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Trademark trumps design right in Mik Maki Tic Tac dispute


The trademark registration procedure provides brand owners with the opportunity to identify and object to potentially conflicting applications. But, what if a conflict exists between a trademark and design right? This is a question recently addressed by the EU General Court in its judgement on Tic Tac’s invalidity action against Mik Maki’s Registered Community Design.

Mik Maki registered the design of its sweet containers (pictured below, left) as Community Design in 2007. This prompted rival Tic Tac to file a declaration of invalidity on the basis of likelihood of confusion with its (earlier) three-dimensional international trademark registration (shown below, right).

Proving likelihood of confusion
Article 25 of the Community Design Regulation states that a Community Design may be declared invalid when (among other things): (e) “the sign is used in a subsequent design, and EU law or the law of the Member State confers on the right holder of the sign the right to prohibit such use”.

The owner of a trademark can prohibit attempted registration of its sign(s) as a Community Design therefore. One way that they can do this is by showing likelihood of confusion with its earlier trademark; by showing, in other words, that the relevant public may link the products and services in question as coming from the same or economically-linked undertakings.

The test for likelihood of confusion takes into account all relevant circumstances of the case. Three particular aspects are relevant within this assessment:

  • The visual comparison (the device of a mark);
  • The phonetic comparison (the spoken sound); and
  • The conceptual comparison.

In addition, the assessment includes a comparison of the relevant products and/or services, where a low degree of similarity between the goods or services may be offset by a high degree of similarity between the signs and vice versa.

Applying the test to Mik Maki
Unsurprisingly, the court found there to be a high degree of similarity between the products of Mik Maki and Tic Tac. In terms of the visual comparison, it was also noted that both registrations consisted of transparent and rectangular containers with an opaque white lid; moreover, the front and back part of both boxes are connected by the label. Even though the contested design right shows a few differences compared to the earlier trademark registration - such as the curved edges of the box and the placement of the label - these differences did not outweigh the high degree of visual similarity, according to the court. The fact that the contested design is represented filled with sweets is not a factor in the visual comparison, given the fact that the sweets are not a specific component of that registration.

The Court concluded the comparison by noting that, in this case, no phonetic or conceptual comparison can be executed, due to the fact that the earlier trademark does not contain any word elements and both registrations are devoid of all meaning. Nonetheless, by combining the visual similarity with the high degree of similarity of the products, the court concluded that there is a likelihood of confusion with Tic Tac’s earlier trademark registration and found in its favour, therefore, with its invalidity action against Mik Maki’s Registered Community Design.

For specific advice on protecting design rights, please speak to your Novagraaf attorney or contact us.

Myrthe Pardoen is based in Novagraaf’s Competence Centre in Amsterdam