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					 Legal Decision: EU


                Lindt hops off after bitter
                   trademark rejection
THE CASE:
Chocoladefabriken Lindt & Sprüngli AG v Office for Harmonization in the Internal Market
The Court of Justice of the European Union
24 May 2012



                 MW Trade Marks’ Jonathan Wyness examines the CJEU’s refusal to register a
                                three dimensional mark for chocolate goods

 On 18 May 2004, chocolate maker Lindt            the European Union, in accordance with                small bell, are not sufficiently different from those
filed a community trademark application           Article 7(3) of the CTMR.                             of the basic shapes commonly used for wrappers
for a three-dimensional sign, consisting                                                                for chocolate and chocolate products and, more
of the shape of a chocolate rabbit with           Decision of the CJEU                                  specifically, chocolate rabbits. Therefore, they
a red ribbon and which, according to the          On 18 August 2008, Lindt appealed to the              were considered not likely to be remembered by
description in the application, is red, gold      Court of Justice of the European Union (CJEU),        the relevant public as indicators of commercial
and brown.                                        which held that the shape was considered to           origin. The gold-coloured wrapping in the shape
     The application was for “Chocolate and       be a typical shape for chocolate rabbits and,         of a sitting rabbit with a pleated red ribbon and
chocolate products” in Nice class 30.             therefore, devoid of any distinctive character.       a small bell, was not considered by the court to
     On 14 October 2005, the Office for           Concerning the gold foil wrapping, the                be substantially different from the wrappers of
Harmonization in the Internal Market (OHIM)       court held that Lindt’s chocolate rabbit is not       the goods at issue which are commonly used in
rejected the application on the basis of          the only one wrapped in gold foil and that            trade, thus coming naturally to mind as a typical
Article 7(1)(b) of Regulation No 40/94 (the       possible originality is not sufficient to establish   form of wrapper for those goods, according to
Community Trade Mark Regulation “CTMR”),          distinctive character.                                the CJEU.
finding that the mark was devoid of any                As regards the pleated red ribbon, tied               The court also found that the graphic
distinctive character. Furthermore, the mark      to form a bow and carrying a small bell, the          elements, in particular the eyes, whiskers and
was considered not to have acquired distinctive   court held that there was no information in the       paws, do not mean that the sign at issue is capable
character through use, under Article                                                                               of protection. They were considered
7(3) of that Regulation, because the                                                                               everyday elements that all shapes of
evidence related only to Germany.      “This case highlights the continuing                                        chocolate rabbits normally present, and
     On 11 June 2008, the Fourth          uncertainty for applications to                                          they are not of an artistic level such that
Board of Appeal of OHIM dismissed                                                                                  the consumer could perceive them as
Lindt’s appeal. It found that none      register three dimensional shapes                                          being an indication of the origin of the
of the elements which constituted
the mark, namely the shape, the
                                          before OHIM. Shape marks are                                             goods at issue.
                                                                                                                        The court rejected Lindt’s argument
gold foil and the red ribbon with a         specifically included in the                                           that, outside Germany, the chocolate
small bell, considered separately or                                                                               Easter bunny is largely unknown and
as a whole, could give it a distinctive  definition of a sign under Article                                        therefore it has an inherent distinctive
character in relation to the goods      4 of the CTMR, but in practice, are                                        character in the other member states. It
concerned. It held that rabbits are one                                                                            is common knowledge, according to the
of the typical shapes which chocolate         much harder to register.”                                            court, that chocolate rabbits, which are
products may take, especially at Easter.                                                                           often sold at Easter, are not unknown
Consequently, the mark was held to                                                                                 outside Germany. The court therefore
be devoid of any distinctive character within     documents before them to call into question           considered that it must be assumed that, in the
the meaning of Article 7(1)(b) of the CTMR        the assessments of the Fourth Board of Appeal,        absence of concrete evidence to the contrary, the
throughout the European Union, given that         nor those of the examiner, which found that it        impression created in the mind of the consumer
there is no reason to presume that consumers in   is common to decorate chocolate animals or            by the mark for which registration was sought,
Germany perceive the shape at issue differently   their wrapping with bows, ribbons and bells.          which consists of a three-dimensional sign, is
from consumers in other member states.            Therefore, small bells and bows are common            the same in the European Union as a whole.
     Furthermore, the documents submitted         elements in the case of chocolate animals.            Accordingly, the mark is devoid of any distinctive
by Lindt, since they related only to Germany,         Regarding the global assessment of the mark       character throughout the European Union.
were held not to lead to the conclusion that      for which registration was sought, the court found         The court considered that it is thus in the
the mark had acquired for the goods at issue      that the characteristics of the combination of the    European Union as a whole that the mark
distinctive character through use throughout      shape, the colours and the pleated ribbon with a      must have acquired distinctive character


