The dispute the sapphire blue as notorious unregistered case Bombay Saphire vs Goa

In a long judicial procedure terminated by judgment of the same Supreme Court No. 95/2014 of date 11/03/2014 is pronounced near the possible exclusive attribution of the sapphire blue to the product marketed by Bacardi under the brand BOMBAY Saphire and the Possible acquisition of notoriety as an unregistered brand.

In this sense concludes the judgement of cassation what was exposed in the first instance by the Court of the mercantile of Community trade marks of Alicante and specifically, although the notorious character of the plaintiff’s marks is recognized, it lacks this condition the blue color Sapphire determined under the reference of Pantone 306-C which constitutes the element of that Mark has not acquired the distinctive character with the notoriety that the part pretends.

The judgement of cassation alludes to the first instance saying that the same does not deny that a color, in this case the sapphire blue can constitute a mark but if in this case it is not registered that it has been able to acquire also the condition of notorious.

Under the doctrine of the LIBERTEL judgment of May 6, 2003; A certain color may have a distinctive character for certain products or services in order to do this, the general interest and the right not to restrict to third parties the use of colors…

The judgment appealed recognizes the notorious character of the claimant marks but denies this condition to the color per se blue pantone C 306 Blue Sapphire, because it has not acquired the distinctiveness with the notoriety that the party claims and this sustained on a series of facts Tested in the lawsuit and among which it is worth highlighting. In the Spanish market Bacardi was the first to launch a blue bottle for an alcoholic beverage in the year 1994. In the following years many brands have started to use bottles of this blue color or with this element or part with names as well as blue GIN, blue etc… fact that has coincided with the commercial expansion of the Genevas considered as category “Premium “or higher, at present it is a fact the use of blue color or shades in many brands of Geneva such as Larios 12, Blue Ribbon, Magellan, Blue Coast, Eaton Blue Gin, Citadelle, the London gin, No. 1 Original gin.

With regard to the acquisition of the character of notoriety for a brand there is a jurisprudential criterion acquired by interpretations of sentences and doctrine that conclude that the requirement of the notoriety of the mark is its diffusion among the public interested in The products and services covered by the trade mark and the sectors concerned.

Thus between the facts tested is recorded by documentary evidence of a low degree of diffusion among the public concerned as the market study conducted shows that over 70% of people over 18 years of age consumers in the last 12 months of Some alcoholic beverage does not associate the sapphire blue to a drink like gin and only 0.7% associate it with the BOMBAY brand…

Given the great importance and legal content of legal matters in terms of trademarks that contains this case in upcoming blogs we will continue to depart the sentence of cassation alluded that has no waste in addition we can say with full satisfaction that it is Of a case co-managed by Alesci Naranjo Industrial property as the defendant is the proprietor of the brand GOA our client as the final triumph up in cassation as a last resort to the giant Bacardi alcoholic beverage fills us with pride and Professional satisfaction.

by Paola Alesci Naranjo
Lawyer and advisor specializing in PI