COMPARISON WITH PREVIOUS CASES:
- FERRERO vs MOCCA S.R.O. SPOL: Tic Tac
To provide context to this recent ruling, it is valuable to compare it with the case of Ferrero vs. Mocca S.r.o. Spol, which involved the three-dimensional trademark consisting of the packaging of “Tic Tac” sweets. Despite differences in the products involved, both cases underline the significance of analysing shape trademarks comprehensively.
In the Ferrero – Mocca S.r.o. case, the Milan court emphasized the importance of a holistic assessment of the packaging of “Tic Tac” sweets to determine the likelihood of confusion. It was observed that, although a meticulous analytical examination of the specific elements of the boxes highlights structural differences, the actual existence of an undue confusing interference needs to be demonstrated by considering the context of the general appearance of the two containers.
Similarly, the Court of Brescia’s decision in the Barilla case focused on the overall similarity between the contested biscuits and Barilla’s registered trademarks.
- A CLOSER LOOK AT ILLVA SARONNO vs. CASONI FABBRICAZIONE LIQUORI
In the case between ILLVA SARONNO and CASONI FABBRICAZIONE LIQUORI, the Court of Turin provided additional insights by examining liquor bottles as three-dimensional trademarks.
In this instance, the court favoured a holistic approach over a detailed analytical one, stressing the need to consider the overall appearance of the bottles.
The assessment of similarity and confusion in the liquor bottles case emphasized the importance of product identity and the distinctiveness of ILLVA SARONNO S.p.a.’s trademarks. This parallels the rulings in the Barilla and Ferrero cases, highlighting the significance of an inclusive evaluation in shape trademark disputes.
COMPARISON AND FINAL THOUGHTS:
Drawing comparisons between these judgements underscores the intricacies involved in shape and three-dimensional trademark cases. The approach of the Court of Brescia to the similarity between the biscuits and the trademarks registered by Barilla, i.e., the emphasis on considering the general context and overall appearance of the products, reflects a trend in legal interpretation to prioritize a comprehensive assessment to prevent confusion or association among consumers.
The overall analysis proved to be crucial both in the context of the shape of the products themselves (biscuits) and in product containers (boxes of sweets and bottles of liquor), suggesting that the Courts recognize the importance of assessing similarity by considering the product in its entirety. These rulings indicate a move towards a standardized approach that evaluates similarity in its entirety to safeguard intellectual property rights and mitigate risks of confusion or imitation. The decision by the Court of Brescia to modify the packaging of other biscuits by Biscottifici Italiani showcases the importance of evaluating confusion not just based on product shapes but also on their containers.
In conclusion, these cases shed light on the complexity of shape and three-dimensional trademarks and signal a shift towards a more uniform approach that emphasizes a thorough examination to address potential risks in the market, in order to prevent parasitic similarities and possible confusing interference.
Our team of trademark attorneys is at your disposal to advise on the best strategies for shape trademark protection.
