Trade dress infringement claim rejected by Commercial Court

In Masterfoods BV v Nestlé Belgilux NV (Case A/06/07976, April 5 2007), the Antwerp Commercial Court has dismissed the plaintiff's claim that the packaging of the defendant's chocolate product infringed the trade dress of a similar product manufactured by the plaintiff.

Masterfoods BV and Nestlé Belgilux NV both manufacture various foodstuffs, including chocolate snacks. Masterfoods owns a word and figurative mark and a separate figurative mark, which both reproduce the trade dress it uses for a chocolate snack marketed under the name Maltesers. These marks can be viewed by clicking on the following link.

Both marks are registered for chocolate confectionery.

In September 2006 Masterfoods challenged before the Antwerp Commercial Court the use by Nestlé of the trade dress for its KitKat Ball chocolate snack on the basis of its rights in its two trademarks. However, the Commercial Court held that there was no likelihood of confusion between Masterfoods' trademarks and the challenged trade dress.

Notwithstanding the identity of the products, the court considered that all the figurative components shared by both products' trade dress (eg, red background, contrasting white letters against a red background, brown-coloured floating balls and a ball that has burst open) are commonplace and not very distinctive in relation to the packaging of confectionery.

The court stated that as far as Masterfoods' marks were concerned, the dominant and distinctive element of the word and device mark was the word MALTESERS. It held the figurative mark to be "merely descriptive and thus a weak mark".

According to the court, the use of the word marks NESTLÉ and KITKAT as part of the challenged trade dress excluded any likelihood of confusion. The court additionally held that the prominence of the word marks drew away the relevant consumer's attention from the figurative elements.

In its claim, Masterfoods attempted to invoke the protection conferred to trademarks with a reputation. The court, however, rejected this claim. It considered that no parasitic behaviour could be imputed onto Nestlé as the elements that were similar between the two products' packaging were commonplace. It held that, in any case, there was sufficient distance between the trade dress of the KitKat Ball and Maltesers products. The court concluded that in initiating this action, Masterfoods was unfairly attempting to protect the trade dress of its product, elements of which should be freely available to be used by any party.

In the author's opinion, the court's decision in this case seems overly strict. In its analysis of the figurative elements of the trade dress of the two products, the court determined that these elements were commonplace in relation to confectionery. However, it may well have come to a different conclusion if it had assessed the figurative elements as a whole. Moreover, it could have limited its comparison to the two conflicting 'floating balls' patterns, without having regard to the word marks. This could have led to a different result especially as regards the transfer of reputation that has to be proven in order to enjoy the protection conferred to trademarks with a reputation.

Finally, the court seems to have disregarded the fact that the minds of consumers work in such a way that when consumers are confronted with the trade dress of a product they usually perceive colours and figurative elements before the actual word marks.

Nicolas Clarembeaux, Altius, Brussels