Have you ever seen the smiling peanut on the yellow M&M's wrapper? Well, did you know that this brand used to be called TREETS?

In 1986, for reasons we don't know, the Mars Group replaced the TREETS trademark with the M&M's trademark to identify chocolate and sugar-coated peanuts. Another company decided to re-use the TREETS mark and negotiated around the "Treets" sign and in particular the French TREETS marks. In addition to requesting the revocation of the French TREETS marks, the company initiated proceedings for the revocation of other TREETS marks. It also proposed the purchase of the oldest TREETS marks, particularly in France, and an undertaking "not to use the 'Treets' mark on yellow packaging". It registered international word and semi-figurative marks designating France and the European Union TREETS, under which it marketed various products, including chocolate-covered peanuts.

In 2017, at the request of the defendant company, the Mars group withdrew its French TREETS trademarks. The full disclaimers of these trademarks were entered in the French national trademark register. However, no settlement was reached in the end.

The Mars Group challenged the defendant company's TREETS marks on the grounds that they had been registered in bad faith. However, the Paris Court rejected this claim. According to the judge, it is up to the applicant for a declaration of invalidity to establish the circumstances that would lead to the conclusion that the owner of the contested mark acted in bad faith when filing the application, good faith being presumed until proven otherwise.

In the present case, the documents produced show exchanges between the parties concerning the defendant's desire to negotiate. The Mars Group was therefore aware of the defendant company's intention to use the "TREETS" sign for its own products or those of its licensees, and the strategy which it criticises is in fact nothing more than a normal commercial practice which enables a competitor to secure, without disloyalty, the availability of a sign which it wishes to use as a trade mark. The trade marks were therefore not registered in bad faith.

The judge also dismissed the unfair competition claims. In the absence of any bad faith in the registration of the marks at issue and in the absence of any marketing of the plaintiff's products in France under the sign "TREETS" for thirty years, and in view of the renunciation of the earlier French marks, no fault on the part of the defendant company was established. For the same reasons, the defendant's marketing of chocolate-covered peanuts in France under the sign "TREETS" is not such as to mislead the reasonably well-informed and reasonably attentive consumer. The claims for misleading commercial practices are therefore also dismissed.

When TREETS became M&M's and was abandoned by its former owner, he may not have known that he would lose his rights to that name in France...

(Tribunal judiciaire de Paris, 3e ch., 3e sect., 20 décembre 2023, 18/14422 (M20230254)
Mars Wrigley Confectionery France SAS, Mars Inc. et Marques c. Piasten GmbH et Lutti SAS)