Swiss Smarties tube shape mark registration cancelled

The Civil Court of Lausanne has upheld Mars Inc's invalidity action against Société des Produits Nestlé SA's Swiss national trademark registration for an undecorated tube shape used as packaging for its Smarties brand of confectionery (Case CO 00.004896, June 22 2004).

Following challenges by Nestlé to Mars's use and registration of its own (differently proportioned) plastic tube containers for its M&M's Minis confectionery, Mars applied to cancel Nestlé's Swiss registration for its 'naked tube', which is used as the basis for an international registration. The Lausanne Civil Court heard Mars's invalidity arguments in advance of Nestlé's infringement counterclaims.

It upheld Mars's claim and ruled that Nestlé's national registration was invalid.

The grounds of the ruling were as follows:

• Tube shapes are purely functional and technically common. As such, a single entity should not be allowed to monopolize this basic packaging shape, which should remain at the free disposal of all. In reaching this finding, the court rejected Nestlé's argument that shapes were only "technically necessary" within the meaning of Article 2(b) of the Swiss Trademarks Act when the shape was imposed by the nature of the product to which the packaging relates (ie, there was no other choice of possible packaging shapes).
  
  
• Tube shapes are in common use. As such, cylindrical shapes for packaging are excluded from registration, even if they have acquired secondary meaning.
  
  
• Even if the mark were registrable on proof of secondary meaning, the requirements to prove secondary meaning are especially strict when a sign is common. Nestlé had failed to establish secondary meaning against this test. There was no suggestion that the products had ever been sold or promoted by reference to a blank tube, but always in colourful decorated forms, with the word mark SMARTIES appearing prominently on the pack. The combination of these distinctive elements meant that the general impression the actual tube leaves in the memory of consumers was not the same as would result from the shape alone. The court took into account third-party uses of tube shapes, showing that tube shapes had not been used exclusively for Nestlé's goods. Additionally, Nestlé's survey evidence failed to meet Swiss requirements, in that it was limited to Lausanne and showed nothing about whether the shape had acquired secondary meaning in German or Italian speaking parts of the country.

Nestlé has filed an appeal to the Swiss Federal Supreme Court.

For discussions of other cases relating to Nestlé's tube shape registration, see Nestlé outsmarted in Smarties ruling, Nestlé is refused exclusive rights in tube shape for confectionery and Nestlé wins fight over tube-shaped marks.

Vanessa Marsland, Clifford Chance, London