brands identify the same products and that they are sold through the same channels, and given the public’s low attention level, the trademark in the application could obtain an unfair reputational advantage from the competing brand, by inducing the public to attribute the same characteristics attributed to OREO products to its own products.

As can be seen, the European General Court’s conclusion is the diametric opposite of the Spanish Supreme Court’s conclusions on the same issues in its judgment. It is true that the registration lawsuit is not the same as the infringement, but that difference does not explain the vastly different results. It now remains to see if there will be new chapters in this dispute. For now, what seems clear is that three-dimensional trademarks remain a source of debate.

By Jorge Llevat