Monday, 18 April 2011

JIPLP to get mobile-optimised web service

In September 2010 Oxford Journals (OJ) migrated all of its content to HighWire Press's new H20 publishing platform. OJ is now launching a mobile-optimized website for every journal, powered by the H20 platform -- including the Journal of Intellectual Property Law and Practice (JIPLP) . The pilot phase of this project is well underway, and rollout for all journals will be completed by the end of Summer 2011.

The main functionality of this mobile service is 'looking up and keeping up' – allowing users to look up a reference quickly or see the latest articles published in a journal. Users logging in via an institution's WiFi service will be able to access that institution's subscriptions; individual subscribers will be able to access subscriptions through username and password authentication.

The mobile web interface offers the following features:
• Quick access to current and archive content
• A quick search page
• An 'Email me this article' feature
• Personalization and authentication
The mobile-optimized sites currently support iOS (iPhone and iPod Touch), Blackberry OS and Android smartphones now. Coming soon will be support for Symbian OS and Windows Mobile.

The mobile site for JIPLP is projected to launch by the end of June.

Thursday, 14 April 2011

May 'INTA Special' now online

Near-miss?
The unitary patent
The May 2011 issue of the Journal of Intellectual Property Law & Practice (JIPLP) is now available online to subscribers. The contents of this issue can be inspected here. As will be immediately apparent to regular readers, this is the annual "INTA Special", with a higher-than-normal trade mark content and the increasingly popular round-up of major European trade mark decisions from the Court of Justice and General Court by Arnaud Folliard-Monguiral and David Rogers.  The Editorial, 'Community, cooperation, coercion and coexistence', which is reproduced below in full, reflects on the European Union's near-miss in seeking to establish a truly unitary patent system, in contrast with their  success in trade mark and design law.
"Community, cooperation, coercion and coexistence

The event that sparked off this concatenation of alliterative ‘c's was the announcement by the European Parliament that it had given its consent to the creation of a common patent system for the Member States of the European Union. This consent is unprecedented since, unlike the case of earlier pan-European rights—the Community trade mark, registered and unregistered designs, and plant varieties rights—the common patent system that has been approved does not cover the entire territory of the European Union. Two important and industrially sophisticated Member States, Italy and Spain, have signalled not merely a reluctance to go along with their 25 fellow Member States but a firm refusal.

There is no legal requirement to reach consensus, since the EU's Lisbon Treaty has now put into place an enhanced cooperation procedure. With the Council's blessing and Parliament's consent, the cooperating countries can press ahead, leaving Italy and Spain in the cold but leaving the door open to them to join the 93-per-cent-of-the-Community patent at any time. The two are in linguistic sulk mode: both Italian (inexplicably) and Spanish are official languages for the purposes of the Community trade mark and registered design rights, but neither is a working language for the European Patent Office which has, since 1978, made do very well with English, French and German alone.

Although a unitary patent covering 25 of the 27 Member States can be expected to bring some cost savings, the extent to which they do so, and the possibility of countervailing scenarios in which the cost of the European patent system increases, have not yet been the subject of detailed predictive calculations; nor, at this stage, can they be. A reduction in the cost of translating patent applications is welcome—especially since most patent translations are presumed never to be read—and will in probability be huge, so what extra costs might be incurred that will give rise to anxiety?

At present, each application made to the European Patent Office results in the grant of a basket of more-or-less identical national patents, each of which is free-standing in the sense that, once the threat of an EPO post-grant Opposition has passed or been survived, the continued validity and scope of protection conferred by the EPO is in the hands of national courts alone. Some may regard it as invalid, while others uphold it; some may find it infringed by the very act that other courts consider to lie beyond its claimed monopoly.

In contrast, an enhanced patent of the kind currently being proposed is an all-or-nothing creature. If it is valid, it is valid throughout its territories; if invalid, it confers no protection anywhere in the enhanced cooperation zone. At this point, the threat to issue invalidity proceedings, for example, becomes much more serious; both those who defend patents and those who attack them will have to consider how much to fund a much more valuable piece of litigation.

