November 25

Good tactic for the TIC TAC brand: the protection of the famous case by a 3D mark

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A decision of the Paris Court of Appeal of February 15, 2022[1] illustrates the effective protection that 3D marks offer to their owners when their validity is recognized, which is not obvious. The context is as follows.  

Since 1971, the Ferrero company has been manufacturing and distributing in France the famous candies TIC TAC. At a trade show, she noticed similar "Mik-Maki" confectionery on display at the stand of the Polish company BMB:

Ferrero also discovered that the company BMB Spółka z ograniczoną odpowiedzialnością has also registered European trademarks and designs: Community design no. 000826680-0001 and EU trademarks n° 013058326 and n° 013322045.

Ferrero then sued this company for infringement, as well as for unfair and parasitic competition. It asserts its word mark TIC TAC as well as its three-dimensional marks.

The judges ruled in favor of Ferrero. The Polish company then filed an appeal. Its defense strategy consisted in challenging the validity of the TIC TAC trademarks. Indeed, if these trademarks are declared invalid, the infringement action is deprived of any basis.

The Paris Court of Appeal finally confirms the judgment of 1era instance. It reaffirms the validity of the three-dimensional TIC TAC trademarks. The products of the Polish company therefore constitute acts of infringement and unfair competition. It does not matter that the infringing products were not marketed.

The validity of TIC TAC trademarks

Ferrero owns an international 3D trademark dating back to 1974 and two French 3D trademarks since 2007.[1] The first one represents the TIC TAC case and the second ones the case filled with oval candies:

TIC TAC three-dimensional trademarks registered by Ferrero

What is a 3D brand

There are different brand typesThe most well known are word, figurative (logo) or semi-figurative (logo + name) trademarks. But it is also possible to register a three-dimensional trademark or 3D trademark. This consists of the shape of the product or its packaging.

She should not be confused with designsThese are different industrial property rights. A trademark does not have the same function and meets very different conditions of validity. A design protects the appearance of a product. A trademark, on the other hand, must allow the consumer to identify the origin of the product, to make a link with the owner company. This is why trademarks, especially 3D trademarks, are subject to strict conditions of validity.

Strict conditions

Getting your 3D brand recognized is not easy.

Like all trademarks, it must meet the condition of distinctiveness. This specific notion is detailed in our guide. This is particularly difficult to achieve with a 3D mark. The shape of the 3D mark alone must immediately allow the consumer to link it to its owner.

Several elements play a role in recognizing the distinctiveness of a brand.

In particular, the registered form must not be imposed by an exclusively technical function (article L 711-2 of the Intellectual Property Code). This argument was put forward by the Polish company to have the international TIC TAC 3D trademark declared null and void, but was rejected by the judges.

In addition, brand awareness can influence the assessment of distinctiveness. 

To demonstrate that the distinctiveness requirement is met with respect to its two French TIC TAC 3D trademarks, Ferrero demonstrated their awareness. It produced a study indicating that 70 % of the 1073 people questioned had attributed the product to the TIC TAC mark.

Finally, this decision reminds us of the importance of correctly registering a 3D mark. It must be represented " in such a way as to enable any person to determine precisely and clearly the object of the protection conferred on its holder " (article L 711-1 of the ICC).

The strategic interest of a 3D trademark registration

The validity of 3D trademarks is strictly appreciated as they offer potentially unlimited protection.

A design is protected for a maximum of 25 years and a patent for a maximum of 20 years. A trademark is protected for 10 years and is renewable indefinitely.

Having a valid 3D trademark is a valuable basis for an infringement action. This does not prevent one from also suing one's opponent for unfair competition. The conditions for these actions are different.

The validity of its 3D trademark is all the more beneficial for Ferrero as in the food industry it is particularly difficult to defend its products on the basis of a simple word trademark. Competitors play on the similarity of packaging, bottle shapes and packaging. In this case, a word mark does not allow to protect one's products. In this field, competitors often have no other recourse than to attack their competitors on the basis of parasitism. A trademark constitutes a stronger right, offering a solid basis for an infringement action, with a greater chance of success.

In another area, BIC's registration of a 3D trademark offers effective protection. It registered the shape of its ballpoint pens as a Community trademark in 1997.  

We are at your disposal to advise you on the best strategy to register your trademark. Do not hesitate to contact us via our website


[1] CA Paris, February 15, 2022, n°19/21858

[2] International trademark of 1974: https://data.inpi.fr/marques/WO405177 ; French brand from 2007: https://data.inpi.fr/marques/FR3485937 ; French brand from 2007: https://data.inpi.fr/marques/FR3485933


Tags

conflict, counterfeit, ferrero, 3D trademark, three-dimensional trademark, ticking


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