August Storck KG ("AS") sought to register the above
figurative mark for: "Confectionery, chocolate, chocolate
products, pastries, ice-creams, preparations for making the
aforementioned products, included in this class." in class
This sign was rejected for lack of distinctive character. The
decision was upheld by the Board of Appeal, and the applicant
appealed to the General Court, on the following grounds.
First, it stated that the EUIPO had wrongly
applied the distinctiveness criteria relating to three dimensional
marks and had wrongly assumed that the sign in question was a
three-dimensional mark. The General Court reiterated the position
that average consumers do not habitually make assumptions about the
origin of goods based on their shape or that of their packaging in
the absence of word or graphic elements. Therefore, it could prove
to be harder to establish the distinctiveness of such a
three-dimensional mark compared to a word or a figurative mark. It
also underlined that the case law on three-dimensional marks also
applied to two-dimensional representations of goods, referring for
example to an earlier case involving AS (Storck v
OHIM C-25/05 P).
The appellant also argued that the EUIPO did
not take into account the overall impression given by the mark, and
only examined the individual features separately. At the same time,
the Office had allegedly failed to give due recognition to the
contribution of those features towards the distinctiveness of the
mark. The Court held that the assessment of individual elements was
not incompatible with a global assessment of a mark. The Court also
agreed with the Board of Appeal's assessment that the
individual features, including the square shape, the colours used
(light blue, white and grey) and the pattern in which they were
applied, were commonplace and did not depart significantly from the
standards of the category.
Thirdly, the applicant complained that the Board of Appeal did
not take into account surveys carried out in Germany and in Austria
in 2014, all of which allegedly fulfilled all the requirements of
the EUIPO guidelines. The Court held that the
German evidence did not prove that the mark was inherently
distinctive, since most of the respondents were already familiar
with it, nor was it wide-ranging enough to show distinctiveness for
EU consumers as a whole, as it was limited to German consumers. As
the survey in Austria had only been first submitted before the
General Court, it was inadmissible: it should have been provided
before the Board of Appeal as the General Court's function was
not to determine points of fact but to decide whether the law had
been applied correctly.
Fourthly, AS argued that the level of attention of the average
EU consumer was high in this case, because the goods were purchased
and consumed for pleasure, and they were likely to have an impact
on the health of the user. The court disagreed, the products were
inexpensive everyday consumer goods bought without a long period of
reflection. Additionally, the health risks of those everyday
consumer goods were not established.
Fifthly, the applicant submitted that the mark's existing
national registrations in 17 Member States, while not binding on
the EU IPO, was nonetheless a strong indication of
its distinctive character. The General Court underlined that the EU
trade mark regime was "an autonomous system with its own set
of rules and with objectives peculiar to it and applie[d]
independently of any national systems". Therefore, national
registrations were one factor that could be taken under
consideration but did not have decisive weight. The registrability
of a sign as an EU trade mark therefore had to be assessed only by
reference to the relevant EU rules, and the court accordingly
dismissed this point.
The applicant stated that the Board of Appeal had recently
registered marks similar to the mark in question here and without a
higher level of distinctiveness. Although the Board was not bound
by previous decisions, AS stated that those examples nonetheless
demonstrated that the Board of Appeal had applied a different
standard in assessing the level of distinctiveness required in the
present case. The Court rejected that argument, reiterating the
position that the legality of the decision of the Board of Appeal
was not to be assessed on the basis of previous
The appeal was dismissed.
This case provides a useful review of the position on the
distinctiveness of three dimensional marks. It is also interesting
to note that several of the points raised had already been
addressed in previous matters involving the same applicant, raising
the question whether AS had hoped that the position of the
EUIPO had changed since those earlier
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