With its recent Lindt & Sprüngli decision, the
Court of Justice of the European Union ("CJEU") confirmed
its earlier decisions that tighten the threshold for the inherent
distinctiveness of three-dimensional trademarks. The decision
relates to the shape and outer appearance of chocolate bunnies and
has far-reaching effects for the protection of the shape and outer
appearance of products in the EU.
On May 24, 2012, the CJEU handed down its judgment on the
registrability of the shape of chocolate bunnies as a trademark
(Case C-98/11 P). Chocoladefabriken Lindt & Sprüngli AG
("Lindt"), a Swiss producer of fine chocolates,
ultimately failed to obtain trademark protection throughout the EU
for the shape and outer appearance of its chocolate bunnies offered
during the Easter holiday season. Lindt has marketed these
products, called "Lindt GOLDHASE" ("Lindt Gold
Bunny"), primarily in Germany since 1952.
The Lindt & Sprüngli
Case
In 2004, Lindt filed a Community trademark ("CTM")
application seeking protection for a three-dimensional trademark
encompassing the goods "chocolate and chocolate
products." The mark represents the shape of a chocolate bunny
wrapped in a gold foil with a red ribbon and a small bell and,
according to the applicant's description, consists of the
colors red, gold, and brown:
Lindt's application encountered distinctiveness objections
from the Office for Harmonization in the Internal Market
("OHIM"), which is responsible for administering CTMs.
Lindt claimed two grounds for protection: First, Lindt argued
inherent registrability of the shape of chocolate bunnies for a
variety of European countries in which the shape is allegedly
unknown. Second, Lindt relied on acquired distinctiveness though
extensive use in the EU countries Germany, Austria, and the United
Kingdom.
Lindt's application was rejected, however, and so was
Lindt's appeal before the Boards of Appeal. On action, the
General Court ("GC") confirmed the Appeal Board finding.
Lindt appealed further to the CJEU.
The CJEU assessed the distinctive properties of the applied-for
mark both by reference to the claimed goods and the perception of
the mark by the relevant public. It upheld its case law whereby
only a mark that departs significantly from the norm or customs of
the industry in question fulfills its essential function of
indicating the origin of the goods from a certain business
undertaking.
The CJEU fully approved the finding of the GC whereby three
essential elements of the applied-for mark itself lacked
distinctiveness: (i) the shape of a sitting or crouching bunny must
be considered to be a typical shape for chocolate bunnies, (ii) the
gold foil wrapping could be found on competing chocolate bunnies on
the market and that possible originality was not sufficient to back
the claim of distinctiveness, and (iii) the pleated red ribbon,
tied to form a bow and carrying a small bell, did not add to the
distinctiveness because bows, ribbons, and small bells were common
elements to decorate chocolate animals.
The CJEU also approved the finding of the GC with regard to the
global assessment of the mark. It held that the characteristics of
the combination of these three elements were not sufficiently
different from those of the basic shapes commonly used for
chocolate and chocolate products and, in particular, chocolate
bunnies; in fact, they were viewed as a typical form of wrapper for
those goods. Also, the graphic elements used by the
applicant—in particular, the eyes, whiskers, and
paws—could not add to an overall distinctive character as
these were everyday elements of chocolate bunnies and did not reach
an artistic level sufficient to serve as an indicator of the source
of origin. In that respect, the CJEU stated that it would not
substitute its own assessment of the facts for that of the GC. A
new evaluation of the distinctive character of the mark would call
into question the accuracy of the GC's findings of the factual
nature and would go beyond the scope of a review by the CJEU in the
context of an appeal.
With regard to the claim of acquired distinctiveness by means of
use, Lindt argued that the lack of inherent distinctive character
had to be overcome only in relation to the chocolate bunny market
in certain areas, in particular in Germany. As chocolate bunnies
were mostly unknown outside Germany, according to Lindt, Lindt was
required to show acquired distinctiveness only in Germany. However,
the GC concluded that there was no concrete evidence that the
impression created in the mind of the consumers would differ
between those in Germany and in other territories in the EU. Thus,
the impression had to be evaluated in the same manner throughout
the entire EU, with the consequence that the mark was viewed as
devoid of any inherent distinctive character throughout the
EU.
Lindt was also unsuccessful with these arguments in the CJEU
decision. The CJEU concluded that Lindt was not released from
actually showing distinctive character by means of substantial use
because it was accurate to say that the mark lacked distinctiveness
in all EU countries ab initio. Although it might be
unreasonable to require the applicant to show acquired
distinctiveness throughout the entire EU (meaning in each of the 27
Member States), instead of just that part of the EU in which the
mark, ab initio, had no distinctiveness, this exception
could not be applied in the present case, where the applicant
relied on evidence for only three Member States, which proved to be
insufficient.
Earlier Prosecution History
The proceedings before OHIM that led to the Lindt &
Sprüngli case before the CJEU were certainly not the
first attempts of Lindt to secure trademark protection for its
Easter treats.
