Background of the case

The Asociación Empresarial Agrupación de Clochineros de los Puertos de Valencia y Sagunto (“ACPV”) filed a lawsuit against Clochineros de Valencia S.L. on 22 January 19, for unlawful use of the Collective Mark No. 3565774 CLÓCHINA VALENCIANA, and Collective Mark No. 3565754, CLÓCHINA DE VALENCIA, which is reproduced in the corporate name of the defendant CLOCHINEROS DE VALENCIA S.L, meaning that there is a trademark infringement, claiming among others, the corresponding compensation based on the damages and the cease on the use of the infringing signs.

ACPV is the proprietor of the two national collective marks mentioned above for Classes 29, 31 and 35, which cover services relating to mussels trading or clóchina from Valencia, a variety of mussel called mytilus galloprovincialis. Since the infringing marks are under the collective marks regime, only members of the ACPV are authorized to use them.

The defendant, Clochineros de Valencia S.L., sells a mollusk in the stores of a well-known Valencian supermarket being identified by the trademark “Clóchina valenciana” and with its company name, which may generate, in the plaintiff’s opinion, a risk of confusion with the company’s origin and associate the origin with the ACPV. Furthermore, the applicant claims that the use of the term Clochineros de Valencia will most likely mislead the consumer as to the geographical origin of the product.

Concerning the defendant’s arguments, it is stated that, under the applicable law, a collective mark consisting of a geographical indication may be used by third parties if it is done lawfully. Clochineros de Valencia S.L. does not produce Valencian moussels, but is merely a dealer being the goods produced by a third party. In any event, there is no likelihood of confusion with the applicant’s marks solely because of the use of the word ‘clóchina’ on its products. Nor is there any likelihood of confusion with its company name.

Appeal’s decision.

The application is dismissed “to recognise as lawful the use made by the defendant of the collective mark ‘Clóchina valenciana’, which will determine the absence of infringement of the collective marks ‘Clóchina de Valencia’ and ‘Clóchina valenciana”. Consequently, the use by the defendant of its company name ‘Clochineros de Valencia’ is considered to be fair.

In short, this use complies with the limitation laid down in Article 62. 3 of the  Trade Marks Act, since it has been duly established that the products marketed and identified by ‘Clochineros de Valencia’ with the term ‘Clóchina de Valencia’ correspond to the variety of clotxina mytilus galloprovincialis grown in Valencia, it has not been proved that the defendant has another purpose, such as to degrade the value of the trademark or to qualify the position of the defendant in an unjustified manner with respect to that which the plaintiff may hold in the same market or to parasitize its prestige in an improper manner or that there is unfair use of the trademark.

Judgment of March 6, 2020, Commercial Court of Valencia, Section 3, Appeal No. 301/2019