Chocolate rabbits with red ribbon wrapping not Community trade mark protectable, ECJ rules

The ECJ said that the shape is "devoid of any distinctive character."

Confectionery company Lindt & Sprüngli (Lindt) had tried to register the "3D sign representing the shape of a chocolate rabbit with a red ribbon" as a Community trade mark in 2004, but its application was rejected. The Office for Harmonisation in the Internal Market refused the request on the basis that it was a shape devoid of any distinctive character, and in 2010 that finding was upheld on appeal to the EU's General Court.

Lindt's appeal to the ECJ, the EU's highest court, has now also been rejected on the same grounds.

"The distinctiveness of the mark must be assessed, first, by reference to the goods or services for which registration is sought and, secondly, by reference to the perception of the relevant public," a statement by the ECJ said. "In that regard, the Court rules that the General Court correctly identified and applied those criteria by carrying out an evaluation both of current practices in the industry and the perception of the average consumer."

"As regards the acquisition of distinctive character through use of the mark applied for, the Court confirms the reasoning of the General Court which found that Lindt had not proved that distinctive character had been acquired through use across the EU," it said.

Trade marks allow companies to stop rivals using certain features of products or logos to protect their ability to identify products as coming from that company rather than another company.

The ECJ confirmed the General Court's view that it could not offer trade mark protection for Lindt's product as a whole because it consisted of elements which were not unique to it. The General Court had said that many chocolate makers create bunnies, reindeer and other animals and often wrap them in foil and adorn them with ribbons.

Lindt has been in trade mark dispute over its chocolate bunnies in the past. It began selling them in Austria in 1994 and in 2000 registered the whole foil-covered bunny as a trade mark there.

Austrian chocolate maker Franz Hauswirth had been selling bunnies there since the 1960s and the ECJ was previously asked if by registering a trade mark for a product that had been sold for many decades in that market, Lindt had automatically acted in 'bad faith', which would in turn invalidate the trade mark.

The ECJ said that it could not precisely define bad faith and that it was up to national courts with the facts at their disposal to rule in particular cases whether there had been a registration in bad faith or not.

Under the EU's Trade Mark Directive and Community Trade Mark Regulations, trade mark owners can prevent competitors from "using in the course of trade any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered" without their consent.

The Directive also permits EU member states to draw up national laws giving extra protection to trade mark owners who possess a reputation in that country if others' use of similar or identical signs for similar or identical purposes "without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark".

In the UK, trade mark protection can be obtained by registering signs with the Trade Marks Registry at the UK's Intellectual Property Office. Under the Trade Marks Act "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings" can be registered subject to certain conditions. The Act states that marks cannot be registered if they are "devoid of any distinctive character" or if an application is made in "bad faith".

In the UK mark owners may also obtain 'goodwill' rights to unregistered marks giving them legal protection under the laws of 'passing off'. If mark owners can prove that their use of a trade mark has established 'goodwill' in the business associated with that trade mark protection to that mark may apply. Goodwill relating to a trade mark is essentially the benefit or value a business owner receives from using that mark. If another trader 'passes off' their services as being those of mark owners and appear to claim that their services are theirs or that they are in some way connected or have been endorsed, then mark owners can take action.