On July 6th the District Court of Utrecht rendered a decision in a tasteful case regarding registered shape marks for pudding packaging.
FrieslandCampina is a company that manufacture and supply pudding products under the name Mona. Since the 1970s, Mona has been selling their puddings in plastic cups with vertical ridges, and since 1998 has added a cardboard cover to its packaging.
After discovering products in similar packaging offered by its competitors, FrieslandCampina undertook an accelerated registration for the following two shape marks at the Benelux Office for Intellectual Property (BOIP):
The procedure for accelerated trade mark registration can be finalised within a couple of days and the assessment of the absolute grounds for refusal and opposition take place after registration. So, with these two trademark registrations in place, FrieslandCampina started proceedings against competitor De Natuurhoeve, whose products are sold as private label products in various supermarkets. Namely the pudding products with the following packaging and appearance:
FrieslandCampina argued that De Natuurhoeve infringes FrieslandCampina's registered shape trademarks by producing and selling products in similar packaging as there is a likelihood of confusion to consumers. Also the packaging appears to establish a link between the products from De Natuurhoeve and the well known trademarks of FrieslandCampina.
The core of the case concerned the scope of protection of the registered trademarks. FrieslandCampina argued that protection of its registered trademarks concerns the three-dimensional shape of its pudding packaging. However, unfortunately for FrieslandCampina the District Court disagreed and found there was much more to it than that, thus the proof is in the pudding! Mind you, this is not a judicial invitation to put your taste buds to use in judging trademark infringement. The true value of something can only be ascertained when it is used, in this case the 'value' of the trademark when used against competitors in the marketplace.
The District Court judged that if FrieslandCampina had intended the trademark protection solely of the three-dimensional shape of its pudding packaging and the rectangular shaped cardboard clip, FrieslandCampina should have registered those shapes as a trademark. In fact the trademark registrations are much broader so all the other elements had to be taken into consideration as well.
In assessing whether De Natuurhoeve infringes FrieslandCampina's trademarks, the District Court used the trademarks as registered to judge the likelihood of confusion. The graphic components, such as the red cover with letters MONA in white colour, were considered despite FrieslandCampina arguing that the distinctive and dominating component is solely the shape of the pudding packing excluding the also registered graphic components.
The District Court came to the conclusion there is no likelihood of confusion and the claim based on the reputation of the trademarks was also dismissed. Although the Court accepted that the trademarks are well-known, it found there was no link established between the products of De Natuurhoeve and the well known products of FrieslandCampina.
This case proves that shaping the shape mark is harder then it seems. The true value of the FrieslandCampina registered trademarks was only fully realised once they were invoked against the products of De Natuurhoeve. Unfortunately for FrieslandCampina in this case in its fight against this competitor its registered shape marks meets the characteristics of its pudding: soft and jiggly.
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