Alexandre Marboeuf October 3 2022 Validity of 3D trademark: Ferrero thinks outside the box to protect Tic Tacs MIIP MADE IN IP | Intellectual Property - France Alexandre Marboeuf Intellectual Property FactsDecisionCommentAfter the Kinder salmonella contamination crisis, Ferrero can take comfort from a legal victory in defending its trademarks – in particular, those relating to its Tic Tac range, which has been on the market in France since 1971. This article examines a February 2022 decision from the Paris Court of Appeal.(1)FactsDuring the 2016 Global Food Marketplace (SIAL), a trade fair held every two years, Ferrero became aware that a Polish company, BMB, was exhibiting confectionery known as "Mik-Maki" (Figure 1).Figure 1: Mik-Maki confectioneryFerrero owns various 3D trademarks for sweets and confectionery in class 30 (Figures 2-4).Figure 2: international trademark designating France, 1974Figure 3: French trademark, 2007Figure 4: French trademark, 2007Upon discovering the existence of the Mik-Maki confectionery, Ferrero carried out a seizure procedure during the SIAL. Ferrero then sued the Polish company for trademark infringement before the lower court, invoking its 3D trademarks and a word trademark, TIC TAC, and raised claims of unfair competition conduct and passing off. The lower court granted Ferrero's claims, ordered BMB to cease all trademark infringement and awarded €32,000 in damages to Ferrero.BMB appealed to the Paris Court of Appeal, hoping to get Ferrero's 3D trademarks cancelled and thus undermine the trademark infringement claim. Since Ferrero's 3D trademarks related to the packaging of the confectionery, which included a lid, BMB claimed that the shape in question was purely functional, and therefore could not be a valid trademark.The French IP Code provides that:the following may not be validly registered and, if registered, may be declared invalid: a sign consisting exclusively of the shape or another characteristic of the product . . . necessary for obtaining a technical result.(2)The provisions in force at the filing date of Ferrero's trademarks (the 1964 and 1992 trademark acts, and relevant case law), which was the applicable law in the present case, contain generally equivalent provisions.BMB's argument was therefore that Ferrero's 3D trademarks constitued shapes that exclusively allowed for a technical result. To do so, BMB invoked patents registered by Ferrero relating to the Tic Tac box and its lid; in BMB's opinion, the existence of the patents confirmed the technical nature of the marks. However, although they related to the same Tic Tac box, the trademarks in question were nevertheless represented in a different fashion. This imposed a difficult game of balance on Ferrero, which found itself having to find arguments to defend each of its trademarks without compromising the others.DecisionThe Court held that a distinction had to be made between each of the trademarks at hand. The Court turned first to the trademark shown in Figure 2 above. The Court noted that the mark had technical features, including a "recessed part in its upper part", but held that the whole shape was not exclusively imposed by a technical result.BMB pointed out the presence of a lid and a flap, which it argued had a technical purpose. The Court dismissed this argument and held that "the opening or closing system of the represented box is not apparent". Thus, the shape represented in the trademark did not exclusively serve a technical purpose: its validity was thus confirmed. This constituted a victory for Ferrero. It then had to try to repeat its success with its other two trademarks.The Court turned to the trademarks shown in Figures 3 and 4 above, looking at whether these trademarks – in which the lids and flaps were clearly visible, as was the confectionery inside the boxes – were also valid. The solution proposed for the first trademark would, in principle, lead to the conclusion that these marks were exclusively functional and subject to cancellation.Ferrero presented the judge with a survey according to which 70% of the people questioned attributed the confectionery (out of their box) to the Tic Tac trademark. In doing so, Ferrero confirmed the distinctiveness of its sweets, represented within the second and third 3D marks.BMB failed to provide any evidence that the confectionery was common or devoid of distinctiveness. Consequently, since the marks provided a link between the box and the confectionery, which was considered distinctive, the marks in their entirety could not be considered as purely functional. Therefore, these two marks remained valid as well.The Court rejected BMB's requests for a declaration of invalidity against Ferrero's trademarks and confirmed the likelihood of confusion and the infringement conduct.Further, through a complex analysis that seemingly omitted the average consumer's perception, the Court recognised the likelihood of confusion between the word mark TIC TAC and the name "Mik Maki" used by BMB. To reach this conclusion, the Court took into consideration the fact that the challenged goods infringed on the 3D trademarks. This represented a snowball effect for Ferrero: the infringement of the 3D trademarks facilitated the demonstration of infringement of the word mark TIC TAC, which led to new infringement findings.Finally, the Court awkwardly admitted that "the infringement conduct" committed to the detriment of Ferrero also constituted "distinct conduct of unfair competition and passing off". In this respect, it should be recalled that, according to the established formula, unfair competition and passing off must be the result of a conduct that is distinct to that which led to a finding of trademark infringement. The wording of the Court seems contradictory, but allowed it to find BMB liable of these torts. The Court noted that the infringement caused Ferrero "a specific damage consisting in the risk of seeing its customers turning away from its products to the benefit of BMB's offer". But is this not, in essence, the very consequence of a likelihood of confusion?In vain, BMB played its last card. It held that its wrongful conduct had taken place during a trade show and had given rise to no sales. Therefore, Ferrero had suffered no damage. Both the lower court and the Paris Court of Appeal rejected this argument: presence at a trade show, even in the absence of manufacturing or sale on French territory, constitutes trademark infringement. The mere presence of "a shelf and two posters" at a trade show, as BMB explained, cost them (in addition to its own costs and expenses) a €32,000 damage award and €6,000 legal costs in favour of Ferrero.CommentThis decision is encouraging for owners of 3D trademarks and confirms the importance of having an intelligent and precise representation of the registered sign – particularly for 3D trademarks. If Ferrero was seeking trademark protection on the Tic Tac boxes (its interest in doing so being understandable), it is interesting to note that this protection could only be maintained thanks to the presence of the confectionery within the representation of the trademark. Similarly, the old mark was considered valid insofar as its flap was not visible. The devil is in the detail, and it is sometimes clever to judge by appearance in trademark matters.This decision also underlines the necessity of thinking about all characteristics of a trademark before filing it – in particular, the best representation to adopt, as this will have an impact on the life and use of the trademark.For further information on this topic please contact Alexandre Marboeuf or Aintzane Marboeuf at INLEX IP Expertise by telephone (+33 1 56 59 70 90) or email ([email protected]). The INLEX IP Expertise website can be accessed at inlex.com.Endnotes(1) 15 February 2022, No. 19/21858.(2) Article L. 711-2, paragraph 1(5).