Chocolate bunnies not distinctive enough for trade mark protection, rules EU court

Chocoladefabriken Lindt & Sprüngli (Lindt) makes chocolate rabbits which are wrapped in gold foil and have a bell around their necks, held there by red ribbon. It also makes reindeers wrapped in a similar way.

The company sought to have the whole shape of the rabbit, plus their colours and the bell and ribbon registered as trade marks. The Office for Harmonisation in the Internal Market (OHIM) refused the application and Lindt appealed to the EU's General Court.

It has said that the rabbits are not distinctive enough to deserve trade mark protection because many chocolate makers create bunnies, reindeers and other animals and often wrap them in foil and adorn them with ribbons.

Rival chocolatier August Storck applied for similar protection for its rectangular chocolate blocks featuring mouse in relief.

There was nothing about the particular products that was so distinctive that it would allow a consumer to identify the confectionery as Lindt's or Storck's, the Court said.

"In the present cases, the marks applied for cannot be considered to be capable of identifying the commercial origin of the goods that they designate," said a Court statement. The ruling is not yet available in English.

"The lack of distinctive character results in particular from the fact that the consumer will not be able to ascertain the commercial origin of the goods designated on the basis of the various elements making up the marks applied for," it said.

"The General Court observes first of all that, concerning their shape, a rabbit, a reindeer and a small bell are typical shapes in which chocolate and chocolate goods are presented at certain times of the year, in particular at Easter and Christmas," said the statement. "The General Court notes next that, in the sector of packaging of chocolate and chocolate goods, other undertakings wrap those goods in gold foil. Finally, with regard to the red ribbon with a small bell, the General Court states that it is common to decorate chocolate animals or their wrapping with knots, red ribbons and small bells. As mere decoration, the red ribbon with a small bell therefore has no distinctive character."

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 Court said that it could not offer trade mark protection for Lindt's products as a whole because it consisted of elements which were not unique to it. The same was true of Storck's mouse block, it said.

"With regard to the mark applied for by Storck, the General Court considers that it is made up of a combination of standard presentation elements, typical of the goods concerned," said the statement. "It seems to be a variation of the basic shapes commonly used in the confectionery sector and does not significantly differ from the norm or the conventions of that sector. Therefore, it does not allow Storck’s confectionery to be distinguished from that with a different commercial origin."

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 European Court of Justice (ECJ) was 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.