Brussels Commercial Court bares its teeth and protects shape of dog food

In a recent judgment on the merits, the President of the Brussels Commercial Court has held that the X shape of Mars’ Dentastix dog food constituted a valid three-dimensional (3D) Community trademark and a valid Benelux design. Both IP rights had been invoked cumulatively against a Belgian company commercialising similar X-shaped chew sticks for dogs on the European market.

Plaintiff’s product                 Defendant’s product

CTM 003844164                  Benelux design No 35235

Concerning the validity of the 3D trademark, the court ruled that only a shape that departs significantly from the norm or customs of the relevant sector, and thus fulfils the essential function of indicating origin, has a sufficiently distinctive character and may be registered as a trademark. In this respect, the court’s ruling was in line with the Court of Justice of the European Union’s jurisprudence (see Mag Instrument v OHIM (shape of flash light) (Case C-136/02 P), Paragraphs 30 and 31; Deutsche SiSi-Werke v OHIM (shape of a stand-up pouch for fruit juices) (Case C-173/04 P), Paragraph 31).

As a mark’s distinctive character must be assessed in concreto, having regard to its application date (here, May 17 2004), the goods covered (here, goods in Classes 3 and 31) and the norm or the shapes common in the sector at that time, Mars demonstrated that the norm or customs in the European Union at the time of the trademark application consisted only of the usual chewing ‘bones’ or the ordinary elongated chewing sticks, possibly with some sort of relief on them.

Assessing the infringement, the court held that there was not only a risk of confusion under Article 9(1)(b) of the Community Trademark Regulation (207/2009), but also infringement under Article 9(c).

The court stated that the intensity, the geographical extent and the duration of the use, as well as the size of the investments made in promoting the 3D mark, showed without doubt that the mark had acquired a reputation in the European Union’s most significant markets.

Further, the court found that, visually, the mark and the infringing sign produced a similar impression on consumers. As a consequence, consumers would make a connection between the mark and the sign.

The court also held that the defendant sought to free-ride on Mars’ DENTASTIX mark and to benefit from its power of attraction. The court found that the choice of the X shape could not be considered to be a coincidence.

Concerning the Benelux design rights (although the design’s validity was not formally disputed), the defendant argued that the X shape was exclusively dictated by the desire to obtain a technical result (ie, preventing the sticks from rolling away and providing optimal cleaning of the interdental spaces). The court did not agree with this argument. On the contrary, based on the abundance of examples about the appearance of dog food, the court held that there was a high degree of freedom when designing chew sticks and that the parties’ designs did not produce a different overall impression on the ‘informed user’. While the court defined the ‘informed user’ as a consumer buying dog food (typically someone showing a relatively high degree of attention), it also referred to the fact that dog food is a fast-moving consumer product often grabbed hastily by consumers from supermarket shelves. The minor design differences would therefore not be sufficient to produce a different overall impression on the consumer.

Finally, the court also condemned the defendant on the basis of the Belgian legal provisions on (un)fair market practices - ie, the court found that the defendant had engaged in unlawful ‘parasitic’ behaviour by exploiting and appropriating the goodwill that Mars had acquired in its Dentastix product.

The court subsequently issued a pan-European injunction and ordered the defendant to cease the commercialisation of the infringing X-shaped chew sticks.

The case is of interest because, although there is some case law concerning the protection of food and drink packaging, there is very little jurisprudence concerning the protection of the shape of the food itself. It is also interesting because it shows that it is possible to obtain a cease-and-desist order on the merits in Belgium within a relatively short period of time.

Paul Maeyaert, ALTIUS, Brussels