Minced meat of the MEXICANO shape mark

Snack manufacturer De Vries has marketed the snack MEXICANO since 1984 (right). Both the name and the shape are registered as a Benelux mark for snacks. Private label supplier Bakx makes and sells a similar snack in the Benelux, the Brasero. Bakx also supplies its snack to a French supermarket chain where it is called MEXICANO ESCALERO. Infringement on its (shape) mark rights, according to De Vries. The Preliminary Relief Judge found it was not. At least, no infringement of the shape mark. The reason? Insufficient similarity: the shapes differ and the number (and the shape) of the ribs is different. The Court did say that ‘every now and then it had to snatch a glimpse of the plates’ during the hearing to see the differences. That was still not enough to assume likelihood of confusion though, because the court did not find the shape of the MEXICANO sufficiently distinctive for that.

Whether the shape mark has become descriptive remains undecided. It also counts that there are many other products on the market that give the same overall impression. The preliminary relief judge sees nothing in the descriptiveness claim. He “even allows himself a strong presumption that the exact shape of the snack will probably not at all interest the average snackbar owner nor the consumer who’s after a meaty type substance, and that certainly the latter in general will not ask himself who has produced the oblong, ribbed and recessed guilty pleasures”. But it is not yet over for Bakx, because the word marks save De Vries. Bakx’ MEXICANO ESCALERO that is supplied from the Netherlands in France does cause likelihood of confusion. This means the word mark MEXICANO remains intact, because it is (sufficiently) distinctive for snacks. The judgment could still be hard to digest.

Daan van Eek