Lindt was successful in obtaining registered trademarks for the
shape of the chocolate bunny in 15 Member States of the EU,
including Germany, where the product is marketed to a considerable
extent. In Germany, Lindt was even successful in registering the
mere shape of the chocolate bunny without the ribbon and the bell
by means of acquired distinctiveness:
However, these previous records did not influence proceedings before OHIM, although the trademark law provisions with regards to lack of distinctiveness are harmonized across the EU. The present case is a fine example of the different outcome a case may have before any of the trademark offices across the EU. In fact, the CJEU in the Lindt & Sprüngli case upheld its settled case law that OHIM is under no obligation to follow the assessment of the competent national trademark offices or to register the mark at issue as a CTM on the basis of such considerations.
Lindt had also obtained an earlier CTM for the shape of the
chocolate bunny, but this showed the imprint "Lindt
GOLDHASE," thus adding distinctive matter (Community Trademark
Registration 001698885). However, even this registration has been
attacked with invalidity proceedings by a French confectionary
shop, as well as the Austrian company Hauswirth. Both proceedings
are still pending.
Infringement Proceedings
Chocolate bunnies are also the subject of infringement proceedings
initiated by Lindt against its competitors.
The Riegelein Case
In Germany, Lindt sued its German competitor Riegelein, which
offers chocolate bunnies in a sitting position, wrapped in gold
foil printed with a brown bow:
In two decisions, the Higher Regional Court of Frankfurt
dismissed Lindt's claims, but the Federal Supreme Court lifted
these decisions and referred the matter back. The Higher Regional
Court of Frankfurt (decision of October 27, 2011, case 6 U 10/03)
dismissed the claims again. The reasoning was that the existence of
a variety of chocolate bunnies will not make the relevant public
believe that the shape of a sitting chocolate bunny refers to
products from one specific manufacturer. Since Lindt's high
level of recognition on the German market for chocolate products
relates to its actual product, which shows the imprint "Lindt
GOLDHASE," the Court concluded that the major part of the
distinctive character has to be attributed to the verbal
element—the written words—rather than the shape
and color of the chocolate bunny. Since the Riegelein products
showed the house mark of the defendant, the Court negated a
likelihood of confusion. Once again, Lindt appealed this decision
to the Federal Supreme Court.
The Hauswirth Case
However, Lindt was more successful in Austria against its
competitor Hauswirth. Lindt sued Hauswirth for trademark
infringement and unfair competition due to its product offering of
a sitting bunny wrapped in a gold foil and originally decorated
with a ribbon, which was later removed:
Hauswirth claimed that it had been producing the product in an
uncontested manner in Austria since 1962, whereas Lindt's
chocolate bunny did not enter the Austrian market until 1994.
Therefore, Hauswirth requested the cancellation of Lindt's
Community Trademark Registration on the grounds of bad faith by way
of a counterclaim. The Austrian Supreme Court, by decision of March
26, 2012, confirmed the cease and desist claims of Lindt and
affirmed a risk of confusion between the respective chocolate
bunnies.
Consequences for the Protection Regarding the Shape of
Goods
In sum, the recent Lindt decision of the CJEU does
not contain anything essentially new. Prior to this decision, it
was well established that the protection of a three-dimensional
trademark is generally only possible by relying on acquired
distinctiveness. Aside from this, only a mark that departs
significantly from the norm or customs of the industry and thereby
fulfills its essential function of indicating origin is not devoid
of any inherent distinctive character for the purposes of Article
7(1)(b) Council Regulation (EC) No. 207/2009 on the Community
trademark ("CTMR").
Furthermore, the CJEU pointed out that registrations already
existing in EU Member States are only one factor that may be taken
into account, since the CTM for which registration is sought has to
be assessed on the basis of the relevant European Union rules.
Consequently, OHIM is under no obligation to follow the assessment
of the competent national authorities or to register a CTM solely
on the basis of those considerations. As a result, while an
existing trademark registration has to be respected by the national
courts in the course of infringement proceedings, such findings by
the CJEU limit the scope of protection for the existing national
three-dimensional marks.
The decision taken by the CJEU underlines that IP owners face
practical difficulties when trying to register a three-dimensional
trademark as a CTM. OHIM's practice is rather strict when it
comes to accepting inherent distinctiveness. The CJEU supports this
approach. Furthermore, acquired distinctiveness has to be shown to
exist throughout the entire EU.
In 2009, the Court of First Instance (case T-28/08) held in
the Mars Bounty Bar decision that a survey carried out by
Mars in six of the then 15 Member States—United Kingdom,
Belgium, France, Germany, Italy, and The Netherlands—did
not necessarily mean the Bounty Bar's shape was regarded as a
unique selling point throughout the EU. This country-by-country
approach makes it difficult, document-heavy, and expensive for IP
owners to reach the threshold in each country.
The recent Lindt decision of the CJEU is a further
step on the long road for Community trademark law, as well as the
trademark law of the Member States, to find the right balance
between three-dimensional trademarks on one hand and design rights
on the other. The importance of this distinction is vital:
Registered trademarks perpetuate the rights for their owners upon
proper prolongation, while design rights offer only a limited
25-year period of protection. Admittedly, the Trademarks Directive,
and in consequence the CTMR and the national trademark laws of the
Member States, explicitly mention three-dimensional trademarks as a
possible form of protection. However, this does not negate that
unusual trademark forms struggle to serve as an indication for the
source of origin. As a result, the endeavor to seek formal
trademark protection for three-dimensional objects should follow
only careful deliberation and preparation, including consideration
of whether a registered design right might not better serve a
company's needs.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.