On 3 January 2008, the Court of Appeal of The Hague rendered a decision in the matter of Mars Inc v Kraft Jacobs Suchard. Mars filed a claim for the revocation of an international trade mark registration by Kraft. Kraft's three-dimensional mark consisted of packaging for triangular shaped chocolates (the triangular shape mark). The District Court found that this mark did not originally have any distinctive character and had not acquired distinctiveness through use. However the District Court also found that, as Kraft also filed trade marks for both a chocolate bar and its packaging (the Toblerone marks) and because these marks had acquired distinctiveness through use and the triangular shape is a dominant/distinctive part thereof, the three-dimensional triangular shape mark had acquired distinctiveness through use together with the Toblerone marks. The District Court found support for these findings in market surveys submitted by Kraft.
The Court of Appeal confirmed the finding of the District Court that the triangular shape mark did not itself have distinctive character and that this mark had not acquired distinctiveness through independent use. The remaining question was whether this mark had acquired distinctiveness through use because of the distinctiveness of the Toblerone marks.
With reference to the decision of the ECJ of 7 July 2005 (Nestlé v Mars), the Court of Appeal found that the District Court rightly decided that distinctiveness acquired through use should not necessarily concern the entire mark, but can instead take place in relation to the dominant and distinctive parts thereof. However, the Court of Appeal did not agree with the finding of the District Court that the triangular shape mark had acquired distinctiveness through use together with the Toblerone marks. This was because there are differences between the triangular shape mark and the Toblerone marks and because the District Court wrongly focused on the two-dimensional similarity, whereas the triangular shape mark is three-dimensional. Furthermore, according to the Court of Appeal, the market surveys submitted by Kraft did not show that the triangular shape mark acquired distinctiveness through use together with the Toblerone marks.
According to the Court of Appeal, market surveys are only relevant if they show the perception of the relevant public in relation to the signs at the date of filing. Market surveys like the ones submitted by Kraft, which were conducted after the filing date of the trade mark, are therefore irrelevant. The Court of Appeal rejected the mere statement by Kraft that the circumstances under which the market surveys were performed were not different from those at the filing date. In this respect, the Court of Appeal found it relevant that the consumer who is questioned in a market survey is confronted with information other than what they would find in a normal shopping situation. In such a situation, the importance of market surveys for normal sales circumstances is limited, even more so when shape marks are the subject of the survey and the consumer is not used to identifying the origin of the goods from the shape of the packaging.
On the basis of this decision, it can be concluded that it will be virtually impossible for owners of three-dimensional shape marks in proceedings before a Dutch court to use the results of a market survey to prove that their mark has acquired distinctiveness through use. It is not yet known whether Kraft has filed an appeal to the Supreme Court but the ultimate decision will have a great impact on owners of three-dimensional shape marks.
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