Thanks to Marianna Riedo for collaborating on this article

In its decision of May 11, 2023 (No. 12881), the Italian Court of Cassation stated that the small box used as packaging for Tic Tac mints (marketed by the Ferrero company) is a trademark with distinctive character. In issuing this decision, the court addressed a controversial trademark issue—the validity and infringement of a three-dimensional trademark consisting of the shape of a product’s packaging (rather than the shape of the product itself).

Background

In 2017, Ferrero filed a lawsuit before the Court of Turin seeking to ban the sale in Italy of a product called “Bliki”, which was packaged in a box that was the same shape and size as the Tic Tac box, and was produced by Mocca Spol. S.R.O. (“Mocca”), a company registered in the Czech Republic.

Ferrero claimed that Mocca’s Bliki packaging was an infringement of its three-dimensional trademarks, the earliest of which was registered in Italy in 1973, and that it constituted unfair competition.

Mocca countered that:

• Italian courts had no jurisdiction, as Mocca’s mints were produced in the Czech Republic;
• Ferrero’s trademarks were not valid, as the shape of the box gave substantial value to the goods or was necessary to obtain a technical result;
• There was no likelihood of confusion because the two containers displayed different word marks;
• The shape of the mints is standard in the industry.

The Court of Turin found for Ferrero and stated that the three-dimensional trademarks for the Tic Tac packaging were valid and the Bliki packaging had infringed them.

Mocca later challenged the decision before the Turin Court of Appeals, which upheld the lower court’s ruling in its entirety.

Court of Cassation findings

The Court of Cassation upheld the lower courts’ decisions and confirmed that Mocca’s Bliki could not be sold in Italy.

The court dismissed Mocca’s argument that the Tic Tac box represented a “necessary shape” to achieve a technical result, which would therefore be “imposed” due to its industrial utility it pursues. Under this theory, imitating the packaging would have been lawful, and the three-dimensional Tic Tac trademark would have been invalid because it could not be registered under Article 9 of the Italian Industrial Property Code.

The Supreme Court ruled out the “necessary shape” theory, stating that the shape of the famous little box used for the mints “is only one of many shapes that candy containers could have” and is not required due to the nature of the product. The Tic Tac box could have other shapes without impinging on its function of containing and distributing the mints, because its shape is not purely a solution to a technical problem. The lack of a necessary character in the shape in question is confirmed by the fact that the patent registered by Ferrero and cited by Mocca was merely for the lid, not the entire box.

The trademark was thus eligible for registration because of its distinctiveness. The Court of Cassation concluded that the appellate decision had correctly distinguished between “substantial shape” and “necessary shape.”

Citing the case law of the CJEU, the Court of Cassation confirmed that a sign representing the shape of a product is eligible for trademark protection, provided that the sign can be reproduced graphically and is suitable to distinguish the product or service of one enterprise from that of another (see CJEU, case C-30/15 para 37; joined cases C-456/01 and C-457/01 paras 30-31; case C-48/09, para 39). Under these circumstances (as was the case for the Tic Tac packaging), the Supreme Court concluded that the shape of the box “gives substantial value to the product” by defining its identity and increasing its value.

That said, the Court of Cassation also noted that a three-dimensional trademark cannot be registered if it lacks any distinctive character in the eyes of the relevant consumers, such as when the shape is imposed by the nature of the product or is necessary to obtain a technical result.

Conclusions

This hallmark decision confirms that registering three-dimensional trademarks can prove worthwhile, especially in the food industry, where competitors often leverage the similarity of product packaging to attract consumers. Trademark registrations may be helpful in ensuring an effective enforcement strategy, partly due to the lighter burden of proof for rightsholders compared to the burden when they claim (only) unfair competition.