Sweet mark applications turn sour

The European Court of First Instance (CFI) has issued two decisions against confectionery manufacturer August Storck KG. The court refused its applications to register (i) the three-dimensional shape of a light-brown sweet in a specific form (Case T-396/02), and (ii) a figurative mark depicting a twisted wrapper for the same sweet (Case T-402/02).

Having had both applications in relation to sweets sold under the Werther's Original (or Werther's Echte) brand dismissed by the Office for Harmonization in the Internal Market (OHIM), August Storck appealed to the CFI. The main issue for the court to determine was whether the two marks were devoid of any distinctive character pursuant to Article 7(1)(b) of the Community Trademark Regulation.

The CFI confirmed the general rule that signs are not registrable if they:

"are incapable of performing the essential function of a trademark, namely that of identifying the origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition."

The CFI also acknowledged that the distinctiveness of a mark may be assessed only in relation to, first, the goods or services for which the registration of the sign has been requested and, second, the perception that the relevant public has of it. With respect to three-dimensional signs that consist of the appearance of the product itself, the court upheld the previous decisions indicating that the perception of the relevant public is not necessarily the same as it is in relation to a word mark or any other traditional type of trademark.

The CFI then applied these principles to both cases and upheld the rulings of the OHIM's Board of Appeal that both the three-dimensional sweet shape and the figurative twisted wrapper mark were devoid of distinctive character. It agreed that the marks were not unusual and that a large number of sweets produced by third parties have the same shape and are wrapped in a similar way.

Next, the CFI considered, in both decisions, whether the two marks had acquired distinctiveness through substantial use and should therefore be registered in accordance with Article 7(3) of the Community Trademark Regulation. August Storck had referred to the long history of the two marks, the high turnover, advertising expenditure, sales figures and surveys, which - it claimed - showed a significant degree of product awareness. The CFI confirmed the general rule that Article 7(3) requires that at least a significant portion of the relevant section of the public identifies the product or service as originating from a particular undertaking because of the mark, and that this cannot be shown to exist solely by reference to general, abstract data such as specific percentages. It also repeated the basic factors that should be taken into account, namely:

"the market share held by the mark, how intensive, geographically wide-spread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking, and statements from chambers of commerce and industry or other trade and professional associations."

After laying down these general principles, the CFI again followed the Board of Appeal's line of reasoning and agreed that the two marks did not possess acquired distinctiveness. With respect to the three-dimensional shape, the court confirmed that it had no function as a trademark. In its other ruling, the court dismissed the idea that the twisted wrapper was viewed by consumers as an indication of origin. The sales figures, advertising expenses and surveys were not deemed as sufficient to prove acquired distinctiveness because it was not clear whether these figures referred to the Werther's Original brand name as a whole or specifically to the shape or twisted wrapper marks. Moreover, the court stated that such figures must be placed in context with similar data from competitors.

Accordingly, the applications for the three-dimensional shape and for the twisted wrapper were rejected by the CFI.

Carsten Albrecht, Lovells, Hamburg