General Mills call for shape trademark hearing rejected

In the case, General Mills Inc v Meshubach Food Industries Ltd​, the Court turned down a call for a re-evaluation of a 2009 ruling, in which it upheld a decision of the Tel Aviv District Court to reject General Mills’ allegations of 'passing off' and 'unjust enrichment' claims against two Israeli makers of cone-shaped snacks, reports World Trademark Review. ​​

Under Section 30 of the Israeli Courts Law 1984, a party may request that a matter decided by a panel of three Supreme Court judges be heard in an additional hearing by a panel of five judges if the court's ruling conflicts with the court's own case law; or the ruling warrants an additional hearing due to its importance, difficulty or novelty.

In terms of the request by General Mills, the Supreme Court said in July that it did not meet any of the Section 30 conditions and it denied the company an additional hearing.

The snack shape case ​

General Mills makes a cornucopia shaped corn snack under the Bugles brand, which it markets globally. However, in Israel, the company supplies the half-baked product to local processor Osem, which further bakes, packages and markets it under the Apropo brand.

General Mills brought the action against two Israeli snack producers, citing the fact that the defendants were producing identically shaped snacks to the Apropo brand, and though the packaging was different, an image of the cone shape featured prominently on the front of the competitors’ offering.

But the Supreme Court in October last year agreed with the lower court that while it had been shown to the court that the Israeli public associated the shape of the product with the Apropo snack, there was no likelihood of confusion in relation to the competing brandsdue to the distinctive packaging of the defendants' products.

The Supreme Court also found that goodwill in the product was owned by Osem and not with General Mills and concluded that a ‘passing off’ allegation could not be based on a ‘likelihood of confusion’. The court also argued that General Mills had failed to show injury from post-sale confusion, and awarded costs against the US food group.

Under Israeli law, a novel and original shape of a product can be protected by a patent or by a registered industrial design, but according to the article in World Trademark Review​, General Mills had not registered the snacks’ shape as an industrial design at the time of the filing of allegations.

Court caution ​

Speaking to BakeryandSnacks.com, Brian Clayton, senior trademark agent at law firm Eversheds, said the right to register shape as a trademark exists in the EU under the 1989 amendments to IP legislation but national courts, and the UK patent courts in particular, have been notably hostile to bids aiming to enforce shape trademarks.

“In principal, a company can register a shape within the EU, but in practice this has proved difficult. ​

There is understandable caution on behalf of national trademark offices and IP judges, with concerns that a shape trademark would give companies perpetual protection, unlike patents or industrial design registrations where, typically, there is a maximum period of protection of 15 to 20 years ,”​ he said.

Clayton explained that the onus is on the food and drink manufacturer to show that the public perceive that the shape of its bottle or its food functions as a ‘badge of origin’ for the brand in order to satisfy valid trademark requirements.

However, he cites notable international failings in this regard, noting Unilever's unsuccessful attempt to safeguard the wavy shape of its Viennetta ice-cream, citing survey evidence to establish public perception of its multi-layered gateau’s shape as being unique.

And he said that due to the challenging nature of shape trademark registration, his advice to clients now is to opt instead for the registered industrial design route, which affords protection for products for up to 25 years.