Nestlé's oppositions to Mars's shape marks go down the tube

European Union

The Office for Harmonization in the Internal Market's (OHIM) Board of Appeal has dismissed Nestlé's oppositions to Mars's applications to register three-dimensional tube shape marks for its M&M's Minis product (Cases R0506/2003-2 and R0821/2002-2).

In May 1998 Mars applied to register as Community trademarks two three-dimensional marks representing the tube shape of its M&M's Minis' packaging. One application was for the tube bearing the M&M'S word mark and the other was without the word mark.

Nestlé opposed both applications on the basis of its prior blank and decorated three-dimensional tube shape marks - representing the tubular packaging for its Smarties product - registered in France and elsewhere.

The OHIM rejected the oppositions in August 2002, primarily on the grounds that there was no likelihood of confusion due to a lack of similarity between the marks. Nestlé appealed. (In the case of Mars's application bearing the word mark, the Board of Appeal remitted the matter to the Opposition Division for reconsideration on procedural grounds. The Opposition Division again refused the opposition and Nestlé appealed for the second time.) In light of their common factual and legal elements, the cases were considered contemporaneously by the same Board of Appeal and the decisions were released at the same time.

The board rejected Nestlé's appeal. It considered the goods - M&M's Minis and Nestlé's Smarties - to be identical. The board also accepted that consumers are in the habit of recognizing "the particular cylindrical shape in its proportioned length and base area … and in particular size and material as a … means of identification of Nestlé's goods". Nevertheless, it found no likelihood of confusion for two main reasons: firstly, the distinguishing features of Mars's marks create a different overall impression from Nestlé's. These features include a dominant red top and "a clear upper side". In addition, the proportions of the two parties' marks are different. The board stated that Nestlé's prior marks are of limited distinctive character and, accordingly, Nestlé's trademark protection does not extend to all cylindrical packaging shapes.

Secondly, Mars's marks feature further distinguishing elements - word elements, a brightly coloured background and "animated lentil faces" - that represent the dominant parts of the mark.

The board also rejected allegations of unfair advantage or detriment to the distinctive character or repute of the prior marks. (This ground of appeal was not considered in relation to the naked tube shape mark.) It stated that the acquired enhanced distinctive character exists only in relation to a cylindrical shape of specific proportions. In view of the differences in shape, proportion and cap, and the limited extent of the distinctive character of the prior marks, the board concluded that there is no legally relevant dilution of the distinctive character of the marks.

For a discussion of other cases involving tube shape marks, see Swiss Smarties tube shape mark registration cancelled, Nestlé wins fight over tube-shaped marks, Nestlé is refused exclusive rights in tube shape for confectionery and Nestlé outsmarted in Smarties ruling.

Stephen Godsell and Vanessa Marsland, Clifford Chance LLP, London

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