Ingenious marketing or infringement?: True Fruits advertises with Super Mario design

The well-known company “True Fruits”, founded in Bonn in 2006, has had a permanent place in the refrigerated section of many supermarkets and discounters for a long time. However, the smoothie manufacturer’s rare and creative special editions always cause a stir – including the current winter edition.

With its limited winter edition “Cinnamon Star”, True Fruits has once again created an eye-catching, creative, but also potentially problematic smoothie. The glass bottle is covered with a blue background characterized by clouds, on which a yellow star and the words “Cinnamon Star” can be read in the middle. The allusion to the classic game “Super Mario” from the Japanese company “Nintendo” with the iconic star and the well-known font with colorful letters is immediately noticeable, at least to gamers. But this could be exactly where the problem lies – because there doesn’t seem to be any cooperation with Nintendo (currently).

How far does the protection of a registered trademark extend?

Nintendo has a registered trademark with the classic “Super Mario” lettering, which is registered with the European trademark office (trademark number: 1594401). This trademark, which was registered as a basic trademark in Japan, has been expanded internationally to the EU and other countries such as Australia, Korea and Great Britain. The famous lettering is also protected by trademark regulations in Germany.

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Trademark law gives the trademark owner the right to monopolize a mark. So he is the only one who can decide who can use the trademark. Therefore, trademark infringement always occurs when someone uses the protected trademark against the will of the entitled person. Not only the identical use, i.e. use of the exact symbol, is an infringement, but also the use of similar symbols. Likewise, brand protection is not limited to exactly those products that are listed in the brand’s list of goods and services. When registering a trademark, the applicant must select from various classes and terms in the list of goods and services those to which the trademark protection should apply. The image mark “Super Mario” For example, in addition to the protection term “electronic game programs”, tea, coffee, cocoa and many other foods are also protected. In the event of a possible trademark infringement, the exact name of the individual terms is not important according to trademark law. The mark may also be infringed by similar products.

The “Cinnamon Star Smoothie” from True Fruits did not use the exact symbol from “Super Mario” exactly, but a similarity to this lettering can clearly be seen due to the font, arrangement and color of the letters. The fact that Nintendo has not explicitly protected the mark for smoothies does not necessarily rule out trademark infringement.

True Fruits seems to be aware of the balancing act with the cinnamon star design and has only made allusions to the classic game on the product label with phrases such as “Italian brothers” and “giant tortoise”.

Unfair act by True Fruits

In addition to trademark law, fair trade law may be affected by True Fruits’ cinnamon star design. The fair trade law regulates through the law against unfair competition (=UWG) how individual market participants must behave so that no one can gain unreasonable advantages through misleading or aggressive business practices.

According to the UWG, misleading behavior occurs, for example, if the goods offered or advertised cause a risk of confusion with a competitor’s products. This risk of confusion must be given particular attention when it comes to product imitations. If the imitators’ goal is to create and exploit this confusion, then such behavior may be impermissible.

For example, the obvious reference to the Nintendo game might lead consumers to believe that the product was created in cooperation with Nintendo, even though this may not be the case. This could give the false impression that the origin of the product has something to do with Nintendo, which could lead buyers to make a purchasing decision that they would not have made if they had known the truth. In order to make such involuntary uninformed purchases, the UWG classifies such actions as unfair, as this is a misleading way of gaining an advantage on the market.

In the event of a violation of competition law, True Fruits could be subject to a warning and the resulting claims.

The special edition “Maracjua Yellow”

The current winter smoothie from True Fruits is not the first product that has caused a stir due to its design. With the Limited Edition Nr. 11 Five years ago, True Fruits brought a design onto the market that was strongly reminiscent of the well-known design of the cigarette manufacturer Marlboro. The bottle came in the classic red, black and white design and bore the cigarette brand’s lettering – adapted for smoothies.

However, the company behind Marlboro didn’t seem to like this similarity. They asked True Fruits to issue a cease and desist declaration. This means that the company could not resell and promote this special edition in particular and will no longer be allowed to do so in the future. Therefore, this bottle can now only be found in a censored form in the smoothie company’s archives.

It remains to be seen whether the “Cinnamon Star” smoothie will suffer the same fate. However, one can hardly deny that the delicious drink – which passed the author’s personal taste test with flying colors – has a similarity to the brand of the gaming giant Nintendo.

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