No sweet music for MOZART

European Union
In Paul Reber GmbH & Co KG v Office for Harmonization in the Internal Market (OHIM) (Case T-304/06, July 9 2008), the Court of First Instance (CFI) has upheld a decision of the Second Board of Appeal of OHIM in which the latter had held that the trademark MOZART was descriptive and was thus invalid.
In March 1996 Paul Reber GmbH & Co KG filed an application for the registration of MOZART as a Community trademark for goods in Class 30 of the Nice Classification ("pastries and cakes, chocolate goods, confectionery"). The mark was registered in 2000.
On November 14 2002 Chocoladefabriken Lindt & Sprungli AG applied to OHIM for a declaration of invalidity of the registration on the grounds that it had been registered in breach of Article 7(1)(c), read in conjunction with Article 51(1)(a), of the Community Trademark Regulation (40/98).
On December 21 2004 the Cancellation Division of OHIM allowed Lindt’s application and declared the mark invalid on the grounds that:
  • in Germany and Austria, the term 'Mozartkugel' is used to describe balls of marzipan and praline coated in chocolate; and
  • as 'Kugel' ('ball' in German) is descriptive of the product's shape, the MOZART mark would be descriptive of the goods at issue.
Reber filed a notice of appeal, which was dismissed by OHIM's Second Board of Appeal on the basis that the mark was "an objective indication that was purely descriptive of the products covered".
Reber appealed to the CFI, requesting that:
  • the board’s decision be annulled on the grounds that: 

    • it infringed the first sentence of Article 73 and the first sentence of Article 74(1) of the regulation, as well as the principles of protection of legitimate expectations and equal treatment and legality; and
    • it was based on a misapplication of Article 7(1)(c) of the regulation, since the mark cannot serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods covered or other characteristics of the goods; or
  • in the alternative, the board’s decision be annulled in so far as is necessary to restrict the specification of the goods to "pastry and confectionery, chocolate products, sugar confectionery, all the goods mentioned above with exception of the speciality 'Mozartkugeln', that is to say, balls of marzipan and praline coated in chocolate".
Among other things, Reber also argued that the board should have given specific reasons for the fact that it had departed from decisions of the Österreichisches Patentamt and the Bundespatentgericht, as well as the decision of the Third Board of Appeal of April 10 2002 (Case R 953/2001-3).
The CFI decided that the alternative claim was not admissible. In principle, Article 44(1) of the regulation permits applicants to restrict the specification of goods of a trademark application. However, Reber’s alternative claim altered the description of all the goods concerned, specifying that the goods were not to be presented in the form of balls of marzipan and praline-coated chocolate called Mozartkugeln. To uphold that claim would have amounted to changing the subject matter of the proceedings, which is prohibited.
The CFI went on to consider whether the board's decision should be annulled. It decided that Reber's first plea should be rejected on the grounds that:
  • The board did not act improperly in adopting the grounds of the Cancellation Division decision as its reasons.
  • The board need not give specific reasons for departing from decisions of national courts and the decision-making practices of OHIM, as these have no decisive weight and are merely factors to be considered.
  • The board did not infringe Article 74(1) of the regulation by failing to take into account decisions of other courts. The three decisions referred to did not constitute facts which could be examined by OHIM.
  • The principle of protection of legitimate expectations could not succeed, as assurances from the Community administration which did not comply with the applicable rules could not give rise to a legitimate expectation. Likewise, equal treatment must be reconciled with the principle of legality. No person may rely on an unlawful act committed in favour of another.
The CFI also rejected Reber's second plea on the grounds that:
  • The Cancellation Division and the board had correctly based their assessment of the perception of the mark on the general public. 
  • The word 'Mozart' is descriptive. The term 'Mozartkugel' is composed of two words, 'Mozart' and 'Kugel'. A German speaker will view the second part of the word as a description of the shape (as Mozartkugeln are spherical) and the first part of the word as a reference to the characteristic recipe for Mozartkugeln.
  • Mozartkugeln fall within all four categories of goods. Therefore, should "pastry and confectionery, chocolate products and sugar confectionery" be presented in the shape of a ball, the mark would be used descriptively in German-speaking countries.
  • The fact that the public would see the word 'Mozart' as a reference to the famous composer would not prevent the word from being an indication of descriptive character.
  • The fact that, in another case, the board had reached a different conclusion regarding the sign or that a counterclaim for a declaration of invalidity of the trademark had previously been dismissed did not preclude the CFI from granting a declaration of invalidity.
This decision is not surprising. As anyone who has visited Austria will confirm, Mozartkugeln are widely sold there and the term is used descriptively. Although Reber sells such confectionery, it appears that it was not the first company to do so and that it has no monopoly in the term, Lindt being one of several other confectionery companies producing similar products.
Freya Godfrey, Hammonds LLP, London

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