3D mark cancellation clarifies scope of protection


On February 5 2010 the Supreme Court of the Netherlands upheld a decision of the Court of Appeal in which the latter had ordered the cancellation of three-dimensional (3D) mark owned by Kraft Foods.

Since 2001 Mars and Kraft have been involved in a legal dispute over Mars' use of a triangular shape for its Wave product. Kraft requested injunctive relief to prevent Mars from using such a shape for the Wave packaging on the basis of:

  • a 3D mark consisting of a triangular shape (International Registration 711078); and
  • various other TOBLERONE marks (including the 'Matterhorn block' and the shape of the Toblerone sleeve).

In response, Mars filed a claim for the cancellation of Kraft's triangle mark on the grounds that it lacked distinctive character.

On May 8 2002 the district court issued an injunction preventing Mars from using a triangular shape for the packaging of its Wave product. Mars' claim for the cancellation of the triangle mark was dismissed. The court concluded that the triangle mark had acquired distinctive character through use as part of the Toblerone sleeve. Mars appealed.

On January 3 2008 the Court of Appeal held that the triangle mark was not inherently distinctive for chocolate products. Therefore, Kraft had to demonstrate that its mark had acquired distinctive character through use.

The court concluded that the documents submitted by Kraft (ie, marketing and sales data relating to the shape of the Toblerone sleeve, as well as two consumer surveys) did not demonstrate that the mark had acquired secondary meaning through use. The court rejected the proposition that a part of the Toblerone sleeve could, on its own, have acquired secondary meaning. Consequently, the court concluded that the Benelux part of the registration for the triangle mark should be cancelled on the grounds that the mark lacked distinctive character. Kraft's claims based on the triangle mark were thus dismissed.

The court also rejected the additional claims brought by Kraft on the basis of its TOBLERONE marks, finding that:

  • the parties' marks were not sufficiently similar; and
  • there was no likelihood of confusion or dilution.

On appeal, the Supreme Court of the Netherlands affirmed the decision of the Court of Appeal. Consequently, Kraft was ordered to delete the Benelux part of the registration for its triangle mark from the Benelux Trademarks Register. Moreover, Kraft's claims that the Wave packaging infringed its trademarks was dismissed. Finally, Kraft was ordered to pay the legal costs pertaining to the Supreme Court proceedings (€31,093.02).

The decision clarifies the scope of protection afforded to abstract 3D marks, and defines the level playing field in the confectionery sector. A 3D mark will become unavailable for use by competitors only where it has acquired distinctive character through use.

Hub Harmeling, Freshfields Bruckhaus Deringer, Amsterdam

The author acted for Mars in this case

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