Background of the case

The trademark Schweppes has its origin in United Kingdom. Initially it was registered in the name of Cadbury Schweppes (owner back in time of all the SCHWEPPES´s trademarks in all countries conforming the European Economic Area). Afterwards, Cadbury sold to Coca Cola in some territories of the EU the ownership keeping among others, Spain. Cadbury Schweppes merged into the French company Pernord Ricard, creating a new entity named Orangina Schweppes Group. This company was lastly bought by the Japanese group Suntory. The Spanish and the British entities Schweppes S.A and Schweppes Limited (current owner of the marks at stake), are currently governed by the aforementioned Japanese group.

On May 29, 2014, SCHWEPPES S.A, ORANGINA SCHWEPPES HOLDING BV y SCHWEPPES INTERNATIONAL LIMITED filed a lawsuit against the Appellant RED PARALELA S.L., RED PARALELA BCN S.L. based on the trademark infringement of the Spanish trademarks with Nº 171232 SCHWEPPES and Nº 2907078 SCHWEPPES (figurative) in Classes 32 and 33. The plaintiff has an exclusive license in Spain over those trademarks:

The defendants argued that there was an exhaustion of rights since they were dealing (during 2009-2014) with goods that were obtained in United Kingdom, among other territories. Subsequently, the plaintiff filed a counterclaim based on unlawful and unfair competition acts.

The first Instance Court dismissed the claim as well as the counterclaim which has been now Appealed. The main ground of the Appeal is based on the trademark infringement acts and the exhausted rights. The plaintiff states one more time that there is not a global brand and the non-existence of a unique world-wide image, mandatory requirements settled by the European Court of Justice as to consider the likelihood of confusion among the consumers in relation to the commercial origin of the goods, and therefore to uphold the exhaustion of rights.

The Court has now dismissed the previous judgments in its entirety as follows:

  1. Public access to the advertisement of Schweppes goods (British products) trough Schweppes Limited website, owner of the Spanish trademark. The Court understands that the information provided does not contribute to create confusion on the commercial origin, since this is information is targeting a more professional profile. That is to say, a business partner trying to find the distribution network in UK, who will understand without no doubt that the owner of such a brand in UK is Coca Cola.
  2. Schweppes Limited is distributing and advertising the trademark SCHWEPPES in the social networks in United Kingdom. The body of evidence was not sufficient as to prove this statement. Only a couple of TWITTER publications has been submitted
  1. The use in the institutional advertisement of Shcweppes Limted and Schweppes SA, being those the owner and exclusive licensee of the trademark in Spain, of the image of the British goods. Likewise, it is considered that the body of evidence is not enough as to prove that the owner of the Spanish trademark is using British goods to include them in the marketing strategy.
  1. Irrelevant differences in the way the goods are displayed. The bottles are packaged in such a way as to consider that those are not a copy of the British packaging. In addition, the fact that the texts in the bottle are in English, it is not relevant since the mark is originally from UK, thus it is allowed to evoke such origin.
  2. References to the British origin and the direct link to UK. This statement has been duly proved, however, it cannot constitute a sufficient indication of the link among the owner of the Spanish trademark and the British one.
  1. The parallel trademark strategy. The previous judgment considers that after the assignment of the Coca Cola trademarks, the new owners have applied for similar trademarks for the same goods. In the Appealed judgment, it is stated that it does not seem to be a shared registration strategy, since both owners had not competed during the same timeframe, and overall, Coca Cola has registered trademarks that can be embodied in a reasonable IP strategy.
  2. The special partnership among Schweppes Limited and Coca Cola in the Netherlands. The Court concludes that the existence of a single license agreement among both parties cannot entail the existence a of a more global and general agreement embodying the EU market, but it is considered as a relevant information.
  1. Trade in the EEA of British “tónicas”, where the owner of the trademark is Schweppes Limited. The arguments haven been dismissed by quoting the Conclusion of the General Advocate in paragraph 36 (C-291/16, Schweppes SA against Red Paralela SL) where it is stated that silence of the trademark owner cannot be interpreted as a tacit waiver against the goods import with the same precedence in other EU members in which it may be the owner of parallel rights.

Based on the above, the Appeal is upheld in its entirety and thus the trademark infringement claim.

Immediate consequences: the import, trade and/or storage of Schweppes goods coming from UK is forbidden as the Schweppes International Limited and its related entities are the sole exclusive licensees.

Judgement of July 22, 2019 of the Audiencia Provincial of Barcelona (Civil Chamber) in the matter Nº 114/2009

ABOGADOS BARCELONA abogados en Valencia abogados propiedad industrial IP