New chapter in the fight between Dinosaurus and Galle Sauros

The Provincial Court of Appeals of Barcelona has ruled that LA FLOR BURGALESA, S.L. (“FLORBU”) infringed the “DINOSAURUS” mark (word and mixed) held by GALLETAS ARTIACH, S.A. (“ARTIACH”) in marketing “GALLE SAUROS” biscuits.

Background

ARTIACH filed a claim against FLORBU, considering that marketing the “GALLE SAUROS” biscuits infringed several of its marks, and invoking that they were well-known. The marks that ARTIACH considered infringed were divided into two groups: (i) the word and mixed marks consisting of or containing the term “DINOSAURUS”; (ii) the figurative marks consisting of different dinosaur shapes that in turn correspond to the shapes of the biscuits it markets under the “DINOSAURUS” marks.

ARTIACH also claimed, on a secondary basis, that FLORBU’s actions constituted unfair competition due to confusion, imitation, exploitation of reputation, and misleading practices for consumers.

The Commercial Court no. 8 of Barcelona dismissed the claim in its entirety, concluding that (i) ARTIACH’s marks were not well known; (ii) there was no risk of confusion between the signs at issue; (iii) FLORBU had not committed any act of unfair competition; and (iv) the procedural costs should be assigned to ARTIACH.

Judgment of the Provincial Court of Appeals of Barcelona

Reaching diametrically opposed conclusions to those of the Commercial Court no. 8 of Barcelona, the Provincial Court of Appeals of Barcelona upheld the appeal filed by ARTIACH against that judgment, understanding that the word and mixed “DINOSAURUS” mark is generally known by the relevant sector of the public at which the products under this sign are marketed (mainly buyers of children’s biscuits), based on relevant factors such as sales numbers, the significant investment made in advertising, and the target public’s awareness of the products.

Based on this reputation, the Court of Appeals considers that the degree of similarity between the “GALLE SAUROS” sign and the well-known “DINOSAURUS” mark is sufficient to generate a link between both signs in consumers’ minds, also noting undue use of the well-known mark.

However, the Provincial Court of Appeals does not consider the figurative marks in the shape of dinosaurs infringed, as it fails to note sufficient similarity between the signs at issue. The Court of Appeals understands that ARTIACH cannot seek to monopolize the marketing of dinosaur-shaped biscuits, whatever their external appearance, particularly when the products are aimed at children.

After its analysis, the Provincial Court of Appeals of Barcelona resolved:

• To declare that FLORBU has infringed international word mark no. 616,627 “DINOSAURUS” and mixed Spanish mark no. 2,790,850 “DINOSAURUS” by marketing the “GALLE SAUROS” product in any of its variations.

• To order FLORBU to cease the infringing activity and remove the infringing products, packaging, commercial material, and any other documents used to market those products from the market.

• To order FLORBU to pay 1% of the turnover obtained with the unlawfully marketed products in the five years before the claim was filed and until the marketing is effectively ended.

• Not to assign the first-instance costs.

By: Cristina Albiol