This article first appeared in World Trademark Review Daily

The Italian Court of Cassation has issued an intriguing ruling on the validity and infringement of shape marks (Case No11531/2021), affirming the validity of the three-dimensional (3D) mark relating to the shape of the Tic Tac box.

Background

Ferrero SpA brought an infringement action before the Court of Turin, seeking a declaration that its shape mark for thepackaging of the Tic Tac sweets had been infringed by Czech company Mocca spol sro’s packaging for its Bliki product. Thedecision of the Court of Turin, which was the subject of the present cassation ruling, was issued in 2019.

In its defence, Mocca requested the invalidation of the 3D trademark, arguing that the shape of the Tic Tac box was necessary toachieve a technical result and was thus functional. Mocca also mentioned the existence of four previous patents protecting theshape. However, both the Court of Turin and the Court of Cassation rejected these arguments.

Court of Cassation decision

The Court of Cassation reaffirmed that Article 9 of the Italian Intellectual Property Code states that a “shape” cannot beregistered as a trademark if it is necessary to obtain a technical and functional result.
In particular, the court clarified the distinction between a “necessary shape” and a “substantial shape”: a “necessary shape” isone that is needed to achieve a technical result and is inseparably connected to the utility of an invention, while a “substantialshape” is a shape that adds substantial value to the product without changing its function. The court emphasised that theimitation of a “necessary shape” is lawful if there is an element of inseparability and necessity, while the registration of a”substantial shape” as a trademark is questionable.
The Court of Cassation thus confirmed the assessment of the court of first instance, which had correctly determined that theshape of the Tic Tac packaging was extrinsic to the product and did not constitute an indispensable characteristic of thepackaging. Such confirmation of the validity of the trademark indicates that it clearly distinguishes the shape from themanufactured product. As a result, the Court of Cassation concluded that Ferrero’s 3D trademark for its Tic Tac packaging wasvalid and infringed by Mocca’s product.

Comment

This judgment is significant because it specifically addresses the validity and infringement of 3D trademarks that are based onthe shape of the packaging of a product, rather than the product itself. It is noteworthy that the position of Italian and EU caselaw on the matter is more favourable and permissive than in the case of 3D trademarks based on the shape of the productitself.