In the case of small- and medium-sized enterprises, it is not just a question of how much to spend but how to raise the funds that are needed—or how to manipulate the various options, which may be both potentially lucrative and expensive, of third party funding, after-the-event insurance, and so on.

The experience of the USA is not closely comparable, since that jurisdiction's patent laws are different and it has a long, well-established, and relatively homogenous litigation culture compared with that of Europe of today, or even Europe over the next two decades or so. However, if it can be shown that, in behavioural terms, the patenting, licensing, trolling, and patent-destroying strategies practised in a single mega market are qualitatively different to those where the market is composed of many smaller countries, the patent litigation spend which we see in the States today may be that which we experience in Europe tomorrow.

One final factor to consider is the separate status of Italy and Spain: will businesses neglect investment there (which seems improbable for commercial and industrial reasons), or treat them as a sort of conjoined Mediterranean zone for legal and marketing purposes? Will separation result in extra local work for patent professionals, creating a local vested interest which those inside the enhancement zone will envy? In a few years, we should start to know".

Monday, 11 April 2011

Terms agreed, but numbers are changed

In November of last year this weblog posted, ahead of its printed publication, this Current Intelligence note by Enrico Bonadio (who now lectures at the City Law School, London) entitled "IP Provisions of the EU-Central America Association Agreement and Development Issues".

Enrico has just informed us that the Association Agreement has now been initialled, having been subjected to a legal review.  This exercise has, inconveniently, resulted in the renumbering of various provisions -- even though there was some indication that this would not happen. For the record:
- Article 3 of the IP Chapter of the Association Agreement has become Article 231
- Article XX of the Association Agreement has become Article 55(3)(c)
- Article 2(1) of the IP Chapter of the Association Agreement has become Article 229(2)(a)
- Article 2(2) of the IP Chapter of the Association Agreement has become Article 229(2)(b)
- Article 2(4) of the IP Chapter of the Association Agreement has become Article 229(4)
- Article 2(5) of the IP Chapter of the Association Agreement has become Article 229(5)
- Article 10 of the IP Chapter of the Association Agreement has become Article 259.

Tuesday, 5 April 2011

ECJ rules on legislative limitations on copyright protection for designs in Europe

Author: Eddy D. Ventose (Faculty of Law, Cave Hill Campus University of the West Indies, Barbados)

Flos SpA v Semeraro Casa e Famiglia SpA, Case C-168/09, reference for a preliminary ruling from the Tribunale di Milano (Italy), Court of Justice (ECJ) of the European Union, 27 January 2011

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr034, first published online 2 April 2011

The ECJ considered whether an Italian law providing, first, a 10-year moratorium in respect of copyright protection for designs and, second, abolishing the moratorium and rendering copyright protection for designs unenforceable for an indefinite period, was compatible with Article 17 of Directive 98/71 on the Legal Protection of Designs.

Legal context and facts

Flos brought proceedings in 2006 against Semeraro before the Tribunale di Milano (District Court, Milan) alleging that Semeraro had imported from China and marketed in Italy the ‘Fluida’ lamp. This lamp, Flos argued, imitated all the stylistic and aesthetic features of the Arco lamp, an industrial design in which Flos claimed the property rights. The Court in Milan found that the Arco lamp, which was created in 1962 but entered the public domain before 19 April 2001, was eligible for copyright protection as an industrial design under Italian law. It held that that the lamp imported by Semeraro ‘slavishly imitated all [the] stylistic and aesthetic features’ of the Arco lamp. It therefore confiscated the imported lamps and prohibited Semeraro from continuing to market them. As a result of legislative amendments made to Italian trade mark law (outlined below), the Tribunale di Milano referred three questions for consideration by the ECJ:
1. Must Articles 17 and 19 of Directive [98/71] be interpreted as meaning that, in implementing a … law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which – albeit meeting the requirements for protection laid down in copyright law – fell to be regarded as having entered the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force, in so far as they had never been registered as designs or in so far as the relevant registration had already expired by that date? 
2. If the answer to the first question is in the negative, must Articles 17 and 19 of Directive [98/71] be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which – albeit meeting the requirements for protection laid down in copyright law – fell to be regarded as having entered the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force and where a third party – without authorisation from the holder of the copyright on such designs – has already produced and marketed products based on such designs in that State? 
3. If the answers to the first and second questions are in the negative, must Articles 17 and 19 of Directive [98/71] be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which – albeit meeting the requirements for protection laid down in copyright law – fell to be regarded as having entered the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force and where a third party – without authorisation from the holder of the copyright on such designs – has already produced and marketed products based on such designs in that State, where protection is precluded for a substantial period (a period of 10 years)?
Analysis

