The proof is in the pudding

10 August 2011

Manon Rieger-Jansen - Lara van Huizen, Manon Rieger-Jansen

On July 6th the District Court of Utrecht rendered a decision in a tasteful case regarding registered shape marks for pudding packaging.

FrieslandCampina is a company that manufactures and supplies pudding products under the name Mona. Since the 1970s, Mona has been selling their puddings in plastic cups with vertical ridges and since 1998 it added a cardboard cover to its packaging.

Assumingly after having discovered similar products offered by its competitors, FrieslandCampina undertook an accelerated registration for the following two shape marks at the Benelux Office for Intellectual Property (BOIP):

Pudding packaging for FrieslandCampina

The procedure for accelerated trade mark registration can be finalized within a couple of days and the assessment of the absolute grounds for refusal and opposition take place after registration.

With these two trademark registrations in place, FrieslandCampina started trademark registration proceedings against a competitor called De Natuurhoeve, whose products are sold as private label products in various supermarkets. Inter alia the pudding products with the following packaging and appearance:

Pudding packaging for De Natuurhoeve

FrieslandCampina argued that De Natuurhoeve infringes FrieslandCampina’s registered shape marks by producing and selling similar packaging which results in likelihood of confusion and by establishing a link between the products from De Natuurhoeve and the well known trademarks of FrieslandCampina.
The core of the case actually concerns the scope of protection of the registered marks. FrieslandCampina argued that the scope of protection of its registered trademarks concerns the three-dimensional shape of its pudding packaging.

Unfortunately for FrieslandCampina the District Court disagreed and found that the proof is in the pudding. Mind you, this is not a judicial invitation to put your taste buds to use in judging trademark infringement. The true value of something can only be judged when it's put to use, in this case the ‘value’ of the trademark when invoked against competitors in the market.

The District Court judged that if FrieslandCampina had intended the trademark protection solely of the three-dimensional shape of its pudding packaging and the rectangular shaped cardboard clip, FrieslandCampina should have registered those shapes as a trademark. In fact the trademark registrations are much broader and also the other elements, should be taken into consideration as well.

In assessing whether De Natuurhoeve infringes FrieslandCampina’s trademarks, the District Court used the trademarks as registered to judge the likelihood of confusion. The graphic components, such as the red cover with letters MONA in white colour, were also taken into consideration even though FrieslandCampina argued that the distinctive and dominating component is solely the shape of the pudding packing excluding the also registered graphic components.

The District Court came to the conclusion that there is no likelihood of confusion and the claim based on reputation of the trademarks was dismissed as well. Although the Court accepted that the trademarks are well- known it there was no link established between the products of De Natuurhoeve and the well known products of FrieslandCampina. .

This case proofs that shaping the shape mark is harder then it seems. The true value of the FrieslandCampina registered trademarks was only fully realised once they were invoked against the products of De Natuurhoeve. Unfortunately for FrieslandCampina it seems that in its fight against this competitor its registered shape marks meets the characteristics of its pudding: soft and jiggly.