Shape trade marks: when mixing yogurt with toppings becomes a legal issue

3rd October 2022

The Court of Milan has recently heard an interesting case regarding the (in)validity of a shape trade mark consisting of two-chamber yogurt tubs.

The case

Molkerei Alois Müller GmbH & Co. KG (“Müller”) is the owner of shape trade mark registration no. 302019000031937, filed on May 24^th 2019 and claiming products in classes 29 and 30:

The trade mark consists of the “two-chamber tub”, i.e. two triangular compartments, and it is used as a packaging of “Müller Mix” yogurts: one compartment contains yogurt and the other an additional ingredient (such as fruit, chocolate, cereal) to be mixed with the first after opening, in order to enjoy yogurt and an additional ingredient  together.

The dispute

Müller sought preliminary measures before the Court of Milan against the company Latteria Nom S.r.l., aimed at obtaining an injunction from manufacturing and marketing, as well as the subsequent withdrawal from the market of the “Milk Yogurt Mix” with the same shape and size as its registered shape trade mark.

Latteria Nom S.r.l. replied  by contesting the validity of the trade mark registration filed by Müller for three main reasons:

• it lacks distinctive character: in particular, the consumer does not perceive the same as a trade mark since the yogurt packaging does not differ from those already on the market;

• it lacks novelty: the defendant had been marketing the product for more than 33 years prior to Müller; and

• it consists of a shape which results from the nature of the goods themselves, and is therefore functional.

In support of Latteria Nom S.r.l.’s position, Latte Montagna Alto Adige Società Agricola Cooperativa (also known as Mila), supplier of the former since 1987 of two-chamber tub packagings for yogurts, intervened in the proceedings.

The judgment

The Judge addressed the topic of the functional shape of the two-chambered tub. The Court of Milan rejected Müller’s claims, deeming Latteria Nom S.r.l.’s and Mila’s arguments agreeable. In fact, pursuant to Article 9, letter b) of the Italian Intellectual Property Code (i.e. Article 7 letter e, EUTMR), signs consisting solely of the shape of the product necessary to obtain a technical result cannot be registered as a trade mark.

It followed that the Court believed that the two-chambered tub perfectly represents the functional solution of a technical problem: the necessity of keeping yogurt and topping separate, preventing their respective characteristics from being altered before consumption.