On 2 June 2016 the Svea Court of Appeal prohibited the company Mars from using the trademark “m” and “m&m’s” for import, marketing and sale of candy or chocolate products in Sweden. If Mars breaches the prohibition, Mars risks SEK 2,000,000 as a fine.
WHAT HAS HAPPENED?
The companies Marabou and Mars have again concluded a dispute in court. This time in favour of Marabou. The dispute which has been ongoing for several years covered, among other things, Mars selling its chocolate covered peanuts labelled with “m&m’s” in Sweden.
Somewhat surprisingly, the background of the parties’ dispute is a previous collaboration. Already after the Second World War, Marabou and Mars started to exchange information and knowledge with each other. The collaboration resulted in an agreement in 1989 pursuant to which the parties agreed on Mars undertaking not to sell “m&m’s” in Sweden, Norway and Finland, while Marabou undertook not to sell equivalent products in other markets. The agreement elapsed in 1998 and Mars started to sell its products labelled “m&m’s” on the Swedish market in January 2009. This has entailed several legal disputes between the parties. For example, Marabou has attempted to prohibit “m&m’s” referring to that the product of Mars is an unlawful copy of Marabou’s product, something which neither Mars nor the Swedish court agreed with. Another dispute between the parties concerned whether the parties’ registered trademarks were valid, which ended with the trademarks of both parties being declared invalid to a certain extent. The latest dispute, which has now been settled by the Svea Court of Appeal, concerned the issue of whether Marabou can prevent Mars from using “m”, “m&m’s” and “M&M’s” on confectionary, candy and chocolate products in Sweden.
THE COURT
Svea Court of Appeal declared that Marabou has an established trademark right for “m” for candy and chocolate products in Sweden. This also means that Marabou has a sole right to the trademark “m” in Sweden. Marabou’s right for “m” already existed when Mars started selling its products in Sweden. Accordingly, Mars is prohibited from using “m” as well as “m&m’s” for the same type of products, as Svea Court of Appeal is of the opinion that there is a risk of confusion between the parties’ trademarks. In terms of the issue of whether there is also a risk of confusion between “m” and “M&M’s”, Svea Court of Appeal declares that “M&M’s” does not contain the trademarks “m” at all, which is why Mars’ use of “M&M’s” for the products was not considered as constituting any infringement of Marabou’s sole right.
To conclude, Mars is prohibited from using “m” and “m&m’s” with a fine of SEK 2,000,000, but the prohibition does not apply to “M&M’s” for import, marketing and sale of candy or chocolate products in Sweden. The prohibition does not apply outside Sweden. Therefore, Mars will be able to use “m&m’s” for its products outside Sweden.
Whether the current legal dispute is the last between Marabou and Mars is an open question, and we have probably not seen the end of Mars’ sale of candy and chocolate products in Sweden. However, the future will tell how Mars will market and label its products.
Svea Court of Appeal: T 5406-15.
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CAROLINE YGGE
Partner, Advokat
Telephone: +46 10 722 36 10
Mobile: +46 738 26 47 70
E-mail: caroline.ygge@morrislaw.se
KARIN ODKRANS
Associate
Telephone: +46 10 722 36 21
Mobile: +46 708 83 73 46
E-mail: karin.odkrans@morrislaw.se