Article 17 of Directive 98/71 on the legal protection of designs, entitled ‘Relationship to copyright’, provides that a design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection under the law of copyright of that State as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State. After first introducing a 10-year moratorium (Legislative Decree No 164/2001) starting on 19 April 2001 for the protection provided for designs under Article 17 of Directive 98/71, that protection was removed completely by Legislative Decree No 164/2001 which provided that ‘The protection conferred on industrial designs under point 10 of the first paragraph of Article 2 of Law [No 633/1941] shall not be enforceable as against products based on designs that were in, or had entered into, the public domain prior to the entry into force of Legislative Decree [No 95/2001].’ The questions mentioned above related primarily to whether these legislative changes were compatible with Article 17 of Directive 98/71.

Unregistered designs
The ECJ stated that in relation to designs which have never been registered as such, Article 17 of Directive 98/71 provides that only a design protected by a design right registered in or in respect of a Member State in accordance with that directive may be eligible, by virtue of the directive, for protection under the law of copyright of that State. Accordingly, only designs which, before the date of entry into force of the national legislation transposing Directive 98/71 into the legal order of a Member State, were in the public domain, because they had not been registered and did not fall within the scope of Article 17 of the directive. The ECJ noted, however, that such designs may nevertheless get copyright protection under another EU copyright directive, Directive 2001/29.

Expiration of registration
The ECJ noted that in relation to designs which have entered the public domain because the protection resulting from registration has ceased to be effective, the first sentence of Article 17 of Directive 98/71 provides that a design protected by a design right registered in or in respect of a Member State is also eligible for protection under the law of copyright of that State as from the date on which the design was created or fixed in any form. However, the second sentence of Article 17 allows the Member States to determine the extent to which, and the conditions under which, such a protection is conferred, including the level of originality required. The ECJ cautioned that the second sentence cannot be interpreted as meaning that Member States have a choice as to whether to confer copyright protection for a design protected by a design right registered in or in respect of a Member State if the design meets the conditions under which copyright protection is conferred: it was clear from the wording of Article 17 of Directive 98/71 that copyright protection must be conferred on all designs protected by a design right registered in or in respect of the Member State concerned.

The ECJ, following the reasoning in Case C-60/98 Butterfly Music [1999] ECR I-3939, held that national law transposing the directive cannot—without undermining both the uniform application of the directive throughout the European Union and the smooth functioning of the internal market for products incorporating designs—preclude copyright protection in the case of designs which, although being in the public domain before the date of entry into force of the national law concerned, at that date met all the requirements to be eligible for such protection. It therefore answered the first question as follows: Article 17 of Directive 98/71 must be interpreted as precluding legislation of a Member State which excludes from copyright protection in that Member State designs which were protected by a design right registered in or in respect of a Member State and which entered the public domain before the date of entry into force of that legislation, although they met all the requirements to be eligible for such protection. The ECJ explained that the legislative measure, first, should ensure that the period of use of the designs by those third parties is limited to what is necessary for them to phase out the part of their business that is based on earlier use of those designs or to clear their stock; and, secondly, must not go beyond what is necessary to ensure that a balance is struck between the competing rights if it does not defer entitlement to copyright protection for a substantial period.

