Storck loses its chocolate mouse

On September 6 2012 the Court of Justice of the European Union (ECJ) handed down its judgment in August Storck KG v Office for Harmonisation in the Internal market (OHIM) (Case C-96/11). 

August Storck KG appealed against the judgment of the General Court rejecting its application for registration of a three-dimensional (3D) mark consisting of a block with the bas-relief shape of a chocolate mouse on the top: 

The ECJ rejected the appeal in its entirety.

The appellant relied on three grounds of appeal. The first plea was the infringement of Article 7(1)(b) of the Community Trademark Regulation (40/94) (now replaced by the Community Trademark Regulation (207/2009)), while the remaining pleas dealt with procedural considerations. Storck argued that the General Court had incorrectly applied Article 7(1)(b) and therefore wrongly concluded that the mark applied for lacked distinctive character. This plea was divided into five parts.

As the first part of this plea, the appellant argued that the General Court was wrong to apply the case law on 3D marks without graphical elements or word elements. The mark in question did have a graphical element in the form of a mouse in bas-relief. The appellant therefore contested that the mark should have instead been assessed using the case law applicable to figurative marks and that it was wrong to presume, in line with the cases on pure shape marks, that consumers would be less likely to consider the mark distinctive. 

The ECJ began by stating that the criteria for the evaluation of the distinctive character of 3D marks are no different from the criteria of other categories of mark. The principal element of this evaluation is always whether the mark is able to identify the trade origin of the product or its services, and distinguish it from others. 

However, where a 3D mark is purely the shape of the product, the average consumer's perception of that mark is likely to differ from that of a mark incorporating an independent verbal or figurative sign. More specifically, the average consumer will generally find it easier to identify the origin of a 3D mark which includes an independent distinctive verbal or graphical sign. This being the case, where a 3D mark consists of a figurative element which is not an independent sign, but is simply decorative, that mark need not be assessed using the same approach appropriate to verbal or figurative marks, which are independently distinctive. In the present case, the General Court had already found that, in the context of the confectionary market, figurative elements of the sort at issue on chocolate products were likely to be considered decorative. On this basis, the General Court was correct to apply the case law relating to pure shape marks and had not erred in finding a lack of overall distinctiveness for the mark.

The remaining four parts of the appellant's first plea were swiftly rejected by the ECJ on the basis that they either covered questions of fact and thus were inadmissible, or were based on misreadings of the General Court's judgment and linguistic nuances which did not alter the fundamental analysis.

The ECJ was quick to assert that the same criterion applies uniformly to all types and categories of trademark.  However, as has been established in previous cases, fulfilling this criterion will not be as easy for some types of marks as it will be for others. For 3D marks which include decorative figurative elements but do not include independent distinctive signs, the task of proving distinctive character may be just as difficult as for a pure shape marks that features no figurative elements at all. To achieve the distinctive character required, such a mark will need to be significantly distinct from the norm within the given sector. 

Shape marks which do incorporate an independent sign are more likely to fulfil the criterion than marks which do not. If Storck had decided to emboss its product with its name or logo, would the mark have passed the test of distinctive character? It seems likely, although the mark as a whole would still need to be capable of distinguishing the trade origin of the products.

This judgment serves as a reminder of the limits of trademark law and, in particular, the checks that exist to ensure that trademark rights are used only to allow clear communication of the trade origin of a product, without being extended to grant exclusionary rights over the nature of a product itself.

Hastings Guise and Caroline Bass, Field Fisher Waterhouse, London