Layered Boer'n yogurt in a bucket: a tasty, transparant trade mark

Monday, 28 September 2009

De Zuivelhoeve Productie B.V. – a Dutch subsidiary of Levola Hengelo B.V. – is the producer and distributor of dairy products. One of them is yogurt in different flavours packed in transparent, 800 millitre buckets with a handle. Before the buckets are filled with yogurt the bottom of the buckets are covered with a layer of fruit. Accordingly one can clearly see the division between the yogurt and the layer of fruit. As De Zuivelhoeve states on its website: De Zuivelhoeve is happy to show its products to you. Levola owns several shape trade mark registrations – exclusively licensed to De Zuivelhoeve - in the Benelux (amongst others with trade mark registration numbers 0708971, 0708792 and 0708974, all dated April 3, 2002, see picture). The product is sold by De Zuivelhoeve as ‘De Zuivelhoeve Echte Boer’n Yoghurt’(on the UK market the ‘Echte Boer’n’ – translated freely as real farmer’s - seems not to be used, the yogurt is marketed as Farmhouse Yogurt). 

Levola and De Zuivelhoeve won summary – trade mark infringement - proceedings last Friday before the Presiding Judge of the District Court (R.J.B. Boonekamp) against the German supermarket company Lidl Nederland GmbH. As from March 24, 2009 Lidl had started to sell a similar layered product in transparent, 1 liter buckets with a handle after preceding negotations for the delivery of approximately 1.000.000 buckets of Echte Boer’n yogurt a year by Levola and De Zuivelhoeve to Lidl for sale in Dutch Lidl supermarkets had failed. Lidl used the trade marks 'Milbona' and 'Oma's Yoghurt' (grandma's yogurt) on the buckets. Shortly before the summary proceedings commenced Lidl had started proceedings on the merits – before the District Court Almelo - against De Zuivelhoeve to obtain cancellation of the shape trade mark registrations and a declaratory decision that the trade of layered yogurt in transparent buckets is not a trade mark infringement nor passing off against De Zuivelhoeve.

The Presiding Judge decided that Lidl infringed the shape trade marks. Because Levola and De Zuivelhoeve did not hold that the shape mark registrations did protect the shape of the bucket as such, the Presiding Judge did not consider as such the grounds for cancellation that Lidl used in the proceedings on the merits (art. 2.1 par. 2 of the Benelux Convention on Intellectual Property (which reads: ‘However, solely comprising a shape which is imposed by the very nature of a product, which gives the product substantial value, or which is necessary for obtaining a technical result, may not be regarded as trademarks’) and art. 2. 28 par. 1 of said convention (‘Any interested party, including the Public Prosecutor, may invoke the nullity of: (a) registration of a sign which cannot constitute a trademark as defined in Article 2.1(1) and (2);(b) registration of a trademark which is devoid of distinctive character;(c) registration of a trademark which comprises solely signs or indications which may be used in commerce to indicate the nature, quality, quantity, intended purpose, value, geographical origin or time of manufacture of a product or provision of a service, or other characteristics thereof; (d) registration of a trademark comprising solely signs or indications which have becomecustomary in everyday language or in the bona fide and established practices of the trade’).

Lidl’s defense that the shape trade marks had lapsed due to non-use for a continuous period of five year – De Zuivelhoeve had changed the imprint on the buckets which differed from the imprint on the bucket used in the trade mark registration – was not followed either: De Zuivelhoeve argued successfully that the five year period had not lapsed yet because the imprint was changed in October 2005. The Presiding Judge also took into account that the elements of the imprint which were the most eye-catching were still identical.

Before addressing the infringement questions the Presiding Judge defines - first of all - the trade marks as - similar - shape trade marks with elements of a figurative trade mark, consisting of a combination of: 1) the threedimensional shape of a bucket, 2) the transparency of the bucket, 3) the - due to the transparency of the bucket - clearly visible divided layers of (dark coloured) fruit and (light coloured) yogurt, and 4) the words and images imprinted on the bucket.

As a second step the Presiding Judge had to tackle the issue of distinctiveness of the trade marks because the parties disagreed on that issue. The Presiding Judges recalls to memory - with approval - some earlier 'bucket' decisions of other courts in the Netherlands in which was decided that the shape of a bucket and the transparency of a bucket as such can not be monopolized, and accordingly considers that a shape mark based on this elements apparently lacks distinctiveness. However the Presiding Judge also refers to a 2003 decision of the Court of Appeal of Arnhem in which was decided - based on a market survey - that the bucket shape had acquired distinctiveness. 78,6% of the respondents who were shown a blank bucket with a layered yogurt and fruit composition replied that they had used or seen that product. 66,7% (51,7% of all respondents) replied to the question 'Do you maybe know what is usually imprinted on the bucket?' with other trade marks of Levola / De Zuivelhoeve that are used on the bucket (De Zuivelhoeve / Boer'n yoghurt / Boerenyoghurt / farm logo with stripes / imprint bucket lid). Accordingly the Court of Appeal decided that the average consumer - more especially the public which eats or buys yogurt or custard) identifies the bucket trade marks with the yogurt product of Levola / De Zuivelhoeve. The Presiding Judge follows the Court of Appeal's lead and concludes that the shape trade marks are sufficiently distinctive.

In the third step the Presiding Judge rows the infringement boat ashore for Levola and De Zuivelhoeve with the ECJ's paddles Puma/Sabel, OHIM/Shaker (C-334/05) and Nestlé/Quick (C-193/06): taking into account the similarities between the trade marks and the sign taken as a whole - the shape and the image of a transparent bucket with a clear(ly visible) division between the yogurt and fruit layers are present are found to be decisive - the Presiding Judge decides that a risk of confusion and therefore an infringement is present. The average consumer might have the impression that the Lidl bucket yogurt originates from De Zuivelhoeve.

Lidl's two last straws couldn't rescue Lidl: the fact hat 'Oma's Yoghurt' is only sold in Lidl supermarkets and that De Zuivelhoeve yogurt is not sold at Lidl's was rejected by the Presiding Judge because it was not held plausible that the public is divided or that the sales channels are totally different. That the essential elements of the shape marks judged on their own might not be distinctive at all or only hardly did not help either: what counts is the combination of elements.

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