Tic-Tac prevails in dispute over MIK MAKI dragee container | In Principle

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Tic-Tac prevails in dispute over MIK MAKI dragee container

In a judgment of 6 March 2019, the Court of Justice of the European Union gave its final ruling on a case surrounding invalidation of a community design presenting the box for MIK MAKI dragees. The invalidation was being sought by Ferrero SpA, claiming infringement of its registered figurative mark for Tic-Tac packaging.

CJEU judgment of 6 March 2019, C-693/17 P


On 15 November 2007, a Polish company, BMB sp. z o.o., applied to register the following industrial design with the EUIPO:

Mik Maki

RCD- 826680-0001

The design was registered on the same day in class 09.03 Locarno, for boxes for confectionary and containers. Just under four years later, the Italian company Ferrero SpA (manufacturer of the confectionary product Tic-Tac) filed an action for the design registration to be invalidated, on the grounds among other things of its registration of an international, figurative mark in 1974 for various types of sweets in class 30, as shown below:

tic tac

IR- 405177

The legal grounds cited by Ferrero for invalidation included Art. 25 (1)(e) of Council Regulation (EC) 6/2002 of 12 December 2001 on Community Designs. Put simply, under that provision, a community design can be invalidated when an earlier marking of distinctive character is used in that design.

The EUIPO invalidated the design, basing its decision principally on the similarity between the markings and identity of the goods, which might lead to confusion. The Board of Appeal also found that while Ferrero’s mark was of below average distinctiveness, because it presented ordinary packaging that can be filled with various kinds of products, including sweets, the close visual similarity and similarity of the products might lead to confusion. The EU court concurred, but BMB appealed to the CJEU.

Comparison of a design with a figurative mark

BMB argued that the court had incorrectly classified Ferrero’s figurative mark as a three-dimensional (3D)  mark. BMB claimed that under EU case law three-dimensional  marks are perceived by consumers differently to figurative marks. It asserted that customers did not associate them with tangible items but with two-dimensional images, and that therefore classification of the mark in a different way would have led to a different evaluation.

The CJEU found however that the decision and the judgment stated unequivocally that the basis for the rulings had been earlier registration of a figurative mark, and this was among the facts ascertained by the court. For this reason, this was not subject to examination by the CJEU.

Full and empty packaging

BMB also argued that when evaluating the similarity of the markings the court had wrongly disregarded the fact that the design showed a box full of sweets, while the earlier registered mark showed empty packaging.

The CJEU found that BMB had raised that issue in the court proceedings, and was thus seeking a repeat evaluation of motions that had been submitted and reviewed before by a court that concurred with the EUIPO. It found that the issue raised for a second time by BMB was not relevant to the visual comparison. This was because the design had been registered for boxes for sweets and containers, and the previously registered trademark showing the packaging had been registered for sweets. It was therefore obvious that the registered packaging would be filled with the sweets.

Weighting of rounded edges

BMB also argued that when performing the comparison the court had failed to correctly assess the significance of the differences between the design and the mark, namely the rounded edges and the label of the Mik Maki packaging, and the specific nature of trade in sweets of that kind. Consumers who buy sweets can usually compare the products’ marks on the shelf or ask a salesperson for a specific product by name. For this reason, it is the figurative and word elements that are distinctive and dominant. The court had also disregarded the first image of the design, which is a direct indication that the products are BMB products.

The CJEU found that by raising the objections described above, BMB was seeking a reassessment of facts relating to visual, phonetic, and conceptual similarity. The CJEU said that it could not perform that reassessment unless the court had incorrectly assessed the facts, and the company had not proven this.

No CJEU case law

BMB contended that the court had incorrectly disregarded the French case law cited by BMB when issuing the judgment. French case law held that a design that had features similar to the contested design (no right angles, rounded edges, label with the words “Pick Up”) did not infringe Ferrero’s trademark. The company argued that the case law it had cited should be considered also because there was no CJEU case law relating to Art. 25(1)(e) of Regulation 6/2002, and thus the court should have considered a judgment given in the national law.

The CJEU found that the mere lack of CJEU case law did not mean that the court was required to consult national case law. It also found that BMB had not submitted any grounds for the case law it had cited taking precedence over the case law presented by Ferrero.

Industrial design conflicting with a trademark

This case is not the first relating to an industrial design conflicting with a trademark. Under established case law, an earlier registered mark does not have to be reproduced in full and in detail in a subsequent design. Merely using a similar mark is sufficient. This is because customers only recall an incomplete image of a trademark, and omission or addition of elements of secondary importance in the subsequent design can go unnoticed by the relevant customer group (CJEU judgment of 12 May 2010, T-148/08, Beifa, points 50-52).

For a design to be invalidated, therefore, it has to be proven that the relevant target group have an impression that the earlier trademark has been used in the contested design. The target group do not necessarily perceive the contested design as a distinctive mark. This is because it is important for the constitutional features of the mark to be absorbed by the form of the product so that the mark is an element of the design (CJEU judgment of 12 May 2010, T-148/08, Beifa, points 105-107).

Broad protection of a trademark

The possibility of customers being misled in the Tic-Tac case was not eliminated by

  • The word mark MIK MAKI being added to the design,
  • The rounded edges on the packaging,
  • Placing coloured dragees inside,
  • The fact that the earlier registration was a figurative and not a three-dimensional  mark,
  • Below average distinctiveness of the figurative mark.

The CJEU therefore evidently confirmed the broad range of the trademark protection.

Importantly, if the case concerned collision between two designs, then the overall impression of the design on an informed user would need to be taken into account. Then all of the issues described above would be relevant to determine whether the overall impression was different.

Monika Dynowska, Lena Marcinoska, adwokat, Intellectual Property practice, Wardyński & Partners