Tic Tac triumphs: CJEU rules on plastic container
Whether they’re orange or white, bought in the check-out line in your local supermarket or in bulk on a shopping spree abroad, we all know Tic Tac and – most importantly – the practical container they come in, which fits perfectly in your pocket. But few people probably consider the details of the package design and its value for the Tic Tac brand, not to mention the battles being fought behind the scenes to ensure the protection of something as simple – yet important – as a little plastic container. This container has been the subject of a lengthy dispute between the Tic Tac manufacture, Ferrero, and a Polish competitor, BMB, who makes a similar mint candy called “Mik Maki”, sold in a similar container – a dispute, which now finds it ending with a ruling from the Court of Justice of the European Union (CJEU).
The legal background
To understand how a plastic container can become the object of a trial, we need a bit of legal background. Most people are familiar with the possibility of registering a trademark as a word mark or a figurative mark, but over the years, three-dimensional marks, also known as 3D-marks, have become more and more popular. A 3D-mark provides protection of a shape – be it the shape of the product itself or the shape of the packaging of the product. Popular examples are the Coca Cola glass bottle or Toblerone’s triangular chocolate shape.
With a 3D-mark, the owner gains a sole right to the particular shape of either the product or the packaging and can thus prevent competitors from using the same shape. Naturally, this has a high value if your product has a distinct design, which the consumers will recognize on the shelves.
Like any type of trademark, a 3D-mark requires distinctiveness, meaning that the shape sought protected must be able to distinguish the product from other products on the market. When assessing this, the relevant factors to consider is whether the shape of the product is purely functional and, very importantly, whether most other products on the market use a similar shape.
The Tic Tac case began in 2007, where BMB registered an EU 3D-mark for their plastic container. Ferrero opposed the registration due to the similarities with Ferrero’s prior 3D-mark from 1974 and succeeded – initially with the European Union Intellectual Property Office (EUIPO) and later with the Board of Appeal. BMB’s registration was therefore cancelled from registration.
Not satisfied with this decision, BMB appealed to the EU’s General Court and, later, the CJEU. Due to the multiple appeals, the case has only just found its end, when the CJEU ruled earlier this month.
From the beginning, Ferrero argued that BMB’s plastic container was a violation of Ferrero’s well-known Tic Tac containers, including their registered 3D-mark from 1974. BMB, on the other hand, argued that Ferrero’s container was not – in itself – distinctive enough to be protected, and that Ferrero could only oppose containers with an overall similar design. As the label of the “Mik Maki” products did not look like Tic Tac’s labels, BMB did not believe a violation was present. BMB further argued that there were a number of differences between the containers, including a rounding of the edges, which – in BMB’s opinion - meant that BMB’s containers did not constitute a violation. You can see pictures of both containers here.
Unfortunately for BMB, neither EUIPO nor the Board of Appeal agreed. They both held that, even though the Ferrero container had a somewhat low degree of distinctiveness, as it was just a standard container for storing candies, the high degree of similarity of the containers, the similarity of the products in the containers, and the low degree of attention with the consumers – who will often grab the product on their way to the check-out in a supermarket – led to a risk of confusion. The minor differences in the containers and the differing labels where therefore not enough; the BMB container was a violation of the Tic Tac container.
BMB brought the case to the EU’s General Court in 2017 and asked them to reassess the decision of the EUIPO and the Board of Appeal, but the General Court came to the same conclusion and confirmed that BMB’s registration should be cancelled.
BMB then appealed to the CJEU, who – without much ado – dismissed the appeal, as BMB did not put forth any new arguments, but merely repeated their previous statements. The CJEU thereby refused to overrule the previous decisions and BMB had to give up their registration and pay costs to Ferrero – for no less than 4 cases.
The case shows how difficult it can be to navigate in the world of trademark registration and protection; especially when it comes to 3D-marks. It can be difficult to assess whether a particular part of a 3D-mark is protected in itself, and whether using that same part in your product might cost you a few years in the court system.
If you have any questions regarding the case or the possibilities of registering a 3D-mark, you are always welcome to contact us.