Suspending copyright protection for a limited time
In respect of the second and third questions the ECJ claimed that, in relation to the definition of the category of third parties as against whom copyright protection was provided for only a temporary period to be unenforceable, Legislative Decree No 95/2001 was appropriate since it was directed solely at persons who acquired their rights before the entry into force of the national measures transposing Directive 98/71. However, it argued that the unenforceability for a transitional period of 10 years was not justified by the need to safeguard the economic interests of third parties acting in good faith, since a shorter period would also allow the part of their business that was based on earlier use of those designs to be phased out and, even more so, their stock to be cleared. The ECJ added that a 10-year moratorium in respect of copyright protection went beyond what was necessary since, by taking 10 years off the period during which a work is protected (as a rule 70 years after the death of the author), the application of copyright protection was deferred for a substantial period.

Abolishing copyright protection indefinitely
In relation to the law abolishing the moratorium and rendering copyright protection unenforceable for an indefinite period in the case of products manufactured on the basis of designs which were in the public domain before 19 April 2001, the ECJ ruled that such a measure negated Article 17 of Directive 98/71, since it had the effect of preventing, generally, the application of copyright protection. The measure did not seek to restrict the category of third parties who may rely on the principle of the protection of legitimate expectations. On the contrary, the measure rendered copyright more generally unenforceable since, under the provision, it was not necessary for a third party to have begun exploiting the designs before 19 April 2001. Consequently, the EJC ruled that Article 17 of Directive 98/71 must be interpreted as precluding legislation of a Member State which—either for a substantial period of 10 years or completely—excludes from copyright protection designs which, although they meet all the requirements to be eligible for copyright protection, entered the public domain before the date of entry into force of that legislation, that being the case with regard to any third party who has manufactured or marketed products based on such de-signs in that State—irrespective of the date on which those acts were performed.

Practical significance

The most important implication is that Member States cannot enact legislation which has the effect of rendering nugatory the protection provided by Article 17 of Directive 98/71 on the Legal Protection of Designs. In this instance, the ECJ ruled that Member States cannot limit entirely copyright protection for designs which have entered into the public domain once they meet all the requirements for such protection; and where the limitation applies, it should not apply for a prolonged period of time. As a result of Article 17 of Directive 98/71, such designs now have an extended form of copyright protection for 70 years after the death of the author: This protection cannot be limited in its entirety by national legislation.

Monday, 4 April 2011

Repackaging of pharmaceutical products imported in parallel

Author: Pessi Honkasalo (University of Surrey – School of Law)

NV Organon v Paranova Oy, KKO 2011:7, Supreme Court of Finland, 26 January 2011

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr031, first published online 31 March 2011

The Supreme Court of Finland held that the package layout of medicinal products could have created an inappropriate impression as to the commercial origin of the products or the relationship between the manufacturer and the parallel importer, but since the claimant had not opposed the presentation until 77 working days from the date of the defendant's notification, it could not asserts its right of prohibition.

Legal context

In accordance with section 10a(1) of the Trade Marks Act (7/1964, as amended), the proprietor of a trade mark may not prevent the use of the trade mark on goods that the proprietor, or another person with his consent, has placed on the market under his trade mark within the territory of the European Economic Area. However, subsection (2) provides that this does not apply if the proprietor has justifiable grounds for objecting to the goods being placed on the market once again, in particular if alterations have been made to the goods or if they have deteriorated after having been placed on the market. The content of section 10a is thus essentially the same as that of Directive 2008/95 of the European Parliament and of the Council to approximate the laws of the Member States relating to trade marks, Article 7.

