Background

On 25 January 2019 the Swedish Patent and Market Court (Case No. 46-17) ruled that a supplier of candy to IKEA in the United States did not infringe the three-dimensional trademark registrations of a Swedish company, since there was no risk of confusion between the registered trademarks and the supplier’s mark. The judgment raises interesting questions as regards the enforcement of three-dimensional trademarks in general, and in particular the issues with enforcing three-dimensional trademarks due to the representations of the registered marks being more detailed and distinct than the actual products occurring in the marketplace.

The claimant’s EU trademark registration in black and Swedish trademark registration in brown

 

 

The defedant’s products

 

The claimant’s products

 

The Swedish Dala Horse case

In the present case, the claimant held a national trademark registration from 1997 covering a three-dimensional representation of a brown Swedish Dala Horse for candy and an EU trademark registration in black version. The claimant also held a trademark registration in the US. The claimant argued that the manufacturing and distribution of jelly candy in the shape of a horse, as well as the use of a picture of the jelly horse on the packaging in which the candy was sold, infringed upon their registered trademarks as the shape of the products was identical or likely to be confused with the registered trademarks.

The defendant on the other hand contested all aforementioned claims and argued that the distinctiveness of the claimant’s registered trademarks representing a Swedish Dala Horse was limited and hence, not identical or likely to be confused with the defendant’s jelly horse. The defendant further argued that there was a limited similarity between the registered trademarks and the defendant’s jelly horse. When comparing the registered trademarks and the defendant’s products, the defendant stated that both reminiscent of a Swedish Dala Horse or a horse in general. Thus, the defendant argued that one cannot obtain an exclusive right to the Swedish Dala Horse, or a horse in general.

The Swedish Patent and Market Court (“the Court”) initially stated that infringing products manufactured, but not sold in Sweden which are exported for sales in the US may be considered an infringement in Sweden. The Court explained that the defendant’s use of a picture of the jelly horse on their products’ packaging, holding the products in stock, making the products available on the market as well as exporting the products to the US, would be an infringement in case such usage would fall within the claimant’s scope of protection.

The Court examined the distinctiveness of the claimant’s trademarks and laid down that the trademarks were designed as a so-called Swedish Dala Horse, an old and well-known symbol for Sweden which previously had been registered as a trademark in different versions. The claimant’s trademarks referred to a trade dress, to which it was more difficult to demonstrate distinctiveness, due to the average consumer not being used to perceive the shape of a product as an indication of the origin of the products.

Further, the Court ruled that despite there was a conceptual similarity between the blown and black trademark registrations and the defendant’s products, the visual similarity between the objects was limited. This had to do with the fact that the distinctiveness of the claimant’s registered trademarks was attributable to the horse’s slim silhouette, brown respective black colour and the particular decorations, attributes which were not as clearly evident on the defendant’s products. According to the Court, the defendant’s products had a much more ‘chunky’ silhouette with less distinctive decorations. In addition, the defendant’s products were designed in the colour of red, yellow and orange, respectively, which also constituted a difference between the defendant’s products and the registered rights.

Conclusively, the Court laid down that there was no risk of confusion between the claimant’s registered trademarks and the defendant’s products, and rejected the claim.

The judgment has not been appealed.

Comment

The judgement demonstrates the difficulties which may follow the enforcement of registered three-dimensional trademarks. In our case, it could perhaps be argued that there is a likelihood of confusion between the actual product originating from the registered marks and the defendant’s products. The defendant’s jelly horses may be considered similar to the trademark holder’s products, especially considering the manufacturing process and the material of which they were produced. It is therefore not unreasonable to take the view that the registered trademarks and the defendant’s products, give a similar impression in terms of, inter alia, figure shape and three-dimensional design. In light of this, there may at least be a certain risk of the average consumer perceiving the products as deriving from the same commercial origin. The overall impression given by the trademarks and the product should possibly be considered, since the average consumer should not have to conduct any analytical examination or pay particular attention in order to be able to distinguish the products concerned. The defendant’s products and the claimants’ registered trademarks were after all quite similarly decorated, even if the defendant’s features were not as distinguishable. Moreover, the overall design of the registered brown and black Swedish Dala Horse trademarks, as well as the defendant’s jelly horse products, would both bring one’s mind to the traditional Swedish Dala Horse. The Court, however, assessed that the similarities were not apparent enough.

In light of the above, one can note that the scope of protection for three-dimensional trademark is limited. Holders of registered three-dimensional trademarks may face difficulties in claiming their rights against infringements due to the representations being more detailed and distinct in the registered marks than the actual product itself. The fact that the actual products put on the market are similar, will be a less decisive factor when assessing infringements in three-dimensional trademarks.

In addition to the already tough requirements for distinctive character for obtaining registration of three-dimensional trademarks, the Swedish Patent and Market Court’s ruling in the current case demonstrates the difficulties with the enforcement of such registered rights in Sweden.