Figure 1 
Figure 2 Decision Concerning the validity of the 3D trademark, the court ruled that only a shape that departs significantly from the norm or customs of the relevant sector – and thus fulfils the essential function of indicating origin – has a sufficiently distinctive character and may be registered as a trademark. In this respect, the court's ruling is in line with European Court of Justice jurisprudence.(1) As a mark's distinctive character must be assessed in concreto – having regard to its application date (here, May 17 2004), the goods covered (here, goods in Classes 3 and 31) and the norm or the shapes common in the sector at that time – Mars demonstrated that the norm or customs in the European Union at the time of the trademark application consisted only of the usual chewing 'bones' or ordinary elongated chewing sticks, possibly with some sort of relief on them. Assessing the infringement, the court held that there was a risk not only of confusion under Article 9(1)(b) of the EU Community Trademark Regulation (207/2009), but also of infringement under Article 9(c). The court stated that the intensity, geographical extent and duration of the use, as well as the size of the investments made in promoting the 3D mark, showed without doubt that the mark had acquired a reputation in the European Union's most significant markets. Further, the court found that, visually, the mark and the infringing sign produced a similar impression on consumers. As a consequence, consumers would make a connection between the mark and the sign. The court also held that the defendant sought to free ride on Mars's DENTASTIX mark (Community Trademark 003844164, Figure 3 below) and to benefit from its power of attraction. The court found that the choice of the X shape could not be considered a coincidence. 
Figure 3 Concerning the Benelux design rights (Benelux Design 35235, Figure 4), although the design's validity was not formally disputed, the defendant argued that the X shape was exclusively dictated by the desire to obtain a technical result (ie, preventing the sticks from rolling away and optimising the cleaning of interdental spaces). 
Figure 4 The court did not agree with this argument. On the contrary, based on the abundant examples of the appearance of dog food, the court held that there was a high degree of freedom when designing chew sticks and that the parties' designs did not produce a different overall impression on the informed user. While the court defined the 'informed user' as a consumer buying dog food (typically, someone showing a relatively high degree of attention), it also referred to the fact that dog food is a fast-moving consumer product often grabbed hastily by consumers from supermarket shelves. The minor design differences would therefore be insufficient to produce a different overall impression on the consumer. Finally, the court also condemned the defendant on the basis of the Belgian legal provisions on unfair market practices. The court found that the defendant had engaged in unlawful parasitic behaviour by exploiting and appropriating the goodwill that Mars had acquired in its Dentastix product. The court subsequently issued a pan-European injunction and ordered the defendant to cease the commercialisation of the infringing X-shaped chew sticks. Comment The case is of interest because, although there is some case law concerning the protection of food and drink packaging, there is little jurisprudence concerning the protection of the shape of the food itself. It also shows that it is possible to obtain a cease-and-desist order on the merits in Belgium within a relatively short period of time. For further information on this topic please contact Paul Maeyaert at ALTIUS by telephone (+32 2 426 1414), fax (+32 2 426 2030) or email ([email protected]). The ALTIUS website can be accessed at www.altius.com |