The Court of Justice of the European Union has stated that part of the specific subject matter of the trade mark right is the right attributed to the proprietor of preventing any use of the trade mark which is likely to impair the guarantee of origin (Case 102/77 Hoffmann-La Roche v Centrafarm [1978] ECR 1139, para 7). According to the Court of Justice, the change brought about by any new carton or relabelling of a trade-marked medicinal product creates by its very nature real risks for this guarantee of origin that the mark seeks to protect (Case C–348/04 Boehringer Ingelheim and Others [2007] ECR I-3391, para 30).

Interpreted in the light of Article 36 of the Treaty on the Functioning of the European Union, Article 7(2) of the Directive and therefore section 10a(2) of the Act mean that the trade mark owner may legitimately oppose the further marketing of a pharmaceutical product where the importer has repackaged the product and reaffixed the trade mark unless (see Case C–427/93 Bristol-Myers Squibb v Paranova [1996] ECR I-3457, para 79):
– reliance on trade mark rights would contribute to the artificial partitioning of the markets between Member States,
– the repackaging cannot affect the original condition of the product inside the packaging,
– the new packaging clearly states who repackaged the product and the name of the manufacturer,
– the presentation of the repackaged product is not such as to be liable to damage the reputation of the trade mark and of its owner, and
– the importer gives notice to the trade mark owner before the repackaged product is put on sale.
Facts

Organon had registered in Finland the trade marks MERCILON and MARVELON, which it uses for medicinal products it manufactures. Paranova, a parallel importer of medicinal products, had imported into Finland products put on the market by Organon within the European Union and sold those products after they were repackaged under a parallel import licence issued by Fimea, the Finnish Medicines Agency.

The packages of medicinal products offered to the public by Paranova carried both its mark and Organon's trade mark MERCILON or MARVELON. Uppermost on the front side of the outer packaging was Organon's trade mark; undermost was Paranova's complex mark consisting of a coloured pentagonal design and a stylised trade name and between, in smaller characters, were appellations ‘parallel importer’ and ‘re-packager’ in Finnish and Swedish, the national languages of Finland. Information about Organon as the manufacturer of the pharmaceutical and the proprietor of its trade marks was either on the back or the narrow side of the outer packaging.

Paranova had given notice to Organon of its intention to commence the parallel import of both Mercilon and Marvelon products. Organon opposed the supplied specimens of the repackaged products, eight (as regards Mercilon) and 77 (as regards Marvelon) working days from the date of notification. Despite such reactions, Paranova commenced imports. Organon instituted proceedings and pressed for a declaration of infringement, prohibition of proceeding with and repeating said infringements, destruction or alteration of infringing product packages as well as compensation for damages.

Analysis

Lower courts had found that Paranova had presented sufficient evidence of the necessity of repackaging, of the product per se remaining unaffected, of the new packaging clearly stating who repackaged the product and of the trade mark owner being given notice before the repackaged products were put on sale. The point of dispute before the Supreme Court was whether the presentation of the repackaged products was such as to be liable to damage the reputation of Organon or its trade marks.

It was undisputed that the packaging would be somehow defective, of poor quality or untidy, which incidents were held in Bristol-Myers Squibb v Paranova to be capable of eroding public confidence and damaging the trade mark's reputation in that regard. However, it was noted in Boehringer Ingelheim and Others that the condition of damage is not limited only to matters of inadequate presentation: a repackaged pharmaceutical product may also be presented inappropriately where the packaging is liable to create the impression that there is a commercial connection between the parallel importer and the trade mark proprietor. If the trade mark is used in a way that may give rise to the impression that there is a special relationship between the two undertakings, it may constitute a legitimate reason within the meaning of Article 7(2) of the Directive (Case C–63/97 BMW [1999] ECR I-905, para 51). This is a question of fact to be decided in the light of the circumstances of the case.

The Supreme Court noted that, when trade-marked goods have been put on the Union market by the trade mark proprietor or with his consent, a reseller is free to make use of the trade mark in order to bring to the public's attention the further commercialisation of those goods. The mere fact that the reseller derives an advantage from using the trade mark does not disapply the exhaustion of the rights conferred by the mark. Moreover, it does not appear from the provisions or case law that a parallel importer of pharmaceutical products could not additionally use its own distinctive mark on the new packaging. The decisive circumstance, according to the Supreme Court, is the overall impression of the packages, which should be assessed having regard to the information that the parallel importer gives and the way that information and respective marks have been emphasised on the different sides of the package.

