This article was included in the spring 2011 issue of snIPpets - the intellectual property newsletter.
On Friday 17 December 2010 the General Court of the European Union ruled that rabbits, reindeer and mice are typical shapes in which chocolate and chocolate goods are presented particularly at Easter and Christmas, and are therefore devoid of distinctive character (Cases T-336/08, T-337/08, T-346/08, T-395/08 Chocoladefabriken Lindt & Sprüngli v OHIM and T-13/09, Storck v OHIM).
According to Article 4 of the Community Trade Mark Regulation, any signs capable of being represented graphically are eligible for trade mark protection, provided that such signs are capable of distinguishing the goods or services of one undertaking from another. In particular, the shape or packaging of the goods is explicitly referred to as being capable of protection.
Lindt & Sprüngli, the famous Swiss chocolate and confectionery manufacturer ("Lindt"), already owns a Community trade mark ("CTM") for the gold foil wrapped chocolate bunny including the word “Lindt” on the gold packaging. However, so far before both OHIM and the EU General Court, Lindt has failed to obtain EU wide trade mark protection for the shapes of a plain chocolate bunny and for chocolate bunnies and reindeer wrapped in gold foil with red ribbon around their necks without the Lindt mark on the packaging. Its application to register the ribbon and attached bell as a CTM has also been unsuccessful.
The General Court found that bunny shaped chocolate products and reindeer shaped chocolate products were insufficiently distinctive because they would not be recognised as indicating origin and that the addition of gold foil or red ribbon with a bell do not do enough to render the shape distinctive, all also being normal decorative features for chocolate products.
Lindt sought to prove that it could overcome the question of distinctiveness by filing evidence that the rabbit and reindeer shaped chocolate products had acquired distinctiveness in the EU so that they should be registered under Article 7(3) of the Community Trade Mark Regulation. Lindt had evidence that in Germany an impressive 96% of consumers would recognise the gold bunny with red ribbon and bell without the Lindt mark and 74% knew that it was manufactured by Lindt. This was not enough though to secure CTM protection.
Though of course it is right that a CTM application would fail if a mark is deemed to lack distinctive character in just one member state, the decision of the General Court suggests that in order for a trade mark which is considered to lack inherent distinctive character to qualify for registration across the EU, it needs to have acquired distinctiveness in every member state for which it is not inherently distinctive.
Although this seems a tough task, it must be right that if a CTM fails for lacking distinctive character in just one Member State then it must be distinctive in every Member State to qualify for protection - and that distinctiveness may be acquired and proved if it is not inherent. Presumably then an applicant needs to tick off each member state by showing inherent or acquired distinctiveness - otherwise trade mark rights should be applied for at a national level, not Community wide.
There is no requirement that use be made in every Member State to support a CTM registration but there appears to be a requirement that use be made in every Member State where the inherent distinctiveness of a trade mark is doubted.
Perhaps the implication that "difficult" trade marks find EU-wide protection to be hard to achieve just preserves the benefit of CTM protection for more straightforward marks and keeps trickier marks at national level where the perception and knowledge of the relevant public is much easier to judge.
|In practice: Although the same distinctiveness test should apply to all types of trade marks, in practice European courts apply the presumption that shape trade marks are not inherently capable of registration on the basis that consumers do not make assumptions about the origin of products based on their shape alone. Evidence of substantial use and customer perception may be vital to demonstrate acquired distinctiveness and obtain CTM protection for shape marks.|
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