Marques wades into Mars lawsuit over historic mark

Brand owners’ organisation says lawsuit over old M&M's mark is important for members | First time the association has waded into a French national case.

Marques has swung its weight behind Mars in civil proceedings before a Paris court in a dispute over a historic confectionary mark, marking the first time the brand owners’ association has intervened in a national French case.

The brand owners’ organisation filed its amicus curie brief at the Tribunal Judiciaire of Paris, after the confectionary multinational sued rivals Piasten and Lutti following their trademark applications for products branded as ‘Treets’.

Bad faith arguments

According to Mars, such actions constitute bad faith because it commercialised peanut chocolate sweets under the same name in France from 1955 until 1986, before rebranding the product to M&M's.

The company is seeking the transfer of the disputed marks or, alternatively, a judgment that the mark is invalid, while also taking action against Lutti for alleged unfair competition and parasitism.

The dispute first emerged in 2017 when Piasten and Lutti decided to file and use the trademark ‘Treets’ in France.

Piasten then threatened Mars with a non-use cancellation regarding its historic ‘Treets’ trademarks and started applying for new ‘Treets’ trademarks in several jurisdictions, including France.

Consequently, Mars renounced some of its French Treets trademarks in 2017.

A year later, Piasten started commercialising its new ‘Treets’ peanut chocolate sweets in France.

Mars complains that the French media received these new Treets products as a revival of the old ‘Treets’ products—proclaiming that “the iconic Treets candy is coming back”—despite the products’ lack of association with the old brand or with Mars.

A sleeping beauty

Marques has waded into the dispute on the ground that the case “involves an important topic for owners of historic brands”.

In a statement, the organisation conceded that: “It is a general principle that old trademarks that are no longer used and are abandoned by their prior owner can as a rule be used and registered by third parties.”

But it went on to say that this particular scenario was markedly different—pointing out that, in a survey based on 2,000 interviews in France, 59% of the general public still know the Mars brand ‘Treets’.

“From a brand owners’ point of view, it therefore seems abusive for a third party to apply for new trademarks to enjoy the continuing goodwill and reputation of such a sleeping beauty,” said Marques.

Further, Marques argued that the new marks, if registered, would prevent Mars—the original owner and producer of the ‘Treets’ sweets—from commercialising the brand in future, eg, for vintage advertisements for M&M’s.

Unfair practices

Marques has also argued that such practices be stopped because they are fundamentally “unfair”.

The case, contended Marques, raises the question whether actions for lack of use— and/or the threat of such actions— are abusive when they are made for recovering “the goodwill” of a famous older trademark, which constitutes parasitism.

It also queried whether the filing of an application for an old trademark that is still well-known is fraudulent—even though the old trade mark is no longer used on the market— and should be declared invalid when the purpose of this filing is to recover “the goodwill” of the famous older trademark.

Tobias Malte Müller, partner at Taliens, issued the brief on behalf of the Marques amicus curiae team, while Pierre Lubet, partner at Advant Altana, represented the organisation in court last month.

During the proceedings, which took place over the course of more than three hours, Lubet underlined the general interest of this issue for brand owners with regard to the essential function of trade marks—namely to guarantee to the consumer an indication of origin.

The court will issue its judgment on October 25, 2023.

Reputation matters

Speaking on historic brands more generally, Brett Kensett-Smith, a senior manager at EverEdge Global, which evaluates companies' intangible assets, believes that a brand’s reputation and its associations are pivotal in any case involving historic marks.

“Regardless of whether there is or was a registration, it is vital to consider whether the trademark still has a reputation in the market place as being associated with a particular product or company,” he explained.

“If the answer to this is yes, and a third party has revived the mark, the question is whether the third party is misrepresenting themselves as the original owner, and whether the original owner can show ‘damage’ to its sales or reputation through the misrepresentation.”

While the original owner may be able to seek remedies, he warned that showing “damage” will be difficult if the brand has “not been in use” for some time.

Also commenting on the general issues posed by dormant or historic brands, Henrike Strobl, partner at Nordemann told WIPR that companies must never fall into the trap of blithely ignoring them—or underestimating their value.

“A company can choose to revitalise a brand by improving or altering the product, adapting the brand identity, combining it with storytelling, optimising the logos and names or even by renaming the brand or the product.

“If a company does not wish to revive a brand, it can still be useful because it may be licensed to another company or sold, either completely or only partly,” explained Strobl.

But to achieve such positive outcomes, she added, brands have to vigilantly safeguard such an asset and, ultimately, prevent the brand from being used by others.

“It is crucial to keep the IP rights of the brand alive as long as possible. And where the defence of IP rights might not be possible anymore, actions based on unfair competition laws remain viable options in some jurisdictions,” she explained.

Conversely, Strobl pointed out that third parties must also tread carefully when exploring the opportunities offered by historic marks.

“From the perspective of the revivalist, it is imperative that the former brand owner does not possess any rights in the brand any longer.

“If a brand is only dormant and can be reactivated by using it, companies wishing to snag up such a brand risk both infringement and invalidation proceedings,” she concluded.

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