Nestlé outsmarted in Smarties ruling

Denmark

In Société des Produits Nestlé SA v Master Foods AS (Case 159/2001), the Danish Supreme Court has held that tubular packaging is a standard shape for confectionary packaging. Accordingly, it (i) rejected Nestlé's claims of trademark infringement, and (ii) ordered the cancellation of its trademark registration for this shape.

In 1997 Nestlé, which markets chocolate sweets under the trade name Smarties, secured a trademark registration for its tubular packaging. It launched a court action against Master Foods on the grounds that the marketing of M&M minis in tubes infringed Nestlé's trademark rights. Nestlé also called for other confectionary manufacturers to be prevented from marketing chocolate sweets in tubes.

In turn, Master Foods argued that (i) the tube was a basic geometrical figure and therefore could not be protected under trademark law, and (ii) Nestlé's registration should be deleted from the Trademarks Register.

On appeal from the Maritime and Commercial Court, the Supreme Court ruled that Nestlé's Smarties tube was not entitled to trademark protection and, therefore, no trademark infringement had taken place. The court reasoned that, as it is common practice for sweets and confectionary to be sold in cylindrical tubes, the Smarties tube was to be regarded as a basic form of packaging. Granting exclusive trademark rights in a tube shape would prevent other manufacturers from using this standard form of packaging.

Accordingly, the Supreme Court ordered that Nestlé's registration be cancelled.

Mads Marstrand-Jorgensen, Norsker & Jacoby, Copenhagen

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