64 Intellectual Property magazine                               July/August 2012                        www.intellectualpropertymagazine.com
through use in order to be registrable under        throughout the EU for relatively common                        This case highlights the importance of
Article 7(3) of the CTMR.                           shapes is much higher than for word marks.                putting forward your strongest case at the
     However, the court noted that even if Lindt         The difficulties are further exacerbated             earliest opportunity. It can be difficult to introduce
had demonstrated the distinctive character          by inconsistencies between the treatment                  new evidence of acquired distinctiveness at
of the sign at issue acquired through use in        of apparently analogous cases and a lack of               a later stage. Also, it has long been accepted
the three member states that it cited in their      consistency of approach by national registrars            that OHIM is not bound by earlier decisions
appeal, namely Germany, Austria and the UK,         within the EU. Lindt produced evidence of the             of OHIM examiners, or examiners at national
the supporting documents furnished were not         registration of their chocolate bunny shape mark          EU registries.
capable of proving that that sign had acquired      in 15 EU countries to indicate that, not only was it                                               Author
distinctive character in all of the member          an inherently registrable shape, but the fact it had
states at the date of filing of the application     been accepted without evidence of use in those
for registration of the mark at issue.              countries meant that it was not a common shape
                                                    in those EU countries. Therefore, the evidence of
Summary                                             use for the purposes of the present appeal could
This case highlights the continuing uncertainty     legitimately be confined to Germany, UK and
for applications to register three dimensional      Austria. Lindt tried to supplement its evidence
shapes before OHIM. Shape marks are                 of use before the CJEU, a practice which OHIM
specifically included in the definition of a sign   challenged on the basis that the issue was whether
under Article 4 of the CTMR, but in practice, are   OHIM had erred in law, not in their interpretation
                                                                                                               Jonathan Wyness is the senior partner
much harder to register because it is felt that     of the evidence. The CJEU reminded Lindt that              of MW Trade Marks Limited and a
consumers are less likely to consider shapes        the decisions of national EU registrars were not           Fellow of ITMA. He has worked as
of goods as an indication of the origin of the      binding on OHIM and so evidence of use from                in-house trademark attorney for an
product. Instead, they will rely on the brand       only these three countries was not felt to be              international luxury goods group for
names or logos applied to the packaging to          evidence of acquired distinctiveness throughout            over 10 years, and as a senior trademark
differentiate competing products. Indeed, this      the EU. The original application was filed in              attorney for a large international law
                                                                                                               firm offering trademark services to
case highlights that because shapes are more        2004, and perhaps a new application will fare
                                                                                                               some of the leading brand-owning
universally recognised than word marks (which       better if Lindt have since that time established           companies in the world. Jon is also an
only have a meaning in countries where that         their product in more EU countries, to the level           examiner and a lecturer in trademarks.
language is widespread), the burden on the          of recognition that the author believes it enjoys
applicant to show acquired distinctiveness          in the UK.


                                                                         CIPA CONGRESS 2012
                                                                         IP UNITED
                                                                         GLOBAL HARMONISATION
                                                                         THURDSAY 11 – FRIDAY 12 OCTOBER 2012



                                                                         Business                                 Social and Networking
                                                                         • Competition Law and IP                 The President’s Dinner - Speech from
                                                                         • Future of Patents and Patent           Lord Justice Kitchin
                                                                           Litigation in Europe                   Keynote speeches include:
                                                                         • Linguistics & Claim Construction       • John Alty, CEO, UK IPO
                                                                         • Patent Infringement                    • Wim Van der Eijk, Vice President
                                                                         • Patent Validity                          Appeals DG. 3, EPO

                                                                         • Trade Marks – Impact of EU
                                                                           Harmonisation



                                                                         Open IP Meeting –                        IPAG Conference for IP
                                                                         New for 2012                             administrators and paralegals
                                                                         Congress will be followed                IPAG’s annual conference runs parallel with
                                                                         on Friday afternoon by an Open           Congress and delegates meet during lunch
                                                                         Meeting for IP professionals to          and refreshments
                                                                                                                                                 up
                                                                                                                                               11 h to
                                                                         discuss ‘The Profession: Training,
                                                                         Ethics and Governance’.
                                                                                                                                                   our
                                                                                                                                                CPD s
                                                                         To Register:
                                                                         E: congress@cipa.org.uk T: +44 (0)20 8432 4320 W: www.cipa.org.uk


  124x185_advert.indd 1                                                                                                                           29/06/2012 14:04

www.intellectualpropertymagazine.com                              July/August 2012                                    Intellectual Property magazine 65

				
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