The Svea Court of Appeal has in a recent ruling (T 7141-12) revoked Kraft Foods’ figurative mark “m” as well as Mars Incorporated’s figurative mark “m&m” in Sweden following a dispute between the two companies.
Kraft Foods Sverige Intellectual Property AB (“Kraft Foods”) brought action against Mars Incorporated (“Mars”), claiming that Mars’ national trademark “m&m” should be revoked. As cause of action Kraft Foods invoked their national trademark registration “m”, claiming that a risk of confusion was at hand. Mars counterclaimed that Kraft Foods national trademark “m” should be revoked due to lack of genuine use.
The Svea Court of Appeal first examined the counterclaim and stated that the possibility to claim genuine use based on use of a mark deviating from the mark as registered is limited. The registered figurative trademark of Kraft Foods consisted of only three elements, being the letter “m” with an array of lines on each side. As the mark had been put to use without the arrays of lines, the Court held that there was such deviation that the use of the mark could not be held to constitute genuine use of the registered trademark. Therefore, the Court revoked the registration.
As the trademark registration “m” was revoked, the main claim was dependent on whether or not Kraft Foods still had an exclusive right by establishment on the market at the time when Mars filed its trademark application for “m&m” in 1996. In an overall assessment, based on sales numbers and a market survey, the Court held that this was the case. The Court further held that there was a risk for confusion between the marks and, hence, that ground for refusal existed when Mars filed its trademark application in 1996. Therefore, the Court revoked the registration.
The judgment has been appealed and the Supreme Court has yet to decide on whether to grant leave to appeal or not.