A trade mark jungle: Giraffe Nuts infringe Tiger Nuts

The claimant in these trade mark infringement proceedings is the Dutch company, Frito-Lay. Frito-Lay sells a snack product consisting of a peanut covered with a crispy jacket which is sold under the name 'Tijger Nootjes' ("Tiger Nuts"). Frito-Lay is the owner of several Benelux trade marks relating to this product, including:

• a word mark for 'Tijger Nootjes' ("Tiger Nuts")
• a shape mark (3D) registration (above left) – containing the following description: "Various shades of orange, brown and yellow", "Distinctive is the characteristic diverse colour pattern, as applied on the goods, using the colours"
• a figurative trade mark registration consisting of the packaging of the Tiger Nuts (above left) – containing the words:"'Various shades of green, red, yellow, orange, black, white".

Moreover, Frito-Lay was entitled to an expired patent for the technical process to produce the Tiger Nuts, under which the core of the snack product (the peanut) was surrounded by two layers of a dough material, from which the one closest to the core was more flexible than the one outside, having the effect that when the snack is heated, the inner dough material breaks through the outer dough material.

This process results in a specific taste and the 'tiger like' wrinkled look of the snack product.

The defendant in this case is Intersnack, a Dutch company that has sold since 2015 a highly similar snack product under the name "Giraffe Nuts".

Proceedings at the District Court of Gelderland

Frito-Lay brought proceedings at the District Court of Gelderland claiming that that Intersnack infringed its trade marks by offering for sale the Giraffe Nuts, and based its claims on article 2.20 (1) (a), (b) and (c) of the Benelux Convention on Intellectual Property (BCIP) because:

• Intersnack used the name "Giraffe Nuts"
• because of the exterior/appearance of the Giraffe Nuts
• because of the packaging of the Giraffe Nuts.

The name "Giraffe Nuts"

With regard to the name "Giraffe Nuts" the Court concluded there is no trade mark infringement based on article 2.20 (1) (b) and (c) BCIP because there are not enough similarities between the word mark "Tiger Nuts" and the name "Giraffe Nuts". The Court stated that the fact that both tigers and giraffes can be categorised as "exotic animals" as put forward by Frito-Lay, does not result in a high degree of conceptual similarity.

Furthermore, according to the Court, the low degree of conceptual similarity is to a large extent compensated by the aural and visual differences between the sign and the trade mark, more specifically between the parts TIGER and GIRAFFE.

Lastly, the Court concluded no facts were put forward by Frito-Layo sufficiently to substantiate the statement that Intersnack tried to take unfair advantage of the distinctive character or reputation of the trade mark.

The exterior of the Giraffe Nuts

In order to assess whether the exterior of the Giraffe Nuts infringes the trade marks of Frito-Lay, the Court took in account the exterior of both trade marks and the Giraffe Nuts and stated that, although not every nut looks the same, overall the pattern shown on the Tiger Nuts and the Giraffe Nuts are highly similar.

The Court further assumed that although the relevant pattern is irregular it shows enough characteristics and reoccurring elements in order to be recognisable to the relevant public. The Court therefore assumed that the trade marks and the pattern displayed on the Giraffe Nuts are identical and therefore infringing based on article 2.20 (1) (a) BCIP.

The packaging of the Giraffe Nuts

With regard to the packaging of both products, the court concluded that the sign and trade mark are not similar within the meaning of article 2.20 (1) BCIP.

The court in that regard stated that the most distinguishing features of the packaging as registered, are the word "TIGER" and the logo "Duyvis" that is displayed prominently in the middle of the packaging of the Intersnack product.

The fact that the packaging of Intersnack shows several features that are also present on the packaging of the Tiger Nuts – a picture of the product in the centre of the packaging, the use of the colour green, the display of the name of the product in the middle combined with a lining in a lighter colour, the display of the words "bacon cheese" and the picture of an individual cracked Tiger Nut – are very common for this type of packaging and not very distinctive.

Therefore the packaging of Giraffe Nuts does not infringe the trade marks of Frito-lay.

Conclusion

In conclusion, Frito-Lay was able to crack this case and stop the sale of the same type of snack products based on its (2D) shape trade mark, despite the fact that the patent of Frito-Lay has lapsed.