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 OHI
M, 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.
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’.
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.
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.
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.