yoghurt
1 September 2013TrademarksJoanna Pilka

War over a yoghurt pot: a 3D trademark dispute

Bakoma, a Polish producer of dairy products, succeeded in invalidating Danone’s three-dimensional trademark in Poland on April 8 this year. This battle was won by Bakoma in a war over a yoghurt pot.

The trademark in question is a bicapsular container used by Danone for yoghurt with fruit or chocolate additives that is sold in Poland under the trade name Fantazja.

Some time ago, Danone sued Bakoma for trademark infringement, arguing that Bakoma was using a similar product packaging to Danone’s line of yoghurt, on a product called Frutica. At the same time Danone filed a request for invalidation of Bakoma’s registered Community designs nos. 000972740-0001 and 000972740-0002 for the Frutica yoghurt packaging.

The basis for the invalidation proceedings was lack of novelty and individual character, as well as the use of a sign included in an earlier trademark. However, the Office for Harmonization in the Internal Market’s (OHIM) invalidity division dismissed both requests, finding that the design is new, has individual character and makes no use of the sign of the earlier trademark.

In April 2013, the adjudicative board of the Polish Patent Office decided to invalidate in part the international trademark registration no. 700040 owned by Danone in Classes 29 and 30 on the basis of the lack of distinctiveness.

In the request for invalidation, Bakoma claimed that the trademark in question lacks distinctiveness and was applied for in bad faith, as Danone did not intend to use the trademark in the form applied for. Bakoma also claimed that the trademark was registered in breach of Article 3.1(e)(ii) of Directive 89/104/EEC. Danone owned a registered design for a similar packaging, so the registration of the trademark aimed for the extension of the design protection and as a result for the circumvention of the law.

During the proceedings, the parties argued about the concept of functionality and the technical features. Danone argued that Bakoma does not distinguish between the concept of functionality and the technical features that may give the impression that the functionality is a prerequisite to prohibit registration.

The judgments of the Court of Justice of the European Union (C-299/99 of June 18, 2002 in Philips v Remington and C-48/09 of September 14, 2010 in Lego) were cited by Danone in order to show that shapes of goods which solely incorporate a technical solution are exempted from registration as trademarks.

Danone claimed that the packaging lacks any technical features because the container does not provide a central transfer of filling (from a smaller to a larger compartment), it does not prevent pouring, and it is not a compact packaging.

There was no disagreement as to the functionality of the packaging between the parties, however Bakoma disagreed that the packaging in question does not have any technical features. Bakoma argued that in the case of the trademark in question all the elements perform a technical function.

The technical solution solves a problem which in this case is how to mix one component with another and how to serve it mixed. A solution to this problem is to move one of the components. These functional features have a technical character.

In one of the Danone’s advertisements presented during the hearing, a connecting mechanism providing a mechanical connection of both packaging compartments, and how to use this connecting mechanism, can be seen. It is clear that the connecting mechanism performs a technical, utility function. Bakoma claimed that by registering the trademark in question the opposing party tried to obtain a monopoly for the technical solution, and this seems to be a clear example of acting in bad faith.

As for the allegation of lack of distinctiveness, Danone provided evidence for consumers’ recognition of the subject trademark, namely a survey in which the responders indicated the Bakoma Frutica yoghurt packaging as coming from Danone. Further, Danone argued that at the time of filing, the trademark had been present on the market for almost 14 years and its use was confirmed by advertisements and price lists.

Danone presented data for the years 2004–2008 concerning its share in the market, advertisement expenses and brand recognition survey, and argued that such significant share in the market as well as the brand recognition means that the trademark acquired a secondary meaning and became a renowned trademark. In addition, Danone claimed that the trademark at issue cannot be used on the market alone, without any label.

"According to Bakoma, a three-dimensional form can be a trademark only when an average consumer will associate it with the origin of the goods."

Bakoma argued that the trademark was not distinctive at the date of filing, nor did it acquire secondary meaning. According to Bakoma, a three-dimensional form can be a trademark only when an average consumer will associate it with the origin of the goods.

A three-dimensional form can attract consumers’ attention in terms of aesthetics, but it does not mean that it functions as a trademark. In addition, the trademark could not acquire secondary meaning because it performs a technical and utility function. Bakoma also argued that Danone was trying to obtain the right of protection for a sign, which it did not intend to use in the applied form.

The adjudicative board of the Polish Patent Office decided to invalidate the trademark in question on the basis of lack of distinctiveness, and decided not to examine the other grounds, ie, bad faith and the shape necessary to obtain the technical result.

As the decision of the adjudicative board of the Polish Patent Office is not final, we may expect a continuation of this battle over a yoghurt pot, in particular because Bakoma also requested that the Polish Patent Office decide on the lapse of protection of the international trademark registration no. 700040.

Joanna Pilka is a patent attorney at Patpol. She can be contacted at: joanna.pilka@patpol.com.pl

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