Mars took its iconic M&M’s to Sweden in 2009. But there was a slight problem- Sweden already had a famous chocolate sweet marked ‘m’. The Chocolate-encased peanuts and chocolate bars marked with a single ‘m’ have been sold in Sweden since the 1960’s under the Marabou brand. The brand belongs to Mondalez International, who own companies such as Cadbury and Toblerone.
UP until 2009 Mars did not sell M&M’s in Sweden, as a result of an earlier 1989 agreement with Marabou. When this agreement expired and was not renewed, Mars introduced M&M’s in Sweden.
In September 2009 Mondalez initiated legal proceedings against Mars for “counterfeiting” and trademark infringement over the use of the lower case ‘m’. In 2010 Mars countersued and sought to have Mondalez’s ‘m’ trademark declared invalid on the basis that Mars ‘m&m’ have been a global brand since 1941. Mars emerged victorious in the first round. Mondalez appealed this decision.
The appeal was heard in the Svea Court of Appeal and the court has now ruled in favour of Mondalez . It said Mondalez has exclusive rights to the trademark in Sweden and that the two brands were confusingly similar. The court also laid out potential penalties if Mars continues to sell the infringing M&M’s in Sweden.
However the court did add that the use of M&Ms in upper-case form, as Mars does in its corporate communications, does not constitute a trademark infringement in Sweden.
Mars commented; “We have always believe no confusion exists between the colourful m&m’s brand- one of the world’s favourite chocolate products- and the Marabou M Peanut Brand.” The company continued “Given the court’s decision we will assess the next steps for our beloved brand in Sweden.”
Mondalez are clearly happy with the court’s decision and Celin Huseby- Head of Corporate Affairs at Mondalez Nordic commented “This case is an important one as it highlights the importance of protecting and regulating trademarks”.
If Mars chooses not to appeal the decision, it will have to start using the capital M&M logo in Sweden starting from next month.