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: email@example.com 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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