Chocoladefabriken Lindt & Sprüngli AG v OHIM, Case C-98/11 P, 24 May 2012

Where an unusual mark, in this case the three dimensional image of the well known Lindt Gold Bunny chocolate product, is not inherently distinctive in every member state of the EU, it cannot be protected as a CTM unless there is evidence that it has acquired distinctiveness through use in the remaining part of the EU. Thus distinctiveness must be established throughout the EU whether inherently from the outset, or through evidence of distinctiveness acquired through use, or a combination of the two.

As a Community Trade Mark is a unitary right covering the whole of the EU as a single market, a trade mark which lacks distinctive character in part of the EU will be refused registration as a CTM. However, it is possible to obtain registration under Article 7(3) of the Community Trade Mark Regulation (CTM Regulation) if it can be established through evidence that the mark has acquired a distinctive character through use. In the "Gold Bunny" case, the CJEU has upheld the EU General Court's decision that a threedimensional mark comprising the shape of a chocolate rabbit with a red ribbon was devoid of distinctive character within the meaning of Article 7(1)(b) of the CTM Regulation for chocolate and chocolate products, and that there was insufficient evidence to demonstrate that Lindt had acquired distinctiveness throughout the EU through use. The CJEU declined to substitute its own assessment of the facts for that of the General Court as this would go beyond the scope of a review by the CJEU in the context of an appeal.

Lindt had originally applied for registration as a CTM in 2004 but the application was rejected; the sign was held to be devoid of distinctive character in the EU and had not acquired distinctive character through use (the original evidence of use submitted related to Germany only). The applicant's appeal to the Fourth Board of Appeal was subsequently dismissed. It was held that none of the elements which constituted the mark for which application was sought (namely, the shape, gold foil and red ribbon with bell) considered separately or as a whole, could give the mark distinctive character. Further an examination of the documents submitted supported the decision of the OHIM examiner; the documents detailed use in relation to Germany only, not use throughout the EU. Lindt appealed to the General Court.

The General Court considered all three of the elements of the mark and concluded that (i) the shape could be considered typical for chocolate rabbits and was therefore devoid of distinctive character; (ii) gold foil wrapping was not unique to the shape of the rabbit in question; and (iii) it is common to decorate chocolate animals or their wrappings with bows, ribbons and bells and, therefore, that ribbons and small bells were common elements in the case of chocolate animals. It was common knowledge according to the Court that chocolate rabbits, which are often sold at Easter, were not unknown outside Germany.

As Lindt already had registrations for the mark in 15 national member states of the EU, it argued that (logically) the mark must be distinctive in those member states, in addition to the 3 member states in which it had acquired distinctiveness (Germany, Austria and the UK) and that this represented over 75% of the population (i.e. most) of the EU. On appeal to the CJEU, the Court held that the General Court had followed the correct procedure for assessing distinctiveness, carrying out an evaluation of current practices in industry and the perception of the average consumer. The CJEU agreed with the General Court that registrations for the same mark already made in national registers of Member States are only one factor which may be taken into account in connection with the registration of a CTM, and that OHIM was under no obligation to follow the assessment of competent national authorities.

The CJEU confirmed that a mark can be registered under Article 7(3) only if evidence is provided that it has acquired, through the use which has been made of it, distinctive character in that part of the EU in which it did not have inherent distinctiveness from the outset.

The fundamental issue in this long running case is the extent of evidence of acquired distinctiveness which is necessary to obtain registration as a CTM of a mark which is not inherently distinctive in all member states (bearing in mind that existing national registrations may carry little weight in assessing inherent distinctiveness). The CJEU emphasised that in order to be registrable the mark must be distinctive (either inherently or acquired) throughout the EU. It would now be a brave applicant who did not recognise this as meaning distinctive in every member state. The burden of proving acquired distinctiveness across 27 member states is of course enormous and a careful assessment should be made before relying on a CTM application for protection of a non traditional mark (e.g. colour, shape, or get up) or mark with limited distinctiveness. An International registration (IR) designating individual Member States where distinctiveness is inherent or can clearly be established through evidence may be a preferable route, and it is of note that the Lindt "Gold Bunny" trade mark is protected as an IR in the UK on the basis of compelling evidence of acquired distinctiveness.

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