Since 2006 well-known chocolate snack manufacturers Mars and Nestlé are involved in trade mark infringement proceedings before Belgian courts over trade marks registered by Mars for 'Maltesers', small, light, round, wrapped around with chocolate little balls, offered in a red coloured package which bear the trade mark 'Maltesers' and pictures of the chololate balls. Mars registered the packaging as a figurative trade mark, and also an abstract composition of the balls (without the word mark Maltesers; to be short: a sort of O2 of chocolate balls - Benelux registration with number 801054). In 2003 Nestlé introduced similar looking chocolate balls based on the well known rectangular KitKat cookies, using the name 'KitKat Ball' in Belgium, also in a red coloured package with chocolate balls floating around the trade mark Kit Kat. After the Antwerp Court of Commerce dismissed the infringement claims (mainly - to be very short - while the court found no risk of confusion, because the word marks on the packaging are dominant and so different that the public, familiar with 'such ready to eat candies', will not
be confused) Mars appealed to the Antwerp Court of Appeal, while Nestlé invoked the invalidity of the chocolate balls composition trade mark with a counterclaim. With a decision of April 9, 2009 the Court of Appeal honoured the invalidity claim and accordingly denied the appeal by Mars. I try to summarize the Court's considerations with regard to the invalidity of the trade mark:
A. The trade mark shows only the product itself ('a small round light cookie wrapped around with chocolate in a dynamic - more or less floating or flying - grouping that is common in the candy business against a very common red coloured background that is usual, non distinctive in the milkchocolate business');
B. The trade mark uses a combination of elements which are usual in the trade of sweets and accordingly lacks distinctiveness. It has no capacity to refer to the commercial origin of the product;
C. 'In the end this trade mark is nothing more or less than a marketing consideration due to which the packaging of the product is illustrated to show the appearance of the product and accordingly different from the care for the product to identify it with a trade mark. The red background colour is only used because of its attractive power in this business and also as pure decoration, not to communicate any secondary meaning. The 'certain arrangement, density and reflection of the litlle balls' as invoked by Mars, is apart from the obvious reality of that arrangement in the trade mark, nothing more than the sum of the non distinctive elements and lacks therefore distintiveness.'
D. The trade mark has not acquiered distinctiveness through use, apparently because the chocolate balls configuration used on the packaging does not match with the trade mark, and furthermore because the trade mark is not used as such, but allways in combination with 'Maltesers';
E. Market surveys from Mars are not evident and well-found criticized by Nestlé;
F. Conclusion: the trade mark has no distinctiveness at all and furthermore only consists of elements that are usual in the bona fide trade of ready to eat chocolate snacks.