Recent Case Law: Thermomix vs Monsieur Cuisine Connect and Moon Boot

THERMOMIX VS MONSIEUR CUISINE CONNECT

Last year, a Court in Barcelona considered that the German supermarket Lidl was infringing Vorwerk’s patent over Thermomix. In essence, Thermomix is a blender with a heating system that allows cooking, and it incorporates as well other functionalities, such as weighing ingredients. From its side, Lidl launched its own “Monsieur Cuisine Connect”, which was considered as competitor, due to the similar functionalities and the lower price. For this reason, Vorwerk sued Lidl to remove its machine from commerce.  

The difference with other cases in which no infringement was found seems to be due to a particular function of the blender that, for safety reasons, stops the engine in case the lid is removed from the mixing bowl while the machine is functioning. Since this function was meticulously described in Thermomix’s patent application claims, Lidl could not deny this accusation, and therefore was found guilty, not just of taking inspiration from Thermomix, but also of copying. Lidl counter attacked by asking for the invalidity of Vorwerk’s patent, since they considered that the patent lacked the novelty requirement and exceeded the claims when validating the patent application in Spain. 

Lidl was nonetheless “found guilty” of infringing Thermomix’s patent, and therefore forced to retire its “Monsieur Cuisine Connect” from the Spanish market. 

However, Lidl filed an appeal against this decision straight after, and early this week, the Court of Appeal of Barcelona revoked the above-mentioned decision. 

The Court found that, as argued by Lidl, Vorwerk’s patent exceeded the claims settled in the initial patent application, and therefore was invalid.  

Moreover, the Court considered that “Monsieur Cuisine Connect” was not infringing Vorwerk’s patent, since it did not have the same security mechanism. The difference lies in that for the Thermomix, it is necessary to stop the engine to take out the lid, whereas in the Monsieur Cuisine Connect, the simple fact of removing the lid is enough to stop the engine. 

For now, Lidl will be able to resume the use of its blender in the course of trade, but it is expected that Vorwerk will lodge an appeal against this decision, in order to prevent the commercialisation. 

PARTIAL INVALIDITY FOR MOON BOOT

The applicant, Tecnica Group, sought for registration of a three-dimensional (3D) trade mark for the shape of their iconic après-ski footwear, Moon Boots. The application designated goods in classes 18, 20 and 25. 

The German company Zeitneu brought an action before the District Court of Venice, acting as EU trade mark Court, to obtain a declaration on non-infringement for the boots they manufactured. However, both the court and a later stage the Court of Appeal, found that there was likelihood of confusion with the Moon Boots, and therefore dismissed the action. 

As a consequence, an application for declaration of invalidity was filed by Zeitneu before the EUIPO. The 3D EUTM was partially declared invalid - for goods in class 25 (Footwear; footwear soles; insoles; heelpieces for footwear; footwear uppers)- first by the Cancellation Division and then by the Boards of Appeal. 

Therefore, Tecnica lodged an appeal before the General Court (GC). The pleas alleged by the Italian company were dismissed on several grounds, including the following.

On the one hand the GC reminded that the criteria for assessing the distinctive character for non-conventional trade marks is the same as for a conventional trade mark. But, on the other hand, the Court said that it would be “more difficult to establish distinctive character in relation to such a three-dimensional mark than in relation to a word or figurative mark”. In other words, it could be more complex for the relevant public, with an average level of attention, to make an association between a shape and its commercial origin.

In this regard, the relevant public should be composed by the consumers of the EU member states in general, since the goods designated in class 25 are not just after- ski, but footwear in general. Therefore, this is contrary to Tecnica’s claim that the informed consumers should be skiers. 

Next, the GC moved to discuss about the assessment of the distinctive character. The distinctive character of a trade mark makes possible to identify the goods from a certain company and distinguish them from the ones of other competitors. In this case, the GC concluded that the sign was devoid of any inherent distinctive character, since “the shape of the contested mark corresponds to the common shape of after-ski boots, which generally consist of a high shaft, often in a light synthetic material, with soles and laces”.

As a conclusion, the 3D trade mark was found to lack distinctiveness, meaning that the relevant public would not distinguish the Moon Boot 3D sign from other after-ski boots. The GC confirmed the BoA’s decision: the EUTM is not valid for the goods included in class 25 (footwear), but still valid for the others registered classes 18 (like bags, handbags and leather) and 20 (Furniture, mirrors, picture frames).  

It is interesting to examine case law regarding non-conventional signs like three-dimensional trade marks. Some months ago, the GC already issued a judgment recognising the  3D shape of the lipstick “Rouge G de Guerlain”.