Distinctive character of 3D triangular trademarks

Mars claimed the nullity of the threedimensional trademark for a triangular box for chocolates and alternatively a non-infringement declaration of that trademark with its product. Kraft’s counterclaim was based on trademark infringement by Mars.

The nullity claim was based on Article 3 (1) b of the Trademark Directive No. 89/104, which states that a trademark can be declared void if it lacks distinctive character. The district court rejected both of Mars’ claims and ordered it to cease and desist the infringement of Kraft’s trademark.

Mars appealed against this decision. The court of appeal stated that with respect to the nullity claim, it must be considered whether the sign is able to distinguish the origin of the goods from the goods of other companies. It must be considered too that the perception of three-dimensional marks differs from the perception of word and figurative marks, since the public is not used to identifying the origin of goods from their shape.

Distinctive character is therefore easier to accept when a shape differs significantly from what is standard in the relevant sector. If a trademark has no distinctive character ab initio, it can be acquired by integration. It is not necessary that the sign is used on its own—distinctive character can also be accepted when the sign is part of, or used in connection with, a registered trademark. The court of appeal reversed the judgment and nullified the three-dimensional trademark.

Following the decision, Kraft appealed to the Supreme Court. First Advocate General (AG) Verkade assessed Kraft’s three complaints and gave his conclusion. The first complaint concerned the opinion of the court of appeal that the trademark has no distinctive character ab initio. The court of appeal assessed the packaging in the Benelux of different chocolates, excluding those of chocolate bars. The packages were considered to be very diverse.

“The court of appeal stated that with respect to the nullity claim...It must be considered too that the perception of three-dimensional marks differs from the perception of word and figurative marks, since the public is not used to identifying the origin of goods from their shape."

Since the triangular shape had no other significantly different elements, the court decided that it could not act as a trademark. The consideration of packages in the Benelux and the consideration that they constituted an image of the relevant sector when the trademark was filed were made correctly, according to AG Verkade. He added that even if Kraft was the first to use that triangular shape for a chocolate box, that does not mean it has a distinctive character of its own. This made the decision of the court of appeal correct.

The first complaint failed.

The second complaint concerned the consideration that there is no integration in connection with a Kraft chocolate bar on the ground that the three-dimensional triangular box cannot be seen as part of that three-dimensional trademark of a pyramid-shaped piece of chocolate. The AG believed that the court of appeal made the right decision, and the second complaint also failed.

In its third complaint, Kraft appealed against the decision that since it was already considered by the court of appeal that both products are not identical, there is no similarity or trademark infringement. The court of appeal considered that the fact that Mars’ product is offered laying flat and Kraft’s trademark is offered standing up is important for the public’s perception.

AG Verkade believed that the court of appeal correctly meant to consider that the three-dimensional trademark is void, and Kraft cannot receive protection through the back door based on confusion on the part of the public. The AG believed that Kraft was correct in its statement that product offering is not an element in the assessment of distinctive character.

However, the court of appeal considered the likelihood of confusion and therefore this had to be taken into account in that assessment. Therefore, the third complaint failed. The Supreme Court followed the AG in his rejection of Kraft’s complaints and gave no supplemental motivation. This means that the trademark registration will be removed for the Benelux and that the triangular chocolate box is free to be used at last.

Michiel Rijsdijk is a partner at Arnold + Siedsma. He can be contacted at: mrijsdijk@arnold-siedsma.com