The European Court of Justice (ECJ) on May 24, 2012 has ruled that Chocolate bunnies wrapped with red ribbon are shaped in a form that cannot be registered as a Community Trademark. According to the ECJ the shape is "devoid of any distinctive character."
In 2004 confectionery company Lindt & Sprüngli (Lindt) filed an application to register the “3D sign representing the shape of a chocolate rabbit with a red ribbon" as a Community Trademark. The application was rejected on the basis that it was a shape devoid of any distinctive character. In 2010 Lindt's appeal to the EU's General Court against the rejection order failed based on the same ground. Lindt's appeal to the ECJ, the apex Court of the European Union, has now also been rejected on the same grounds.
The ECJ stated that "the distinctiveness of the mark must be assessed, first, by reference to the goods or services for which registration is sought and, secondly, by reference to the perception of the relevant public". "In that regard, the ECJ rules that the General Court correctly identified and applied those criteria by carrying out an evaluation both of current practices in the industry and the perception of the average consumer."
"As regards the acquisition of distinctive character through use of the mark applied for, the ECJ confirms the reasoning of the General Court which found that Lindt had not proved that the distinctive character had been acquired through use across the EU," the ECJ further stated.
In general the Trademarks allow companies to stop competitors using certain features of products or logos to protect their ability to identify products as produced from that company rather than a competitor's. According to the EU's Trade Mark Directive and Community Trade Mark Regulations, Trademark owners can prevent competitors from "using in the course of trade any sign which is identical with the Trademark in relation to goods or services which are identical with those for which the Trademark is registered" without their consent.
Confirming the General Court's view that 'many chocolate makers create bunnies, reindeer and other animals and often wrap them in foil and adorn them with ribbons', the ECJ stated that Lindt's product consisted of elements which were not unique to it and thus it (ECJ) could not offer Trademark protection for Lindt's product as a whole.
Lindt began selling the chocolate bunnies in Austria back in 1994. In 2000 it registered the whole foil-covered bunny as a Trademark in Austria whereas another Austrian chocolate maker Franz Hauswirth had been selling bunnies in Austria since the 1960s. The ECJ was previously asked if by registering a Trademark for a product that had been sold for many decades in the Austrian market, Lindt had automatically acted in 'bad faith', which would in turn invalidate Lindt's Trademark.
The ECJ stated that it could not precisely define bad faith and that it was up to national courts with the facts at their disposal to rule in particular cases whether there had been a registration in bad faith or not.
Further the EU Directive permits EU member states to draw up national laws giving extra protection to Trademark owners who possess a reputation in that country if others' use of similar or identical signs for similar or identical purposes "without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark".
As per the UK Trademark law marks "devoid of any distinctive character" or if an application is made in "bad faith" cannot be registered. UK Trademark owners may as well obtain 'goodwill' rights to unregistered marks. This shall allow them legal protection under the laws of 'passing off', provided that the mark owners successfully prove that their use of a Trademark has established 'goodwill' in the business associated with that Trademark.
The story was first published in INTELLECT Issue no.2, dated July 2012.