Summer holidays and ice cream go together, don't you think? But now that everyone is back from their holidays, all those lovely ice creams are slowly becoming a distant memory.
Packaged ice cream can be recognised mainly by its name, logo and shape. If someone says Cornetto, Magnum and Calippo, you can probably picture their shape immediately. But it remains to be seen whether this kind of recognition is sufficient for a shape mark as other aspects, such as the prevalence of a shape in the market, must also be taken into consideration. It is common practice to file an application for a shape together with the brand name or logo, as this makes it easier to get around the strict requirements. A recent example of this involves Jezyki ice cream.
An opposition based on this ice cream has been filed against Ferrero Rocher ice cream (which, coincidentally, my children assure me is delicious). The shape of the two ice creams will play a major role in this opposition, in particular the extent to which shape features in these trademarks. Jezyki will probably argue that its registered trademark combines the brand name and the shape, while Ferrero will no doubt dispute this. The problem for Ferrero, however, is that it cannot downplay the shape of the ice cream to too great an extent as this would imply that the shape of its own ice cream has limited protection.
All the same, this is an interesting case that will keep the summer holidays fresh in our minds for a little while longer!
