Shape trade marks: Italian Supreme Court confirms that Tic Tac box shape is a yes

On 11 May last, the Italian Supreme Court issued and interesting decision (decision no. 12881) on the protection of the Tic Tac box as a shape trade mark, reaffirming the distinction between the “necessary form” and the “substantial form” of a product. The decision of the Supreme Court upholds the lower courts’ earlier decisions.

Background

Ferrero S.p.A. (Ferrero) is the manufacturer of Tic Tac (small hard mints; please see below). Tic Tac mints are usually sold worldwide in small transparent plastic boxes with a flip lid.

Ferrero has registered the Tic Tac box as a trade mark in several jurisdictions, including Italy.

In 2017, Ferrero sued Czech company Mocca Spol. S.R.O. (Mocca), a manufacturer of comfits sold under the name Bliki, claiming both infringement of two of its Italian well-known 3D trade marks and unfair competition.

Ferrero's Tic Tac box (left) and Mocca's Bliki containers (right)

Mocca defended itself arguing that (1) there was lack of jurisdiction since Bliki mints were produced in the Czech Republic, (2) Ferrero’s trade marks would be invalid, as the shape would give substantial value to the goods or would be necessary to obtain a technical result, and (3) there would be no likelihood of confusion because its box would carry different word marks and the shape of the mints is standard in the industry.

The First Instance Court of Turin (reported by IPKat here) held that it had jurisdiction as Ferrero was enforcing two Italian trade marks, irrespective of the defendant’s nationality, domicile or residence. The Court of Turin also noted that sales of the Bliki products had taken place in Italy, providing further reason for the Italian court’s jurisdiction.

As regards the validity and infringement of the enforced trade marks, the Court of Turin found that Ferrero’s box shape was not necessary to obtain a technical result, although it had been previously protected through a patent. Specifically, a patent was granted for the closing mechanism, which is not visible on the representation of the trade marks. The court also denied that the shape would give substantial value to the goods, as Ferrero’s mints were also sold separately and it was not proved that the box would influence the purchase of the mints.

Turning to likelihood of confusion, the court noted that the only difference was the brand on the box (Bliki and Tic Tac) and that it was irrelevant in this case, as Ferrero was enforcing its exclusive rights on the box shape rather than on the Tic Tac trade mark (which was not included in the 3D trade mark registrations).

The court ultimately held that the trade marks enforced were valid and infringed and Mocca’s acts amounted to unfair competition (reported by IPKat here).

The defendant appealed the decision. Nevertheless, the Court of Appeal of Turin, with decision of 17 February 2021 No. 199, upheld the decision at first instance. The case was then brought before the Supreme Court. It is worth reminding readers that this is a court of last resort, but is not a court on the merits: instead, it has competence over the appropriateness of the interpretation and application of relevant legislative provisions by the lower court.

The decision of the Supreme Court

The Supreme Court confirmed the Italian jurisdiction under Article 7, no. 2 of Regulation (EU) No. 1215/2012 given that the harmful event had occurred in Italy.

The Supreme Court concluded that the appellate decision had correctly distinguished between "necessary form" and "substantial form". When the form is imposed by the nature of the product, it cannot be protected as a trade mark since the sign lacks distinctiveness and it "constitutes a form, which is useful and convenient, that expresses exclusively the value, that is: the essential characteristics of the product" (my translation from Italian). Substantial shape means a shape that "gives substantial value to the product".

According to the case law of the Court of Justice of the European Union (CJEU) a sign representing the shape of a product “is one of the signs capable of constituting a trade mark” if it can be represented in an appropriate manner and if it is suitable of distinguishing the goods or services of one undertaking from those of other undertakings (C-30/15 especially para 37; C-456/01; C-457/01 especially paras 30-31; C-48/09 especially para 39).

The Supreme Court clarified that a shape mark cannot be registered if it does not possess "distinctive character for the relevant consumers, such as when the shape is imposed by the very nature of the product, as a shape necessary to obtain a technical result or a shape that gives substantial value to the product". Therefore, the more the shape whose registration is sought is similar to the shape that the product in question is likely to have, the more likely it is that this shape is devoid of distinctiveness.

According to this principle, the CJEU held, for example, that the EU 3D mark consisting of the Rubik's cube would be invalid, since the so-called grid structure, which appears on each of its faces, dividing it into nine square elements of the same size, performs a technical function, ensuring the rotation of the individual elements of the vertical and horizontal bands of the cube itself, so that the cube constitutes a three-dimensional puzzle (C-30/15 P commented by IPKat here).

Overall, the law prevents the valid registration of a sign consisting, in its essential characteristics, of a technical result, because there is a general interest in its use, which precludes situations of monopoly over technical solutions (C-215/14, C-299/99, C-53/01).

The Court of Appeal of Turin, therefore, had correctly upheld the validity of the shape mark with respect to the relevant goods because it is possible to clearly distinguish between the shape and the product (the mints) as manufactured. Moreover, the shape of the box of mints does not constitute a technical solution to a problem. This is logically confirmed by the possibility that the box may have other shapes, without functional prejudice to the purpose of containing and distributing the mints, precisely because it is not a shape that constitutes a pure solution to a technical problem.

Comment

The Tic Tac shape trade marks have been the subject of several proceeding across Europe. On 15 February 2022, for example, the Paris Court of Appeal held the trade mark designating France and two French 3D trade marks had been infringed by a Polish company. The contested candy boxes were exposed in a trade show in Paris. The French court also relied on a study revealing that a picture showing these small sweets was spontaneously attributed to the Tic Tac 3D trade mark by 70% of the 1073 people interviewed.

Overall, a 3D trade mark may play an important role as in the food industry as it often looks difficult to defend products on the basis of a simple word trade marks and competitors tend to “play with” the similarity of packaging and bottle/box shapes.