The court this month rejected an appeal by BMB for a 3D shape its uses for its Mik Maki brand to be reinstated as an EU trademark.
Tic-Tac maker Ferrero previously succeeded in contesting the trademark in an earlier court decision in 2015, arguing BMB’s mark violated a shape mark it uses for Tic-Tac containers.
‘There is a likelihood of confusion’
In a ruling on October 3, the EU General Court upheld the 2015 decision.
“…The Board of Appeal committed no error when it held that there is a likelihood of confusion, even though the earlier international registration has a weak distinctive character,” said the court in the published ruling.
BMB’s shape trademark was registered on November 15, 2007 with the European Union Intellectual Property Office (EUIPO).
Ferrero filed an application aiming to declare the trademark invalid on July 11, 2011.
It said the trademark infringed Ferrero's own trademark registered on March 12, 1974, in France for a 3D shape.
The Cancellation Division said there could be confusion and annulled BMB’s trademark on April 25, 2012.
BMB appealed the decision. But this was dismissed by the Third Board of Appeal of EUIPO in a decision on September 8, 2015.
Ferrero ‘pleased’ with decision
The EU General Court this month upheld the September 2015 ruling, following another appeal by BMB.
It ordered BMB to pay Ferrero’s costs.
Ferrero told us in a statement: “Ferrero is pleased with the Decision of the General Court, which confirms that investments in important brands can be protected against third parties attempts to take unfair advantage from their popularity.”
ConfectioneryNews has contacted BMB, but has yet to receive a response.
Ferrero has retained the trademark for its Tic-Tac container, which it says is protected in all EU countries.
EU General Court (First Chamber)
Case : T‑695/15
October 3, 2017
BMB sp. z o.o., v European Union Intellectual Property Office (EUIPO), and Ferrero SpA