Shapes of rabbit, reindeer and bell with red ribbon are not registrable

European Union
In Chocoladefabriken Lindt & Sprüngli AG v Office for Harmonisation in the Internal Market (OHIM) (Cases T-336/08, T-337/08, T-395/08 and T-346/08, December 17 2010), the General Court has upheld decisions of the Fourth Board of Appeal of OHIM in which the latter had affirmed refusals to register Chocoladefabriken Lindt & Sprüngli AG's three-dimensional (3D) marks due to lack of distinctiveness.

Between February 2004 and November 2005 Lindt applied to register the following 3D marks as Community trademarks (CTMs):
  • the shape of a chocolate rabbit with a red ribbon, in the colours red, gold and brown (T-336/08):
  • the shape of a chocolate reindeer with a red ribbon, in the colours red, gold and brown (T-337/08):
  • the shape of a chocolate rabbit in the colour gold (T-395/08):
  • the shape of a small bell with a red ribbon, in the colours red and gold (T-346/08):
The above 3D marks did not bear the LINDT mark on their packaging. Lindt is the proprietor of a CTM registration for the shape of a chocolate bunny with a red ribbon which, contrary to the marks in the present cases, includes the LINDT mark on its foil wrapping. This registration is the subject of invalidity proceedings before the Austrian Supreme Court (on the Supreme Court’s reference for a preliminary ruling, in Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH (Case C-529/07) the Court of Justice of the European Union defined the criteria relevant to determining whether an applicant is acting in bad faith when filing an application for a CTM - for further details please see "ECJ rules on bad-faith CTM applications in chocolate bunny case") and invalidity proceedings before OHIM (the proceedings have been stayed pending the outcome of the proceedings in the Austrian national courts - see Invalidity Case 1176 C).

With the above applications, Lindt sought registration for chocolate and chocolate products in Class 30 of the Nice Classification. Both the OHIM examiner and the Fourth Board of Appeal dismissed the applications on the grounds that they were devoid of any distinctive character under Article 7(1)(b) of the Community Trademark Regulation (207/2009). Neither did OHIM grant registration based on acquired distinctiveness under Article 7(3).

On appeal, Lindt argued that the combination of the shape of the rabbit and reindeer with the red ribbon and the colour of the packaging enabled the public to identify the commercial origin of the chocolate products. Lindt further submitted that OHIM had erred in arguing that the foil packaging was required for the chocolate to be marketed for technical and hygienic reasons.

The General Court agreed with Lindt that it is not necessary to wrap the chocolate in coloured foil. As such, chocolate confectionery can also be marketed without packaging, albeit not in self-service areas in supermarkets. Therefore, the fact that the 3D marks included the foil packaging of the shape of the chocolate rabbit or reindeer did not render the marks non-registrable per se.

Irrespective of the foregoing, the General Court, in dismissing the appeal, disagreed with Lindt as to the distinctiveness of the actual shapes. It referred to well-established case law, stating that the criteria for assessing the distinctiveness of 3D marks are no different from those to be applied to other categories of trademarks. However, the perception of the average consumer is not necessarily the same in the case of a 3D mark consisting of the shape of a product as in the case of a word mark, a figurative mark or a 3D mark consisting of a sign that bears no relation to the products that it designates. The average consumer is not in the habit of making assumptions as to the origin of products based on their shape in the absence of any graphic or word element, and it may thus be difficult to establish the distinctiveness of such a 3D mark (see Mag Instrument v OHIM (Case C-136/02 P), Paragraph 30).

The General Court considered that the marks were incapable of identifying the commercial origin of the chocolate products. The various elements making up the marks, namely the shape, the gold wrapping and the red ribbon, were insufficient to give them the necessary level of distinctive character. The court regarded the shapes of a chocolate rabbit, a reindeer and a small bell with a ribbon as typically associated with chocolate products at Easter and Christmas, respectively. It observed, by referring to Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH, that competitors of Lindt also wrap chocolate products in gold foil. It concluded that the shape of Lindt’s rabbit and reindeer were typical forms of chocolate products in the sector. Finally, with regard to the red ribbon with a small bell, the General Court stated that it was common to decorate chocolate animals or their wrapping with knots, red ribbons and small bells. As a mere decoration, the red ribbon with a small bell had, in the court’s view, no distinctive character.

The General Court then looked at registrability under Article 7(3) of the regulation. It held that, in order for a mark to be accepted under Article 7(3), the distinctive character acquired in consequence of the use of that mark must be demonstrated in a substantial part of the European Union where it was devoid of any such character under Article 7(1)(b). It dismissed Lindt’s argument that the shapes were not known beyond the geographical scope of Germany, Austria and the United Kingdom and that it was thus sufficient to prove acquired distinctiveness in this part of the European Union only. The court held that:
  • it was an established fact that consumers in other member states would be familiar with the chocolate rabbit or other chocolate animals; and
  • acquired distinctiveness had to be shown in all parts of the European Union.
In the court’s view, Lindt had thus failed to fulfil the criteria under Article 7(3).

The decisions of the General Court are significant because of various infringement actions brought by Lindt against competitors in Germany and Austria. It will be more difficult for Lindt to claim that competitors infringe its rights by marketing similar shapes of chocolate rabbits wrapped in gold foil. The decisions are also important in that they give further guidance as to the registrability of chocolate products in the shape of animals.

Florian Traub, Squire Sanders & Dempsey (UK) LLP, London

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