3D TRIANGULAR TRADEMARKS
JURISDICTION REPORT: NETHERLANDS
DISTINCTIVE CHARACTER OF
Michiel Rijsdijk
Arnold + Siedsma
On January 5, 2010, 10 years aſter Mars started an action against the three- dimensional trademark registration of Kraſt, the Supreme Court of the Netherlands gave its final judgment. Mars claimed the nullity of the three- dimensional trademark for a triangular box for chocolates and alternatively a non-infringement declaration of that trademark with its product. Kraſt’s counterclaim was based on trademark infringement by Mars.
Te nullity claim was based on Article 3 (1) b of the Trademark Directive No. 89/104, which states that a trademark can be declared void if it lacks distinctive character. Te district court rejected both of Mars’ claims and ordered it to cease and desist the infringement of Kraſt’s trademark. Mars appealed against this decision. Te court of appeal stated that with respect to the nullity claim, it must be considered whether the sign is able to distinguish the origin of the goods from the goods of other companies. It must be considered too that the perception of three-dimensional marks differs from the perception of word and figurative marks, since the public is not used to identifying the origin of goods from their shape.
Distinctive character is therefore easier to accept when a shape differs significantly from what is standard in the relevant sector. If a trademark has no distinctive character ab initio, it can be acquired by integration. It is not necessary that the sign is used on its own—distinctive character can also be accepted when the sign is part of, or used in connection with, a registered trademark. Te court of appeal reversed the judgment and nullified the three-dimensional trademark.
Following the decision, Kraſt appealed to the Supreme Court. First Advocate General (AG) Verkade assessed Kraſt’s three complaints and gave his conclusion. Te first complaint concerned the opinion of the court of appeal that the trademark has no distinctive character ab initio. Te court of appeal assessed the packaging in the Benelux of different chocolates, excluding those of chocolate bars. Te packages were considered to be very diverse. Since the triangular shape had no other significantly different elements, the court decided that it could not act as a trademark. Te consideration of packages in the Benelux and the consideration that they constituted an image of the relevant sector when the trademark was filed were made correctly, according to AG Verkade. He added that even if Kraſt was the first to use that triangular shape for a chocolate box, that does not mean it has a distinctive character of its own. Tis made the decision of the court of appeal correct. Te first complaint failed.
Te second complaint concerned the consideration that there is no integration in connection with a Kraſt chocolate bar on the ground that the three-dimensional triangular box cannot be seen as part of that three- dimensional trademark of a pyramid-shaped piece of chocolate. Te AG
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“THE COURT OF APPEAL STATED THAT WITH RESPECT TO THE NULLITY CLAIM...IT MUST BE CONSIDERED TOO THAT THE PERCEPTION OF THREE-DIMENSIONAL MARKS DIFFERS FROM THE PERCEPTION OF WORD AND FIGURATIVE MARKS, SINCE THE PUBLIC IS NOT USED TO IDENTIFYING THE ORIGIN OF GOODS FROM THEIR SHAPE.’’
believed that the court of appeal made the right decision, and the second complaint also failed.
In its third complaint, Kraſt appealed against the decision that since it was already considered by the court of appeal that both products are not identical, there is no similarity or trademark infringement. Te court of appeal considered that the fact that Mars’ product is offered laying flat and Kraſt’s trademark is offered standing up is important for the public’s perception. AG Verkade believed that the court of appeal correctly meant to consider that the three-dimensional trademark is void, and Kraſt cannot receive protection through the back door based on confusion on the part of the public. Te AG believed that Kraſt was correct in its statement that product offering is not an element in the assessment of distinctive character. However, the court of appeal considered the likelihood of confusion and therefore this had to be taken into account in that assessment. Terefore, the third complaint failed.
Te Supreme Court followed the AG in his rejection of Kraſt’s complaints and gave no supplemental motivation. Tis means that the trademark registration will be removed for the Benelux and that the triangular chocolate box is free to be used at last.
mrijsdijk@arnold-siedsma.com
World Intellectual Property Review March/April 2010
49
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