Mik Maki design invalid on the basis of earlier Tic Tac rights

In September 2015 OHIM (Trade Marks and Designs) Third Board of Appeal published its Decision in relation to Invalidity Proceedings brought by Ferrero (Global Confectionary Group behind, amongst many successful brands, Tic Tac breath mints) against the Community Registered Design (CDR) of for the packaging of 'Mik Maki' sweets. The proceedings were brought on the basis of Ferrero's earlier rights, in particular trade mark IR-405177 (a three-dimensional mark for the packaging of Tic Tac sweets).

OHIM dismissed the appeal of the Polish Company, upholding an earlier decision establishing the invalidity of its CDR on the basis of a likelihood of confusion with the earlier rights of Ferrero.

In this case both the signs and the goods or services covered by those signs were very similar, which in effect compensated for the relatively weaker distinctiveness of Ferrero's earlier rights, depicted as a plain box (a plain, empty and unlabelled Tic Tac packet). A writer on the Marques blog observed that "OHIM strongly supports the standpoint that even a weak distinctiveness of an earlier three-dimensional trademark, when dealing with a great similarity to a later design and very close similarity between the goods may create a risk of confusion".

Despite the boxes being finished differently – a particular point of interest being the differing sharp and rounded edges - the differences between the two small confectionary boxes in question were considered insufficient to counter-balance a likelihood of confusion. As regards the labels, the 'Mik Maki' label on the front of the box was orange and green (the same colour as both the contents and the rest of the label) and this was considered negligible in terms of comparison.