When 'free' comes cheap & Thermomix patent beats imitation Lidl

 The "free" is in fashion and the owner of the Spanish brand who registered it congratulations. The Supreme Court confirms that the trademark was not registered in bad faith in Spain, despite its owner knowing the existence of the previous Turkish trademarks:

The Turkish brands had not been used in the Spanish market, which prevented them from being considered as well known in Spain. However, it was proven in the trial that they were not unknown to the defendant, since he himself supplied products to the Turkish company since 2011.

Hence, there is such a similarity between the Spanish trademark registered by the defendant and the Turkish ones. It would be difficult for anyone to think that the registration of the Spanish trademark was the result of chance when the font used, the "sandwich" and the combination of colors are practically identical.

However, the Supreme Court has confirmed that the registration was not carried out in bad faith (Sentence 3963/2020, of November 23). And he supports it with the following arguments:

The main argument is that the owner of the Turkish trademarks did not prove its intention to expand into the Spanish market. From which the court concludes that there is no use of the notoriety of the plaintiff's trademarks, to the benefit of the defendant, since the former were totally unknown in Spain when the Spanish trademark was applied for.

It is also argued that the registration was not speculative since the defendant did not register it to sell it to third parties, but to exploit it himself in certain corners, such as the one in the photograph.

Finally, it is argued that the defendant did not intend to block the entry of the Turkish trademarks into Spain.

Well, here we must disagree. It is difficult to think that the entry of the Turkish brand is not being impeded by the following sign:

when the registration of this sign has been requested in Spain:

It is well known that both brands could not coexist in the same territory since the risk of confusion would be more than evident. Which would mean that the Spanish Patent and Trademark Office could deny the registration of the sign to the Turkish owner.

Therefore, as unfair as it may seem to us, the truth is that the owner of the Spanish trademark has exclusive rights in Spain over it.

This matter, which may seem curious and even bordering on the picaresque of a clever dealer, is not trivial. Let us recall, among others, the case of the American cosmetic brand "MAGIC MINERALS", whose owner had to oppose the application for the European Union brand "MINERAL MAGIC" presented by its British distributor. As with the first scenario, the similarities between the marks were not random, since the applicant for the European Union mark was the distributor of the American mark.

However, in this case, the distributor did not register the same trademark, but instead changed the order of the terms. This fact has brought the matter to the Court of Justice of the European Union. Thus, in a judgment of November 11, 2020 (c-809/18), it has been resolved that what the rule intends is to protect the priority holder, both when the trademarks are identical, and when the trademark requested by the agent or representative be similar.

And then the following question arises: when are we dealing with an agent or representative? According to the aforementioned European court, when there is between the parties "a relationship of trust that imposes on the applicant for the trademark a general obligation of trust and loyalty" with respect to the interests of the owner of the earlier trademark.

This broad interpretation should leave us more reassured. However, we have recently come across Spanish company that has seen how its trademark had been registered in Saudi Arabia by its distributor in that territory. We are no longer in the scope of the European Union, so things are complicated since the Spanish company does not have evidence of the use or well-known knowledge of its brand in the Saudi market, since it has just entered that market. Nor can you register your trademark because your distributor's application would block it.

To do? Don't panic! The solution to the problem is to contact a good expert in trademark law in that country to help us defend a situation that seems unfair but that, perhaps, we have to assimilate that, in certain cases, it is legal. That's why sometimes free is cheap.

The commercial courts of Barcelona have declared that the Monsieur Cuisine Connect kitchen robot sold by LIDL infringes the Thermomix patent. They order LIDL to recall the machine from the market.

VORWERK, owner of the Thermomix food processor, was taking on LIDL supermarkets for the sale of its Monsieur Cuisine Connect food processor. This sold them in Spain, since 2019, at a very competitive price: € 350, while the Thermomix is ​​worth € 1,250.

That same year, VORWERK sued LIDL for patent infringement. LIDL countered, asking in a "counterclaim" for the Thermomix patent to be declared void due to "lack of novelty and inventive step".

JUDGMENT OF THE COMMERCIAL COURT

The Barcelona Court Sentence rejects LIDL's “counterclaim”: it considers that the Thermomix robot patent is valid: the novelty and inventive step requirements concur. In addition, it condemns LIDL, for patent infringement: its robot reproduces each and every one of the characteristics of the Thermomix. With its sale, LIDL carries out acts of direct exploitation of said invention, which are prohibited.

Therefore the LIDL robot is a violation of the exclusive rights of VORWERK, owner of the patent. Condemns the supermarket chain not to market its robot "Monsieur Cuisine Connect"; to withdraw all copies of the machine from the market; and to indemnify Vorwerk.

TECHNICAL DISCUSSION ON THE PATENT AND ON THE IMITATIVE PRODUCT

The discussion has been very technical. Regarding lack of novelty and inventive step: Was there something similar to the Thermomix before VORWERK patented it? Regarding the LIDL imitation: What characteristics of the Thermomix were protected by your patent and could not be imitated? Were the differences between the LIDL product and the VORWERK patent significant?

The Judgment elucidates these technical issues, based on the analyzes carried out by experts. It is important to employ specialized experts in patent lawsuits.

The technical aspects that have served as the basis, for the Judge to have considered proven the infringement of VORWERK's exclusive right, on its robot, based on its patent, have been: the control of the movement of the glass, while the products are cooked; your ability to weigh accurately; the sealing of the vessel; and stopping the robot, if the lid is opened.

Commercial Courts are Courts of First Instance. So the Judgment can be appealed to the Provincial Court of Barcelona. Its Section 15 is famous, in terms of patents, trademarks and intellectual property.