The return of vanished brands whets appetites

There are brands that have long since disappeared from our lives, but which had achieved such a level of notoriety that they remain in the collective imagination, or at least in the memories of the generations that knew them.

Some of you will remember Mammouth® hypermarkets, which at the time still knew how to crush prices, Banga® dethroned and bought out by its competitor Oasis® or Raider®, the two-finger appetite suppressant, ancestor of Twix®.

These brands may have left our shelves and disappeared from our cities, but they have permeated the brains of consumers, arousing the envy of some who would like to revive their business and benefit from their history, their reputation and, of course, their ever-present power of attraction.

And so it is that Merveilles du Monde® chocolates have recently resurfaced. These chocolate bars, which left their mark on children in the 80s and 90s with their unique taste, their large squares embossed with the heads of wild animals and containing a map telling you about the lives of bowhead whales or mountain zebras, returned to the shelves of supermarkets in 2023, and have even joined the counters of French train buffet cars.

As part of this new trend, in 2017 the PIASTEN company registered the Treets® trademark to designate its chocolate and sugar-coated peanuts sold in bags. The Treets® trademark, like Raider®, was the name under which M&Ms® were known until 1986, when the turn for the famous brand was taken.

Risking the revocation of its trademarks, which were still in force but not used, MARS decided to give them up and let PIASTEN register the Treets® trademark.

However, as Treets® were still familiar to a large part of the French population, newspapers were quick to announce the return of this brand, which had disappeared decades earlier.

MARS, fearing confusion among consumers, changed its mind and sued PIASTEN before the Paris Court of Justice, claiming :

• Fraudulent registration, based in particular on the fact that the new Treets® were marketed in packaging that was a slavish copy of the original packaging,
• Misleading character, based on the famous residual reputation of the trademark.

Unfortunately for MARS, this decision was rejected by the court, which found, firstly, that there had been no fraud, since MARS had been informed of PIASTEN’s intentions, and PIASTEN had even proposed adjustments to the way the products were used, and, secondly, that “the possible residual reputation of the first trademark is insufficient to establish the alleged deceptive character” (TJ Paris December 20, 2023, RG n°18/14422).

This decision reminds us that, even if the reputation of a trademark has lasted through the ages, even though the goods concerned have not been on sale for years or even decades, its owner cannot rely on this residual reputation to try to defend it or seek to keep it in force.

Nothing beats real, serious use of the trademark.

On the other hand, the entrepreneur who wishes to acquire the old trademark from the original owner in order to revive its use will reap considerable benefits, insofar as he will sometimes be able to recover very old trademark registrations and, above all, insofar as he will gain a definite competitive advantage thanks to the residual reputation of the trademark, which will easily attract people who have never forgotten it and who have sometimes been waiting for its return.

If you’re interested, all you have to do is search the trademark register to find the gem you’re looking for!

– Philippe BOHLAND, Industrial Property Attorney and Partner at Mark & Law