Mock (culinary) trial at INTA 2017

Dario Palmas

During the 2017 INTA Annual Meeting held in Barcelona this year, on May 23 a “culinary” Mock Trial took place.  Dario Palmas from Franzosi Dal Negro Setti has kindly sent in this summary of the proceedings.

Here's what Dario writes:

"In the context of the magnificent University of Barcelona two parties battled over a famous dish of a famous chef.

The (real) Spanish chef is Nandu Jubany, owner of the one-Michelin-star holder restaurant Can Jubany. The dish is the dessert called "Hunting for truffles" ("Vamos a buscar trufas").
The concept of this dessert is spectacular: the client has to hunt for truffles (with the real dedicated instrument) through leaves, grass and soil. But of course nothing is what it seems, because pine leaves are made of chocolate, soil is made of streusels and the truffles themselves are made of ice-cream.

The plaintiff was Jubany, represented by Mr Vincenzo Jandoli (of Milan-based law firm Franzosi Dal Negro Setti) and Mr. Ramon Oriol (of local law firm Amat & Vidal-Quadras).

The defendant was the fictional company Creative Catering LLC, of Houston, TX, represented by Mr.Miguel Vidal-Quadras (Amat & Vidal-Quadras) and Ms Anna Maria Stein (Franzosi Dal Negro Setti), in both cases separated by strict Chinese walls accepted by the clients of both parties.

The Panel of Judges was composed of Ms Marta Cervera, Director of the Commercial Courts of Barcelona and Judge of Commercial Court Num. 8 of Barcelona; Mr Raul García Orejudo, Judge of Commercial Court Num. 7 of Barcelona and Mr Luis Torrents Fernández-Mayoralas (Amat & Vidal-Quadras).

The plaintiff enforced the following alleged rights:

1. EU denominative trademark "Hunting for truffles" and EU figurative trademark, both in class no. 30 of Nice Classification;
2. the image of "Hunting for truffles" as Community design registration and subject to copyright protection;
3. the recipe as protected by copyright;
4. the gustatory form as protected by copyright.  

"Vamos a buscar trufas"

The contested activity was the defendant’s dessert, advertised on the defendant’s website as "Truffle hunters, A creative concept inspired by the secret and exquisite recipe best Spanish chefs of our time". The advertisement showed a photograph of Jubany’s dish, which also is the EU figurative trade mark.

The plaintiff claimed the infringement by the defendant’s dish of the above mentioned rights and also unfair competition, asking for an injunction prohibiting the reproduction, offering and sale of the contested dessert.

The defendant claimed first and foremost that the alleged rights enforced by the plaintiff were not existent or valid. And secondly that they were in any case not infringed.

Succulent surprise: before the parties started discussing the case (one statement each, followed by one reply), chef Jubany himself, together with his assistant, on a large table placed between the audience and the Panel of Judges, prepared his famous dessert from scratch.

We will never know for sure whether the audience appreciated the parties' discussion or the chef’s show more. But we can imagine.

However, the dessert delivered by the Panel of Judges was the following:

1. the jurisdiction is limited to the Spanish market, since (i) there was no request otherwise from any of the parties and (ii) the EU rights are ...  unified, but their way of protection is different in the Member States;
2. the decision is limited to the advertisement made by the defendant on its website, because the parties failed to provide proof of how the actual contested dish is or look (or taste?) like;
3. the denominative trade mark is valid (it is not descriptive because “truffle” in this case does not refer to the subterranean fungus) and it is infringed by the defendant’s advertisement; in fact said ad (using identical trade mark) creates confusion with the plaintiff’s dish;
4. the figurative trade mark is not valid, because it is not represented by the real shape of the dish (for example the trade mark shows the truffles, whilst the very idea of the dish is to hunt for them, i.e. that they are hidden), but it represents only a still image of the consumption moment; 
5. the copyright on the recipe/dish is confirmed and deemed valid, since the classical concept of “artistic work” belongs to the 19th or even 20th century, but not to the current century where the concept of work of art encompasses any form and shape; and Jubany's dish is without doubts original and creative. However, since no proof of the actual dish offered by the defendant was provided by the parties (especially the plaintiffs, we might add, even if we can imagine that, being the defendant form Texas, USA, probably the plaintiff had no chance to see the actual dessert...) the relevant infringement claim must be rejected, even if there is the suspicion that the defendant’s dish is likely reproducing in some (probably infringing) way the chef’s dessert; but, in theory, the defendant’s dish might also be completely different;
6. the defendant is enjoined from using said ad in Spain with reference to dishes/food.

In addition the lawyers representing the parties also referred to the decision that surprisingly was held the same day by the Arnhem-Leeuwarden Court of Appeal which referred questions for a preliminary ruling to the CJEU relating to the extent to which a specific taste may qualify for protection under copyright law [see here].

We think that this unusual culinary Mock Trial among all the issues dealt with shows at least one important element: an original and creative dish can enjoy copyright protection, probably regardless of the fact whether it tastes good! (For the record: chef Jubany’s dessert tastes like heaven)."