A ruling of the Italian Supreme Court in a dispute concerning the shape mark covering the Tic Tac mints’ box confirms that trademark registration for packaging offers a valid defence against copycats and unfair competition.

The box registered EU-wide by Ferrero as a shape mark.

The first civil section of the Italian Supreme Court issued a ruling on 28 April 2023, published on 11 May 2023, in proceedings between Italy’s Ferrero S.p.A. (Ferrero) and Polish company Mocca Spol. S.R.O. (Mocca).

The District Court, and later the Court of Appeal, of Turin had already ruled that the sale in Italy by Mocca of boxes of mints bearing the “Bliki” trademark had not only infringed the shape marks held by Ferrero for the boxes of its “Tic Tac” mints, but also amounted to unfair competition.

Mocca appealed the decision of the Turin Court of Appeal before the Italian Supreme Court on several grounds, all of which the higher court struck down as either inadmissible or unfounded.

In one of the pleas in particular, Mocca maintained that the shape mark owned by Ferrero for the box for “Tic Tac” mints was not registrable under current trademark law, firstly because the shape was functional, and secondly because the shape of the box added “substantial value” to the product, changing the product’s identity and increasing its value.

The Supreme Court’s ruling confirmed that as far as applicable trademark law is concerned, a “functional shape” is a shape that is indispensable for obtaining a functional result; in the case at issue, the shape of the box for which Ferrero holds trademark rights is not the only possible shape fulfilling the function of packaging mints, therefore it is neither “functional” nor does it confer substantial value to the product; the court concluded that Ferrero’s trademark registration for the “Tic Tac” box is valid.

The decision also pointed out that it is precisely because the shape of the “Tic Tac” box is not the only possible shape for a box of mints, that such a shape allows consumers to distinguish the origin of the product; the box therefore possesses “distinctive character”, which is a requirement for trademark registration.

The Supreme Court rejected the appeal entirely and ordered the appellant to bear the expenses; Mocca will therefore no longer be able to sell in Italy its “Bliki” product in the contested box, and a penalty is to be applied for each box sold after the date set by the court.

The ruling confirms the crucial importance of registering packaging as a trademark to fight counterfeiting and unfair competition especially in the food sector, a particularly crowded market where packaging is decisive in guiding consumers but is also very easy to imitate.