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Trademark infringement case favours Ferrero, report

By Jane Byrne , 08-Apr-2010

A French court has ordered German manufacturer Candy Team to pay €200,000 in damages to Italian confectioner Ferrero over trademark infringement, according to a media report.

Ferrero claimed that German firm Candy Team were manufacturing, importing and commercializing sweets in France under the name 'Pick Up' with packages that were identical to its Tic Tac products, and thus it instituted legal proceedings against Candy Team before the Paris Court for trademark infringement and parasitism, reports International Law Office.

The Paris Civil Court of First Instance, states the article, has confirmed that Ferrero’s three-dimensional trademark for products in Class 30, including sweets, was valid following a challenge brought by the company Candy Team.

It is not yet known whether Candy Team has appealed the decision.

In the cut-throat world of confectionery, innovation is crucial. When a company hits on a best-seller, it makes sense to protect it with a trademark. But simply obtaining the trademark may not be enough to keep competition at bay – and companies may even become the victims of their own success.

Parasitism

The court ruled that Candy Team had sought to promote its own products by taking undue benefit from the investments made by Ferrero for its Tic Tac products, which constituted distinct acts of parasitism

However, the court concluded that the challenged packages did not infringe Ferrero's prior rights in its three-dimensional registration, as the overall visual impression between that element and the Pick Up product was different enough to avoid any risk of confusion.

Mars case

Last December, Mars US lost an appeal against a trademark infringement in an Australian federal court involving a rival to its well known Maltesers brand.

Mars’ initial complaint against a product called Malt Balls which is produced by Melbourne based company, Sweet Rewards, was thrown out of court in June this year.

The confectionery giant has alleged that the product was too similar to the packaging of its popular Maltesers products, and that the Australian importer and distributor was infringing its trademarks and contravening the Trade Practices Act.

And, in its appeal notice filed in June, Mars argued that the trial judge erred in placing excessive weight on the reputation that Mars had in the Maltesers trade mark.

However, Mars’ complaint was again rejected by the appeal judge today, who ruled that Maltesers are so famous that there is no danger of consumers confusing the two brands.

Colour argument

Both Maltesers and Malt Balls come in red packaging that bears an image of floating chocolate-covered balls. But while Maltesers are sold in pouches, Malt Balls come in jars; moreover, the shade of red differs.

But the crucial difference for the judge was that Malt Balls do not use the word ‘Maltesers’.

And, in 2008, Cadbury was also the loser in an Australian court case over its claim to the copyright of the colour purple.

Cadbury took action to try to stop local rival Darrell Lea using purple for its packaging and advertising.

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