It was held that displaying both Organon's and Paranova's trade marks together on the front side of the packaging was capable of associating the medicinal product with the person who carried out the repackaging. This had given the public a false impression of the commercial origin of the medicinal products and the relationship between the manufacturer and the parallel importer. Paranova had failed to show that there was no detriment to the repute of Organon's trade marks owing to the presentation of the repackaged product. Organon had therefore a prima facie entitlement to prohibit the use of trade marks MERCIOLON and MARVELON in relation to sales packaging notified and imported into the Finnish market by Paranova.

Practical significance

Of interest is the Supreme Court's analysis concerning Organon's power to assert its right of prohibition. Neither the Trade Marks Act nor the Directive contains an express provision on the consequences a trade mark owner may incur if it neglects to object to the parallel importer's form of packaging within a reasonable period of time. The Supreme Court stated that the forfeiture of the right to prohibit does not mean the forfeiture of the exclusive rights conferred on the proprietor. It is merely a matter of losing the special entitlement provided for in Article 7(2) of the Directive in relation to goods that have been put on the market in a manner that exhausts the rights conferred by a trade mark.

Conversely, such forfeiture would not apply where the same goods are repackaged in a way not previously notified to the trade mark owner, provided that there still exist legitimate reasons for the opposition. Similarly, a trade mark entitles the proprietor to prohibit the use of the mark in question where goods are repackaged in a way that the proprietor has not previously intervened in with relation to a different trade mark.

In this case, Organon was found to have hung back on its other opposition for a longer period thatn was deemed reasonable under the circumstances. The action was dismissed insofar as it was based on the use of trade mark MARVELON.

Friday, 1 April 2011

The chocolate menagerie: the General Court decides on bunny, reindeer and mouse shapes

Author: Birgit Clark (Berwin Leighton Paisner)

Journal of Intellectual Property Law & Practice (2011) doi: 10.1093/jiplp/jpr029, first published online 31 March 2011

Chocoladefabriken Lindt & Sprüngli AG v OHIM, Cases T-336/08 (shape of a chocolate rabbit with red ribbon), T-337/08 (shape of a chocolate reindeer), T-346/0 (shape of a bell with red ribbon) and T-395/08 (shape of a chocolate rabbit); August Storck KG v OHIM, Case T-13/09 (shape of a chocolate mouse), General Court of the European Union, 17 December 2010

The General Court decided that the three-dimensional shapes of a chocolate bunny and a chocolate reindeer wearing a red ribbon, a chocolate bell with a red ribbon, a chocolate bunny and a chocolate mouse cannot be registered as Community trade marks for class 30 chocolate goods due to a lack of distinctiveness.

Legal context

The Community Trade Mark Regulation (Council Regulation 207/2009, ‘CTMR’) provides in Article 4 that a Community trade mark may consist of any signs capable of being represented graphically, including words, designs, the shape of goods and their packaging provided that the signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. Article 7(1)(b) CTMR provides that a mark which is devoid of distinctive character cannot, in principle, be registered. Article 7(3) CTMR provides an exception of this and stipulates that Article 7(1)(b) CTMR ‘… shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it’.

Facts

Between the beginning of 2004 and the end of 2005 Lindt applied to register four three-dimensional shape marks as Community trade marks. These included the shape of a bunny made of chocolate with red ribbon featuring the colours red, gold and brown (T-336/08), the shape of a reindeer made of chocolate with a red ribbon featuring the colours red, gold and brown (T-337/08), the shape of a gold bell with a red ribbon (T-346/08) and the shape of a chocolate bunny in the colour gold (T-395/08). In June 2005 Storck applied to register a simple rectangular shape made of chocolate which included on its upper side a relief of a mouse which featured the colour brown as a three dimensional Community trade mark (T-13/09). OHIM's initial examiner refused registration of all five marks, citing a lack of distinctiveness with the distinctiveness objections being upheld by the OHIM Board of Appeal. Both Lindt and Storck took the matter to the General Court which in turn confirmed OHIM's decisions not to register the shape marks.

