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Amicus Curiae Team intervenes in TREETS case

On 14 June 2023 the MARQUES Amicus Curiae Team intervened in support of MARS Inc. et al. in civil proceedings before the Tribunal Judiciaire of Paris (“intervention volontaire accessoire”) led by Tobias Malte Müller of the Amicus Curiae Team. He reports on the case for Class 46.

The facts of the case

The MARS companies have brought the following actions:

  1. against PIASTEN/PIASTEN GmbH for filing new trade mark applications for TREETS allegedly in bad faith, seeking the transfer of these marks to MARS or, at least, their invalidity; and
  2. against LUTTI SAS (France) for alleged unfair competition and parasitism.

This is the first time that MARQUES has intervened in a national French case with an amicus curiae brief. MARQUES is represented by Maître Pierre Lubet and his team in these proceedings.

MARS commercialised peanut chocolate sweets under the brand TREETS including in France from 1955 until 1986 using the packaging shown (right).

TREETS was later rebranded to M&M’s. In 2017 MARS’ competitors PIASTEN and LUTTI decided to file and use the trademark TREETS in France. PIASTEN then threatened MARS with a non-use cancellation regarding its historic TREETS trade marks.

Consequently, MARS renounced some of its French TREETS trade marks in 2017. Also in 2017 PIASTEN started applying for new TREETS trade marks in several jurisdictions, including France. Furthermore, in 2018, PIASTEN started commercialising its new TREETS peanut chocolate sweets in France with the packaging shown on the right.

French media received these new TREETS products as a revival of the old TREETS products (“the iconic TREETS candy is coming back”) but there is neither a link with the old brand nor with MARS.

The Amicus Curiae Team’s position

MARQUES supports MARS’ claims of bad faith trade mark application, since in the Amicus Curiae Team’s view this case involves an important topic for owners of historic brands.

It is a general principle that old trade marks that are no longer used and are abandoned by their prior owner can as a rule be used and registered by third parties. However, in this case a survey based on 2,000 interviews in France had been presented. This showed that 59% of the general public still know the brand TREETS.

From a brand owners’ point of view, it therefore seems abusive for a third party to apply for new trade marks to enjoy the continuing good-will and reputation of such a sleeping beauty. In addition, the new trade mark registrations would prevent MARS, being the original owner and producer of the TREETS sweets, from exploiting the TREETS brand in future, e.g. for vintage ads for M&M’s.

In the light of the above, the Amicus Curiae Team is of the opinion that this practice should be stopped as being unfair.

Furthermore, the case raises the question whether actions for lack of use (and/or the threat of such actions) are abusive when they are made for recovering “the goodwill” of a famous older trade mark, which constitutes parasitism; and whether the filing of an application for an old trade mark that is still well-known is fraudulent (even though the old trade mark is no longer used on the market) and should be declared invalid when the purpose of this filing is to recover “the goodwill” of the famous older trade mark.

The hearing

The Court and the parties’ representatives discussed all aspects of the case intensively for three and a half hours. For MARQUES Pierre Lubet underlined the general interest of this issue for brand owners in particular with regard to the essential function of trade marks, namely to guarantee to the consumer an indication of origin.

All three judges showed a keen interest in the legal issues involved in this case and seemed to agree on the general legal interest of this case evidenced by the MARQUES intervention.

The Court will issue its judgement on 25 October 2023. MARQUES will report on the outcome of this case, so stay tuned!

Posted by: Blog Administrator @ 16.37
Tags: Amicus Curiae, TREETS, bad faith,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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