Paris Court of Appeal considers biscuit registered trade mark infringement

A new decision in the biscuits war

Générale Biscuit Glico France (“GLICO”) and Mondelez Europe and Mondelez France are part of the Mondelez International group, formerly Kraft Foods (collectively referred to as “MIKADO”), one of the global leaders in the food and beverage industry.

GLICO is the holder of two French registered tridimensional trade marks (“3D trade marks”) (above) designating class 30 goods protecting the appearance of two biscuits filed respectively on 19 October 2005 and 29 March 2010.

Mondelez Europe and Mondelez France are the non-recorded licensees and sublicensees of these trade marks.

Griesson de Beukelaer GmbH & Co KG (“GRIESSON”) specializes in the manufacture and marketing of biscuits and Solinest is a French company specializing in the distribution of candies, drinks and biscuits in France (collectively referred to as “CHOCOLE”).

GRIESSON is the holder of the two French trade marks (below) filed on 2 October 2012 covering class 30 goods:

Claiming that the marketing of these products infringes its rights, MIKADO filed an action against CHOCOLE i) to request the cancellation of the trade marks, ii) for trade mark infringement and for the alleged harm caused to the reputation of the earlier 3D trade marks, and iii) for "parasitism" (a French ground which straddles trade mark infringement and unfair competition) in view of the packaging of CHOCOLE’s products.

CHOCOLE filed a counterclaim requesting the cancellation of GLICO’s trade marks, claiming that they lack distinctiveness and that their shape is “exclusively constituted by the shape imposed by the nature or function of the product or which give the product its substantial value” (Article L. 711-2 c) of the French Intellectual Property Code).

On 20 October 2016, the Paris Court of First Instance rejected this counterclaim, but held that CHOCOLE did not commit infringement and parasitic acts. MIKADO filed an appeal against this decision.

On 9 March 2018, the Paris Court of Appeal confirmed the First Instance court’s decision, considering that the earlier 3D trade marks are fanciful and not customary and that if the tip of the biscuit can allow consumers to grab and eat the biscuit without getting their hands dirty, this tip is only one element of the sign that must be assessed as a whole, a sign which is also characterized by its particular thin and long shape. Furthermore, the appeal judges held that CHOCOLE neither showed that the shape was imposed by the technical function of the biscuit nor that it gave the biscuit its substantial value, namely, first and foremost, its taste qualities. The court also indicated that any sign, even falling in the public domain, can constitute a trade mark, even if it comes from a “marketing idea” or if it is “as old as the world itself”, as claimed by CHOCOLE.

Despite the acknowledgement of the validity of GLICO’s 3D trade marks, the court rejected the claims based on parasitism as well as the claims based on infringement, holding notably that i) the reputation of GLICO’s trade marks was not demonstrated and ii) there is a “low similarity between the signs at issue taken as a whole” so that there is no likelihood of confusion despite the identity of the goods concerned. The court stressed the fact that the denomination “ChocOlé” was clearly mentioned on the packaging of the products in question, excluding any likelihood of confusion.

If French judges seem less severe than European courts with respect to the assessment of distinctiveness, this decision raises the issue of the appropriate protection of Mikados as an action based on earlier 3D trade marks and on parasitism appears not to have been the right choice. A pure unfair competition action focused on the imitation of the biscuit itself rather than the packaging of the product could have been a better option in this case.

Case Ref. Paris court of appeal, 9 March 2018, RG No. 2016/24260