Lindt's non-traditional chocolate bunny trade mark: devoid of distinctive character
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Chocoladefabriken Lindt & Sprungli AG v OHIM, Case C-98/11
On 24 May 2012, confirming the judgment of the General Court of the European Union, the Court of Justice of the European Union ("CJEU") held that the shape of Lindt's chocolate bunny could not be registered as a Community Trade Mark ("CTM") on the basis that it is devoid of distinctive character.
This judgment brought an end to a procedure which began in 2004 when Lindt filed a Community Trade Mark for its 3-Dimensional chocolate rabbit, which is wrapped in gold foil, wearing a pleated red ribbon with a small bell attached. In 2005, OHIM rejected the CTM on the basis that all three elements of the mark; its shape, the gold foil and the red ribbon with bell attached, individually and collectively lacked distinctiveness. OHIM considered that a chocolate bunny is a typical shape for Easter and that there is nothing usual in the use of gold foil to wrap chocolate Easter bunnies.
Lindt appealed. OHIM's decision was upheld by the Fourth Board of Appeal and then again by the General Court. Finally, Lindt appealed to the Court of Justice of the European Union.
The CJEU held that the General Court was correct in finding that the mark lacked distinctiveness. The CJEU said that distinctiveness of the mark should be assessed by reference to the goods or services for which registration was sought and to the perception of the relevant public. The combination of the shape, colours and pleated ribbon and bell were not sufficiently different from the shapes commonly used for chocolate products. The graphic elements such as the eyes and whiskers were everyday elements of rabbits and did not incorporate sufficient artistic quality to indicate origin.
Although the Court was satisfied that Lindt could show that the mark had acquired distinctiveness across a number of member states, including Germany, this was not considered sufficient to maintain the mark. The objection of a lack of distinctiveness related to the whole of the EU and therefore the "relevant public" included all member states. Accordingly, the CJEU held that, in order to register the mark as a CTM, Lindt needed to prove distinctiveness acquired through use in all of the member states. As they had failed to do so, Lindt's appeal was dismissed.
This case is another example of how difficult it can be to register 3D shape marks, particularly because the shape needs to be considered as an indication of origin. It may also make trade mark owners think twice before filing a CTM application for non-traditional marks because collecting evidence of acquired distinctiveness through use in all 27 member states is always extremely challenging and costly and very few trade mark owners are in a position to prove that, especially for this type of mark.