What is the court deciding?

Eight years ago two chocolate makers, Lindt & Sprüngli and August Storck, began asking OHIM to protect five of their products with Community trade marks. Lindt applied for the following 3D marks: the shape of a chocolate rabbit with a red ribbon, in the colours red, gold and brown; the shape of a chocolate reindeer with a red ribbon, in the colours red, gold and brown; the shape of a small bell with a red ribbon, in the colours red and gold; and the shape of a chocolate rabbit in the colour gold. Storck applied for a 3D mark for the basic geometric shape of a rectangular block, one side of which shows a relief in the shape of a mouse, in brown chocolate.

OHIM said no, on the grounds that the marks lacked any distinctive character. The two companies appealed to the General Court, which in 2010 backed OHIM’s decision. In particular, it said that the shapes of the chocolates made by Lindt (a rabbit, a reindeer and a small bell) are often used for chocolates made for sale at Easter and Christmas; other businesses wrap their products in gold foil; and it is common to decorate chocolate animals with ribbons and small bells. The Court said that Storck’s chocolate mouse seemed to be a variation of the basic shapes commonly used in the confectionery sector. Lindt appealed in respect of its application for a CTM for a chocolate rabbit with a red ribbon. Storck also appealed.

On Thursday the Court of Justice will decide whether the lower court was right to reject Lindt’s trade mark request, and begin hearing arguments from Storck as to why it should be able to protect its chocolate mouse with a CTM.

On what grounds is Lindt appealing?

Lindt says the General Court was wrong to rule that the chocolate rabbit was not distinctive and points to the fact that the mark is registered as a trade mark in 15 EU member states. It also claims that the acquired distinctiveness of the mark need only be assessed in those member states where the mark is not registered. It says the EU is to be regarded as a homogeneous market and, as such, as long as a significant part of the total population recognise the mark’s distinctive character, it should be sufficient to warrant protection throughout the EU.

Who is advising the parties?

Reinhart Lange and Gesine Hild of Wilmer Hale represent Lindt. Tim Reher, Petra Goldenbaum, Ilse Rohr and Thomas Melchert of CMS Hasche Sigle are advising Storck.

Haven’t there been more trade mark cases about chocolate shapes?

There’s been a box-load of them. In July 2009 the General Court (then the European Court of First Instance) ruled that the Bounty bar shape (registered as a CTM) is devoid of any initial distinctive character and had not acquired distinctive character through use. The Court said that Mars had failed to demonstrate a uniform rate of recognition across the EU.

One day later, the German Federal Court of Justice ruled that the Rocher chocolate ball had acquired distinctiveness through use in Germany, despite not having distinctiveness per se.

Another case involving Lindt’s chocolate bunny has also made its way up to Europe’s highest court. In June 2009 the Court of Justice answered questions referred from Austria’s Supreme Court on what constitutes a bad faith application for a CTM, after Lindt & Sprüngli obtained a three-dimensional Community trade mark for its gold chocolate bunny, with a red ribbon, bell and brown lettering. One of the businesses it then tried to stop from selling similar products counter-sued, alleging the mark was filed in bad faith. It claimed that Lindt filed the mark to prevent its competitors from manufacturing similar bunnies, even though some of them have done so since the 1960s. The Court said that a finding of bad faith must be the subject of an overall assessment, taking into account all relevant factors including the applicant’s intention.

What do lawyers expect?

Trade mark lawyers say it is unusual for the Court of Justice to overturn the General Court in trade mark registration cases. One told Managing IP that the Court is likely to repeat that the CTM system is autonomous and not influenced by registrations and court decisions in member states. As a result, it is for the CTM applicant to show that the get-up of his product is different from what is customary.

The impact of the ruling

If, as many lawyers expect, Lindt loses its battle to register its bunny trade mark, it will underline the practical difficulties that IP owners face when trying to register a non-traditional mark as a CTM.

“The case just shows once again that if you have a non-traditional mark, going for a CTM may not be the best idea, as OHIM is rather strict when it comes to accepting inherent distinctiveness, and acquired distinctiveness will need to be shown to exist throughout the EU,” says Verena Bomhard, a partner in Hogan Lovells’ Alicante office. She says that the Bounty bar decision makes it clear that that OHIM insists on a country-by-country approach, making it a “huge task” to prove secondary meaning in the EU as a whole. “Few marks even reach the threshold everywhere, and even if they do, proving it is difficult, document-heavy and, as a result, expensive,” she says.

Joseph Fesenmair of Bird & Bird in Munich agrees, saying that Lindt’s decision to appeal the General Court’s ruling on the question of where a CTM must have acquired distinctiveness means that it is being closely watched by IP professionals.

He added that if owners of non-traditional marks, who are often required to show that their mark has acquired distinctiveness, must now prove it has acquired that standard in every member state rather than in a substantial part of the EU as a whole then seeking a CTM will no longer be a realistic option for them.

“The decision will lay the ground for the future of the protectability of three-dimensional marks in the Community as a whole,” he says. “Should [the General Court’s] restrictive approach be supported by the CJEU this would ring the death knell for three-dimensional trade marks as CTMs and in my opinion not only run counter to the spirit of the Convention but also the unitary character of the CTM.”