The Turin IP Court on the infringement of the three-dimensional trademarks consisting of Ferrero’s Tic Tac package
By decision No. 5140/2019 of 12 November 2019, the Turin IP Court issued a decision in a dispute between Ferrero S.p.a. and Mocca S.r.o. Spol in relation to the three-dimensional trademarks consisting of Ferrero’s Tic Tac package.
The package at issue is composed of a transparent plastic box with an opening mechanism surmounted by a label bearing the Tic Tac trademark. The shape at issue is the subject of two of Ferrero’s Italian three-dimensional trademarks, registered with no. 1574272 (with label) and no.1478173 (without label) (hereinafter the “Ferrero Trademarks”).
Mocca manufactured and marketed mints in Italy, with the Bliki’s trademark, having the same shape and size as Ferrero’s Tic Tac and which were packaged in boxes essentially identical in shape, size and opening mechanism to the Tic Tac boxes. For this reason, Ferrero filed an action for infringement of its trademarks and for unfair competition pursuant to Article 2598, No. 1 – 3, c.c.
The defendant firstly claimed the lack of jurisdiction of the Italian Court and, alternatively, filed a counterclaim requesting the Court to ascertain the invalidity of the Ferrero Trademarks.
As regards the first claim, the defendant argued that the dispute belonged to the Jurisdiction of the Czech courts, as it is based, manufactures and sells the mints in that State. Nevertheless, with the judgement in question, the Court rejected Mocca’s defence, noting that the products were actually marketed in Italy, in violation of the plaintiff’s Italian trademarks. As a consequence, the case falls under Italian Jurisdiction in accordance with article 7.2 of Regulation (EU) No. 1215/2012 which states that «a person domiciled in a Member State may be sued in another Member State in matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred or may occur», whereas, according to the ECJ case law, the place where the harmful event occurred or may occur covers both the place where the damage occurred and the place of the harmful event that gave rise to such damage. This supports the jurisdiction of the Italian courts, being the courts of the country where the trademarks were registered and hence the courts of the place where the damage occurred.
As regards the merits of the case, the Court accepted the plaintiff’s claim for trademark infringement. The Judge, in particular, ascertained the identity among the Mocca’s packages and the Ferrero’s Trademarks (which identity, moreover, had not been questioned by the defendant), and applied Article 20 (a) and (b) of the Italian IP code, based on which the owner of a registered trademark has the right to prevent third parties from using: a) any identical sign for identical products; b) any sign which is identical or similar for goods or services that are identical or similar, where due to the identity or similarity between the goods or services, there exists the likelihood of confusion on the part of the public. The fact that the word marks on the packages (Tic Tac and Bliki) were different was not deemed relevant by the Court, because only the three-dimensional trademarks depicting the boxes, and not the word marks on the labels were under judgement.
Furthermore, the Court rejected the defendant’s counterclaim according to which the Ferrero Trademarks would be invalid pursuant to article 9 IP Code as the boxes’ shape was necessary to obtain a technical result (which would have allegedly been confirmed by the fact that it had previously been patented) or a shape that gives substantial value to the product. With this ruling, the Court found that, on the one side, both the utility model and the patent previously registered by Ferrero concerned the closing mechanism of the box and not its shape, which was not “solely” dictated by the need to obtain any technical result; on the other side, the court stated that: «the shape gives substantial value to the product, only if it has such an aesthetic quality that it may be considered influential in itself on the customer’s purchase motivation» and this fact was not found to occur in the case at issue. The Court therefore confirmed that the Ferrero Trademarks were valid as they are distinctive shapes which do not fall under the prohibitions of article 9 CPI.
Based on the above, the Court ascertained the unfair competition committed by Mocca, but it dismissed the plaintiff’s claim for damages due to a lack of evidence. Moreover, the Court issued an injunction against Mocca, preventing them from manufacturing and marketing the infringing products, set a penalty of € 10,00 for any Bliki’s box sold by the defendant after 60 days from the decision and ordered the publication of the ruling in the Corriere della Sera Newspaper, in font double the usual size. Finally, the defendant was ordered to pay legal expenses, quantified at € 21.000.