Spain: Supreme Court confirms the partial nullity of a Registered Community Design for a lollipop container

18 August 2014, Madrid

On 30 April 2014, the Supreme Court confirmed a judgment by the Court of Appeal of Alicante, declaring the partial invalidity of a Registered Community Design (RCD) for a lollipop container.

The dispute was started by the Italian company Perfetti Van Melle, S.p.A., owner of the RCD no. 000721543-0001, a lollipop container comprising the following four views. Perfetti filed a claim against the Spanish company Fiesta, S.A. at the CTM Court for infringement of its RCD. Fiesta denied infringement arguing that its product was significantly different and created a dissimilar overall impression on the informed user. Moreover, Fiesta filed a counterclaim requesting the invalidity of Perfetti’s RCD on the basis that it lacked novelty and individual character. Alternatively, Fiesta requested the invalidity of views 1 and 2 of the RCD.

The CTM Court however confirmed the infringement and dismissed the RCD invalidity request, as Fiesta had not proven that the giant lollipops were containers and not in fact lollipops themselves.

Fiesta filed an appeal against the judgment, which was subsequently upheld by the Court of Appeal of Alicante, therefore revoking the first instance ruling, declaring the partial nullity of the RCD and finding that the remaining views had not been infringed.

Perfetti brought the case to the Supreme Court requesting a judicial review. The procedural statements of the appeal were all flatly rejected by the Supreme Court, declaring that the contested decision did not lack consistency or contain defective reasoning.

The Supreme Court referred in the first instance to the question of specific products to which the designs were applied, stating that normally there is an inverse relationship between the overall appearance of two designs and the similarity to the nature of the products to which they are applied.

In the case at stake, the Supreme Court found that despite being different, the products belonged to the same industry sector and consequently the relevant informed user would be the usual buyer or consumer of such sweets and other directly related accessories.

The Supreme Court therefore confirmed the invalidity of views 1 and 2 of the RCD, as they were reproductions of the usual products to which the RCD is applied and created the same overall impression to the informed user.

In connection with the valid RCD views 3 and 4, the Supreme Court upheld the finding of non-infringement by the Court of Appeal, stating that in comparison to trade marks, the average consumer perceives the sign as a whole, without paying attention to details, whereas the informed user observes the product which reproduces the design more carefully due to his/her personal experience or deep knowledge.


Consequently, the Supreme Court confirmed the findings of the Court of Appeal in the sense that the analysis between designs should be focused on the elements which are different from the general shape of lollipops, and determined that there were enough differences between the RCD and Fiesta’s design to create a different overall impression.

Originally published in DesignWrites 4th Edition.