dpa
Düsseldorf
The Canadian food company McCain has won a trademark battle in German courts against competitor Agrarfrost over the right to sell potato croquettes shaped like smiley faces.
The ruling from the Dusseldorf Higher Regional Court on Thursday prohibits German-based Agrarfrost from selling the products, after finding it infringed on McCain’s products.
Although product shapes are generally free from trademark protection, there are particular exceptions which require “special features,” judge Erfried Schüttpelz said.
The first exception granted was to soft drink maker Coca-Cola for its iconic old bottle design. After a seven-year legal dispute, the smiley croquette can now also be considered such an exception.
Competitor Agrarfrost offered smiley shaped croquettes to bulk consumers in the catering sector at the Anuga food trade fair in Cologne in 2017, prompting legal action from the Canadian firm.
McCain had registered the smiley croquette as a EU trademark and insisted on enforcing that protection. Agrarfrost promptly challenged the validity of McCain’s trademark - but to no avail.
Nevertheless, the company continued the legal dispute in the German courts.
The court on Thursday upheld a lower court’s finding that the smiley in this case is not merely a decorative element, but is understood as a reference to the manufacturing company. That means consumers are likely to be confused by the similar rival product, the court found.
Agrarfrost unsuccessfully argued that the trademark should not apply in this case since their products are not offered on the consumer market, but intended only for commercial customers such as daycare centres, canteens and
restaurants.
The McCain company logo had not been used and the smiley in itself was a commonplace symbol, lawyers for the company argued.
McCain’s lawyer, however, contended that the croquettes themselves are the trademark, and pointed to a market survey that found 30% of consumers associated the smiley croquette with McCain.
The smiley face - two dots in a circle and a curve as a mouth - is a simple but iconic drawing, almost certainly created by freelance artist Harvey Ball in 1963 for a US insurance company that used the smiling face on badges.
The yellow face was so well received that it became a globally recognized symbol.
A few years later, French journalist Franklin Loufrani realized how much money could be made with the symbol. He gave up journalism and legally registered the smiley as a trademark in large parts of the world in 1971, which Ball had failed to do.
Loufrani is said to have earned millions from the licence fees, and the smiley face remains the subject of numerous lawsuits to this day.
For frozen potato products, however, it was not Loufrani but the Canadian food company and market leader McCain that had the smiley protected.
