Ferrero successfully enforces the Tic Tac shape mark in Italy

Many of us had a Tic Tac box in our pockets as kids, no matter the country we grew up in. Ferrero Spa (“Ferrero”), the Italian manufacturer of Tic Tac (and lots of other delicious confectionary products) registered the Tic Tac box as a trade mark in several jurisdictions, including Italy.

After succeeding before the CJEU in the invalidation action against BMB sp. z o.o. earlier this year (click here), in a recent case brought before the Italian courts, Ferrero successfully defended its shape marks, despite the invalidity claim brought by S.r.o. Mocca spol. (“Mocca”), a Czech company selling Bliki-branded mints in an identical container.

In 2017, Ferrero commenced proceedings against Mocca for infringement of its 3D reputed trade marks, the earliest of which was registered in 1973, as well as unfair competition.

Mocca, on the other end, argued that:

  1. an Italian court had no jurisdiction, as Mocca’s 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 the containers would carry different word marks and the shape of the mints is standard in the industry.

The court’s findings
The court of Turin determined that it did have jurisdiction to hear the case, as the claimant was enforcing Italian trade marks, irrespective of where the defendant resides. The court also noted that sales of the Bliki products had taken place in Italy, providing further reason for the Italian court’s jurisdiction.

With regard to the second argument brought by the defendant, the court found that Ferrero’s box shape is not necessary to obtain a technical result, although it had been previously registered as a patent. In fact, the patent was registered for the closing mechanism, which is not visible on the representation for the trade marks. Lastly, the court also denied that the shape gives substantial value to the goods, as Ferrero’s mints are also sold separately, and it has not been proved that the box influences the purchase experience.

In relation to the likelihood of confusion, the court noted that the only difference claimed by the defendant was the brand on the box. However, the brand (ie Bliki and Tic Tac) 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 mark registrations). By contrast, the defendant box maintained the same shape and size of the Tic Tac mints.

As a result, the court determined that the Ferrero trade marks were valid and had been infringed. In addition, Mocca’s acts amount to unfair competition. Ferrero was awarded the legal costs of this matter, the payment of a penalty should any box be sold by Mocca after 60 days from the decision and the publication of the decision on a national newspaper. However, Ferrero was not awarded damages as no evidence was filed in this regard.

In comparison to traditional trade marks, protecting shape marks can be difficult, as their validity is likely to be challenged in the context of an infringement proceeding. Therefore, national registrations may be helpful tools to ensure an effective enforcement strategy. In addition, as shown in this case, trade mark holders should always consider registering shapes without brands or logos to achieve a greater overall protection.

By Serena Totino and Niall Lavery

Copyright © 2024, K&L Gates LLP. All Rights Reserved.