Analysis

The General Court referred to the ECJ's precedents in Procter & Gamble v OHIM, Joined Cases C-473/01 P and C 474/01 P and OHIM v Erpo Möbelwerk Case C-64/02 P and reiterated that for a trade mark to possess distinctive character within the meaning of Article 7(1)(b) CTMR, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings. Further, the judges reiterated the ECJ's guidance provided in Procter & Gamble v OHIM and Storck v OHIM Case C-25/05 P that the distinctive character must be assessed, first, by reference to the products or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public.

Once more referring to established ECJ case law (Mag Instrument v OHIM Case C-136/02 P and Storck v OHIM Case C-25/05 P), the Court emphasized that the criteria used for determining the distinctiveness of three-dimensional marks, which can theoretically consist of the appearance of the product themselves, were no different to the criteria used to assess the distinctiveness of other categories of trade marks. However, when applying these criteria, account had to be taken of the fact that the perception of the average consumer was not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the product itself as it is in relation to word or figurative marks which consist of signs that are independent of the appearance of the products. Average consumers, the judges pointed out, were not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element. As such, it could prove more difficult to establish distinctiveness of a three-dimensional mark. The more closely a shape mark resembled the most probable shape of a certain product, the more likely it was that it lacked distinctiveness. A mark, however, which departed significantly from the norm or customs of the sector will fulfil its essential function of indicating origin and not fall foul of Article 7(1)(b) CTMR (Henkel v OHIM, Cases C-456/01 P, C-457/01 P and Henkel v OHIM, Case T-393/02).

In order to assess whether a trade mark was distinctive one must consider its overall impression. This did not mean, however, that there was no need, initially, to carry out a successive examination of its different presentational features and it ‘… may be useful, in the course of the overall assessment, to examine each of the constituent features of the trade mark.’

Applying these guidelines to the marks applied for in the current cases the General Court found that these were not suitable to identify the trade origin of the goods covered. This was particularly true since consumers were not in a position to conclude the trade origin of the marks from their different individual characteristics, namely the shape, the gold coloured packaging or the red ribbon of the Lindt marks and the shape and colour of the Storck mark respectively.

As regards to the shape of the Lindt marks (T-336/08, T-337/08, T-346/08 and T-395/08), the Court took the view that bunny, reindeer and red ribbon and bell were typical ‘seasonal’ shapes used for chocolate confectionery, in particular used for Easter and Christmas confectionery. In particular, the shape of the sitting bunny (T-395/08 and T-336/08) itself was not unusual for a rabbit and the shape of the rabbit's ears, eyes or whiskers did not change the fact that ‘a rabbit was always a rabbit’, whether it was sitting or not, as already pointed out by the OHIM Board of Appeal. Concerning the colour gold used for the product wrapping, the Court held that other traders also used gold foil to wrap their chocolate confectionery and that the claimant itself had submitted that it had introduced the foil on the market 50 years ago. The red ribbon and bell used to decorate the bunny did not change this because ribbons, bows and bells were typical decorations of chocolate animals, neither were the details of the face since they were not of such an artistic level that they could convey trade origin. The overall impression of the bunnies did not depart significantly from the basic shapes of the sector and both bunny marks would simply be regarded as yet a further chocolate bunny.

Regarding the question of acquired distinctiveness of the bunnies, this could only be shown for Germany which, in view of the Court, was not sufficient to fulfil the criteria under Article 7(3) CTMR. The judges added that there was also no reason to presume that Austrian and German consumers would perceive shapes differently compared with consumers from the rest of the EU. The Court also rejected Lindt's argument that chocolate bunnies had not been famous outside of Germany before 2004 and so had been distinctive per se in other EU countries. The judges held that it was well-known that Easter bunnies were also known outside of German speaking countries.

