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20 October 2003
In two recent cases the domestic courts gave short shrift to companies seeking protection of their trademarks.
In 1997 Société des Produits Nestlé SA, which markets chocolate sweets under the trade name SMARTIES, secured a trademark registration for its distinctive tubular packaging.
In a recent action Nestlé sued Master Foods, which markets M&M minis in tubes. Nestlé claimed that the marketing of sweets in cylindrical tubes contravened its trademark right. Nestlé also called for other confectionary manufacturers to be prevented from marketing chocolate sweets in tubes.
In turn, Master Foods argued that the tube was a basic geometrical figure and therefore should not be subject to trademark, and that Nestlé’s registration should be deleted from the Trademarks Register.
The Supreme Court ruled found that Nestlé was not entitled to trademark protection of its Smarties tube and that no trademark infringement had taken place. For many years, it was common practice for sweets and confectionary to be sold in cylindrical tubes. Thus, the Smarties tube was to be regarded as a basic form and any recognition of Nestlé having trademark rights to the tube would imply it having the sole rights to this standard form of packaging.
Accordingly, the Supreme Court ordered that Nestlé's registration be deleted from the Trademarks Register.
In a separate case, the lingerie company Chantelle Société Anonyme filed with the Trademarks Office and the Board of Appeal requesting cancellation of registration of the term 'Anne Shantel' on the basis of likelihood of confusion with its trademark CHANTELLE. Both names were registered for use in the ladies' lingerie market.
At trial it was not contested that the trademark CHANTELLE was not particularly established in Denmark. Nevertheless, the Maritime and Commercial Court found for the owner of the trademark.
However, on appeal the Supreme Court found that no similarity or risk of confusion existed between the names. Accordingly, the owner of the trademark CHANTELLE was not entitled to demand deletion of the competing term.
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