Nestlé is refused exclusive rights in tube shape for confectionery

In Société des Produits Nestlé SA v Master Foods AB (Case 4483-2001), the Swedish Supreme Administrative Court has refused Nestlé's application for leave to appeal the decision of the Court of Patent Appeals in which Nestlé's trademark registration for the get-up of its SMARTIES sweets packaging was rejected.

Nestlé applied to register the get-up of its tube-shaped packaging as a trademark for confectionery and chocolate products, without any disclaimer for the shape. Master Foods found this unacceptable and filed an opposition, which the Patent and Registration Office (PRO) upheld. Nestlé appealed.

The Court of Patent Appeals affirmed the PRO's decision, even though Nestlé:

• restricted the list of goods and services to comprise chocolate dragées only;
  
  
• restricted the registration to a package of a specific diameter and length; and
  
  
• filed market surveys and affidavits arguing, among other things, that the mark had acquired a reputation and had been registered in a number of countries.

The court noted, among other things, that:

"- the necessity to keep certain things free for all to use is particularly important with respect to get-ups, since in practice an exclusive right in a shape of a product or a package can create a product monopoly. Any lack of distinctiveness in this respect cannot be remedied by use.

- shapes, which through their technical functions can result in obvious advantages in the manufacturing and packaging of a certain product, should be excluded from trademark protection with respect to such products. Many of the simple shapes or products and packages commonly used in certain lines of business are excluded from trademark protection. To grant exclusive rights in such shapes would imply that others who have used such shapes in marketing would have to change the shape of their product or package."

The court found that chocolate dragées and other confectionery products have been sold in tube-shaped packages of various sizes by numerous manufacturers over the years, probably because the shape is appropriate for such products. Thus, the tube shape has a technical function and should not be the subject of an exclusive right with respect to confectionery.

The court agreed with the PRO that a registration of the shape without a disclaimer would cause uncertainty as to the scope of the protection. As Nestlé was not prepared to accept such a disclaimer, its appeal was dismissed and the Swedish Supreme Administrative Court has now upheld that decision.

Pär Leander and Henrik Lindström, Magnusson Wahlin Qvist Stanbrook Adbokatbyrå KB, Stockholm