In relation to the shape of the reindeer (T-337/08), the Court conceded that it was not a naturalistic depiction of a living reindeer but stressed that chocolate animals were not unusual products and that they rarely were a naturalistic reproduction of the respective real animal but were simplified versions of the actual animal. The fact that no other manufacturers offered a chocolate reindeer wrapped in gold foil, did not change this assessment, in particular since the gold foil wrapping was not unusual for the chocolate sector. The overall impression conveyed by the reindeer was one of a further animal shape, wrapped in gold foil, without any indication of its trade origin that comprised of traditional decorative elements of a reindeer. The detailing of the reindeer, its antler, eyes, feet and mouth did not change this since they were not of such an artistic level that they could serve as indicators of trade origin. Finally, reindeers as a symbol for Christmas were known in the European Union at large and the claimant had not managed to show that its shape did significantly depart from the animal shapes already available on the market. Consequently, just like the bunny, the reindeer was not sufficiently distinctive for registration.

The Court did, however, agree with Lindt's criticism of the OHIM Board of Appeal's finding that chocolate goods needed to be packaged to be sold and thus need to be wrapped in foil to be commercialised. Here, the judges found that for reasons of hygiene chocolate goods were often sold in packaging when offered in supermarkets and other outlets but they did not agree with the Board of Appeal that these goods could only be sold when packaged—with the packaging giving the product its shape. The General Court drew a distinction between chocolate goods on the one hand and beverages on the other hand, which always required some kind of packaging to be sold. Chocolate goods though were also often sold without packaging, for example in sweet shops or in cinemas, where they were only packaged by the seller upon the point of sale.

Concerning the gold bell and red ribbon trade mark application (T-346/08), the Court found that it was customary to decorate chocolate goods or chocolate animals or their packaging with red ribbons or bells. Moreover, the colour red and the use of bells also had religious connotations in the context of Easter as well as Christmas. Consumers would regard a red ribbon and gold bell as a simple and typical decorative element when used on chocolate goods, so that the mark completely lacked distinctiveness. The fact that the ribbon was pleated could not change this assessment.

In view of the Court, Storck's shape mark (T-13/09) consisted of a combination of obvious and typical characteristics of the goods covered and that the mouse shape did not have a ‘strong individual personality’ when compared with cartoon characters such as Asterix or The Simpsons. The judges held that the mouse mark was a mere variant of the typical basic shape used in the sweets sector and did not depart sufficiently from the norm or customary shape in the sector to be able to distinguish Storck's goods from those of other sweets manufacturers. While the Court conceded that some ‘human-like' representations of animals can render a mark distinctive enough to qualify for trade mark registration, Storck's rather basic stylized mouse on top of a basic rectangular block did not depart sufficiently from the usual design of such products.

Consequently, the General Court dismissed Lindt's and Storck's appeals and upheld OHIM's decisions to refuse registration of the four shape mark applications.

Practical significance

It was not known at the time of writing whether either claimant will appeal to the ECJ but, looking at the list of trade mark litigation pursued by Lindt and Storck, it appears likely. Having said that, the General Court decisions and their detailed reasoning provide further clarification as to when a shape trade mark will be registrable for chocolate and confectionery products and are consistent with the General Court's own and the ECJ's precedents concerning animal shape marks, in particular the sea shell shaped chocolate (Piccoli v OHIM, Case T-8/08) and the ECJ's famous earlier Storck decision (Storck v OHIM, Case C-25/05 P).

Bearing in mind that it is acting as a badge of origin is the essential function of any (shape) mark and bearing in mind the general interest underlying Article 7(1)(b) to prevent a risk of a monopolisation of certain shapes (for chocolates and sweets), as pointed out by the Court in T-337/08, paragraph 46, the General Court's decisions appear to be the right ones.