A judgment leaves Asturias without the exclusivity on its famous cider bottle

Friday, 11 of October of 2019

From now on, the famous bottle of Asturian cider (popularly known as "bottle mold of iron" or "bottle of Gijón") created in 1880 by the Gijón stained glass window La Industria, could be used to bottle the traditional drink anywhere. The present dispute has its origin in the lawsuit filed by the Asociación de Sidra Asturiana (ASSA) against the Cantabrian cider producer Jesús Gómez Solórzano, in which it denounces (i) the infringement of its three-dimensional Spanish marks no. 2.313.628 and 2.313.629, in which the "iron mould bottle" is reproduced, as well as (ii) the commission of acts of unfair competition consisting of confusion, imitation and exploitation of its reputation.

The defendant requested the dismissal of the lawsuit and, by way of a plea, the declaration of nullity of the mentioned trademarks as they were affected by the absolute prohibitions of articles 5.1.a, b) and e) of the Trademark Law).

The Commercial Court No. 1 of Santander, in its Judgment of September 3, 2018 (ECLI: ES:JMS:2018:2180), dismissed in its entirety the complaint filed, agreeing to annul the trademarks of the plaintiff. Although it rejects the invalidity action based on article 5.1 a) -impossibility of being constituted as a trademark- and b) -lack of distinctive character-, surprisingly the granted the application with respect to paragraph e) -form necessary to obtain a technical result-. Specifically, it argues that registered trademarks are invalid since they fulfil a technical function, for which it relies on the technical report submitted by the applicant - with the intention of proving their distinctiveness - on which it is based that the 'iron mould bottle' has that shape in order to (i) withstand the pressure on the cork of the carbon dioxide of natural cider; (ii) facilitate pouring by slowing down the speed at which the cider leaves the cider; and (iii) protect the cider from the harmful effects of light by using a dark green colour. Finally, it is concluded that the bottle emerged as an evolution of a mould which had been the subject of a patent extinguished in 1835, the bottle "iron mould" being a "technical innovation".

Regarding the acts of unfair competition alleged by ASSA (articles 4, 6, 11, 12 and 32 of the Law of Unfair Competition), the Judge agrees to dismiss the petition, since he understands that (i) the law of unfair competition is used in the lawsuit in a residual way to the trademark infringement, and (ii) rejects the existence of acts of confusion or imitation as well as of taking advantage of the reputation of others, since, on the one hand, there is no evidence of the notoriety or acquired distinctiveness of the bottle, nor is there any doubt as to the origin, geographical location or commercial origin.

Faced with the resolution issued by the Commercial Court the ASSA files the corresponding appeal, which is dismissed by the Cantabria Court of Appeal which confirmed the Judgment of first instance.

We will have to wait to see if ASSA decides to appeal to the Supreme Court to defend its interests.