Mutiny on the Bounty

Date: 3rd September, 2009

The article by Jeanine Rizzo was published in the Business Section of the Times of Malta. The article discusses intellectual property isses related to the recent trade mark cases for Bounty and Gucci in European and American courts.

Mutiny on the Bounty

For years the famous tag-line of Bounty chocolate has been “The taste of Paradise”. First developed by Mars in 1951, this coconut treat has been a household name for decades, with those favouring it hoping that as soon as the chocolate touches their lips they will be transported to the paradise depicted in the adverts: white sandy beaches which stretch out for miles, palm trees, and the lazy lap of waves against the sand. In reality, Mars Inc have been left with a bitter taste as they have lost their bid to register the shape of a Bounty chocolate bar as a European three dimensional trade mark.

We have seen that in recent years there has been a push for non-traditional marks: smell marks, taste marks, and colour marks – but shape marks remain the most sought after and interesting. Where does one draw the line?

Apparently for European judges, the line stops at the rounded edges and arrows (also known as “chevrons”) on top of Bounty chocolate bars. Following complaint by German chocolate maker Ludwig Schokolade, that the shape “does not depart significantly from the norms and customs of the relevant sector” these “features” have been deemed by the European Court of First Instance to be not distinctive enough. Other chocolate bars might have rounded edges, a similar wave, or may choose to opt for a similar wave in future. Distinctiveness is a stock requirement for all trade marks, fail that and the chances of success of trade mark registration are gone. For example, DOUBLEMINT was stopped from registration much to Wrigley’s dismay, because it was held that the term might be one which other chewing gum producers might wish to use in future, and because the word was not especially distinctive.

One way around the hurdle of distinctiveness is to prove consumer association through use of the mark over time. However, the Bounty bar's rounded ends and chevron design in the chocolate were not of themselves sufficient, and the judges said documents submitted by Mars were also insufficient to demonstrate the Bounty's “distinctiveness acquired through use” – doubling Mars’ disappointment.

Recent trade mark developments yet again involve the food and the fashion industries… both of which are heavily involved in trade mark traffic. Competition is rife, and better-known marks are exposed to appropriation and counterfeiting. Moving across the pond, we come to another trade mark battle over the use of a family name…GUCCI.

Paolo Gucci’s ex-wife, Jennifer, and daughter Gemma Gucci have been barred from trading under the Gucci family name. The Paolo Gucci story is worthy of its own attention – he broke away from the family earlier in his life and was enjoined by a Court from using his name in a way that would be confusingly similar to his family’s already established and well-loved Gucci trade mark. This time around, it’s his daughter and ex-wife’s turn. They have been banned from licensing their names for coffee shops, bedding, house ware, cosmetics, hosiery, handbags, wine and ice cream. Allegedly, they were using a green-red-green stripe diamond pattern, together with variations of the initials “JG” and interlocking “GG”s – sounds familiar?

This high profile case heard in New York set aside a staple defence of trade mark law. Usually, a person is allowed to make use of their own name as a trade mark, however since these family members were using the Gucci name in order to hitch a ride on Gucci’s pre-established success, the Court deemed them to be acting in bad faith, and that their marks are confusingly similar to the original Gucci mark.

Therefore, the name-specific exception was held not to apply to them. Rightly so. However, one wonders whether this will further spur litigious companies like McDonalds to continue in their quest of opposing similar trade marks. For example, McDonalds are very strict in policing the use of the ‘Mc’ at the beginning of trade marks….they have even managed to stop a low budget US motel from using the mark McSleep!

We now wait to see whether any of these decisions will be appealed, and eagerly anticipate new battles which these industries will churn out as trade mark games continue in markets worldwide.

http://www.timesofmalta.com/business/view/20090903/features/mutiny-on-the-bounty