Kraft's mark cancelled and Mars' mark partially cancelled in chocolate dispute

The First Instance Court has cancelled Kraft’s registration for the trademark M, and has also partially cancelled Mars’ registration for the trademark M&M (Cases T 14294-09 and T 7359-10).

Multinational companies Kraft and Mars have sued and countersued each other in Sweden in a dispute involving the trademarks M and M&M. Kraft has sold its chocolate-covered peanuts under the trademark M since 1957, while Mars started to market its M&M's chocolate in Sweden in 2009 (although the brand dates from the 1940s).

Kraft requested that Mars’ trademark registration be cancelled in full (or, alternatively, in part). Mars counterclaimed that Kraft’s trademark registration should be cancelled.

Kraft was of the opinion that Mars’ trademark should never have been registered, since it was confusingly similar to Kraft’s trademark, which had been used extensively and was already registered. Further, Mars had not used the trademark for all the goods for which it was registered, and the registration was in breach of a contract between the parties dating from 1989. Mars, in turn, claimed that Kraft had not used its trademark during the past five years.

The court cancelled Kraft’s trademark on the grounds that it had not been put to use in its registered form. However, the trademark had been used extensively in another form, which differed from the registered trademark in that it consisted only of the letter 'M' without any figurative elements. The court stated that the trademark which had been put to use lacked any distinctiveness. The overall impression was not the same as that of the registered trademark. The difference was considerable and, therefore, the trademark could not be regarded as having been put to genuine use.

Further, Kraft’s trademark was considered to be detrimental to Mars, since Kraft had used it as the basis of an encroachment trial against Mars. According to Swedish trademark law, since Kraft’s trademark had not been put to use, it did not constitute an impediment against Mars’ trademark registration.

The court stated that Kraft did not have exclusive rights in the mark M. The fact that the mark M in a certain form had a high degree of distinctiveness could not, on its own, lead to the conclusion that the mark was associated with the goods for which it had been used.

The court ruled that Mars had made genuine use of its registered trademark during the past five years, since the mark as used differed only slightly from the registered trademark.

Since Kraft did not have exclusive rights which could have created an impediment to Mars’ trademark registration, Kraft’s claim that the trademark should be cancelled in full was dismissed. However, Mars' trademark was partially cancelled: Mars retained its registration for non-medical confectionary, chocolate cream and chocolate.

The decision shows that a mark should be used in the form in which it was registered, and that the scope for using the mark in a different form is very limited. Interestingly, Kraft’s legal representative for Swedish IP matters, Albihns.Zacco, had previously provided the same services to Mars. Due to a merger between Albihns, which represented Mars, and Zacco, which represented Kraft, Albihns.Zacco resigned as Mars’ representative and filed writs of summons against Mars on behalf of Kraft. This led to Albihns.Zacco being excluded from the Association of Swedish Intellectual Property Law Firms.

Tom Kronhöffer and Gabriella Kiluk, von lode advokat ab, Stockholm