In a judgment delivered on 24 May 2012, the Court of Justice of the European Union (the “ECJ”) confirmed a judgment of the General Court of the European Union (the “GC”) that the shape of Lindt’s chocolate rabbit figures cannot be registered as a Community trade mark (“CTM”).
In an earlier edition of this Newsletter, we reported on the attempted registration by Chocoladefabriken Lindt & Sprüngli AG (“Lindt”) to register the shape of its chocolate rabbit figures as a trade mark in Austria (See VBB on Belgian Business Law, Volume 2009, No. 6, p. 9, available at www.vbb.com). In addition, the chocolate manufacturer also sought to protect the shape of the chocolate rabbits wrapped in golden foil with red ribbon and a bell around their necks as a CTM with the Office for Harmonization in the Internal Market (the “OHIM”). The OHIM dismissed the application on 11 June 2008, holding that the chocolate rabbit figures did not have sufficient distinctive character. Upon appeal brought by Lindt before the GC, the GC held that the OHIM had not erred in law in its decision (See VBB on Belgian Business Law, Volume 2010, No. 12, p. 13, available at www.vbb.com).
Lindt further appealed this judgment to the ECJ. According to Lindt, the GC incorrectly found that rabbit shapes and gold foil correspond with the norms and customs of the relevant industry. Moreover, Lindt argued that the fact that the shape at issue is validly registered as a trade mark in 15 EU Member States supports the distinctive character of the trade mark. Finally, Lindt argued that the GC was wrong to decide that the trade mark at issue must have obtained distinctive character through use in all EU Member states in order to qualify for registration as a result of the use which has been made of it.
The ECJ upheld the GC’s decision with regard to its appreciation of the norms and customs of the relevant industry. The ECJ held that it cannot be asked to review the GC’s assessment of the facts at hand. According to the ECJ, such request does not fall within the scope of a review by the ECJ in the framework of an appeal. Further, the ECJ pointed out that the OHIM has to assess a CTM application on the basis of the relevant EU rules and, as a result, is not bound by the assessments made by the competent national authorities with regard to the registration of a national trade mark.
Finally, the ECJ addressed the issue of acquired distinctive character through use and confirmed the GC’s reasoning that Lindt had not demonstrated that its trade mark had acquired distinctive character through use throughout the EU. The ECJ thus refused to grant CTM protection to Lindt’s rabbit-shaped chocolates.
