On April 16, 2014 the Court of Milan issued an interesting decision regarding 3-D trademarks that consist of trivial and/or generalized shapes. Specifically, the court considered whether such shapes are worthy of protection, as well as the inherent risks of bestowing an unfair advantage on the owner of this type of IP right while simultaneously creating a de facto monopoly over the product itself.

This decision concerned the well-known “Mikado” biscuits: the sweet breadstick shaped snacks partially covered with chocolate, which are registered as a three-dimensional trademark. Mondelez, the owner of Mikado sought to enforce these IP rights against Griesson De Beukelaer GMBH & CO. KG (“Griesson De Beukelaer” and “respondent”) for allegedly producing and advertising some similar sweet breadstick shaped snacks that, like Mikado, `were also partially covered by chocolate.

In particular, the Mondelez filed a request for preliminary injunction claiming both that (i) Griesson De Beukelaer’s snacks infringed the petitioner’s 3-D trademark rights in the Mikado sticks and (ii) the sale of the respondent’s products constituted an act of unfair competition pursuant to art. 2598, paragraph 1 of the Italian Civil Code.

The court dismissed the petition for preliminary injunction filed by the owner of the 3D Mikado trademark on for the following reasons.

As to the trademark infringement claim, the court stressed the point that the challenged trademark registrations were associated with a shape that was merely trivial and generalized, though also functional, thereby implying that they were potentially invalid. In doing so, the court defined the relevant field broadly as “food” – as opposed to limiting it to the sub-category of sweet bakery items – and found that, considered in this field, the Mikado 3-D trademarks incorporate shapes that are common and generalized. In fact, the novelty of a 3-D trademark and its distinctive character must be evaluated with reference not only to identical products (that is to say, to the same small business sector, which could be that of “sweet snacks”), but also in relation to similar products, i.e those belonging to related sectors. Considering the food field as a whole, a cylindrical breadstick-like shape – such as the Mikado biscuit - is far original. Here the Court of Milan’s decision continues further down the path it paved earlier in another (unique, as far as we know) case relating to the “Virtual Dimension” snacks produced by San Carlo[1].  

Further, in the court’s opinion, the partial layer of chocolate on the snack cannot be considered a “distinctive” element of the trademark because it exists only to accommodate a precise function (that is, to enable the consumer to hold it without soiling their hands) and, as such, it is excluded from protection under art. 9 of the Italian Code of Industrial Property. This exclusion exists to avoid the risk of creating a monopoly over the product itself (see, ECJ C299/99, dated June 18, 2002, recalling art. 3 no. 1 lett. e) Dir. 89/104/CE), as quoted by the Court of Milan).

According to the court, the shape of the Mikado biscuit cannot be protected even under the secondary meaning rule, because such protection is not possible when, as in the instant case, the only feature that has or may have acquired a distinctive character is dictated by a technical function.

As to the claim for unfair competition, the court dismissed the petitioner’s arguments on two grounds, namely that (i) it refused to allow one trader a monopolistic appropriation of the shape of a product and (ii) the lack of distinctiveness of the Mikado snacks in the food field, considered as a whole.