Golden bunny killed in EU court

The European Court of Justice had to finally decide that the shape of a chocolate bunny with a red ribbon can not be registered as a Community trade mark. The reason is that this form is not distinctive in itself and has not acquired distinctiveness.

A trademark is a sign that is suitable to distinguish products or services (and susceptible of graphic representation). It may concern a multitude of signs such as sound, colors but also three-dimensional shapes.

You can protect quite a lot as a trade mark but not everything. The boundary lies among others where the nature of the goods and / or to the substantial value of the goods are concerned (see eg the Lego case where the European Court has denied trade mark protection on the building brick). To be able to serve as a trade mark the shape must be perceived as a trade mark by the public.

This case concerns a lingering dispute about the - in the Netherlands in our view well-known - gold paper wrapped Lindt bunnies. The red ribbon has not saved the bunny. According to the highest European court, the European trade mark office (OHIM) has in the past rightly refused to register the three-dimensional shape.

Criterion

The distinctiveness of a mark must be assessed in relation to the goods or services for which registration is sought. It should be based on the perception of the relevant public.

In this case, both the usual practices in the industry and the perception of the product by the average consumer have to be taken into account. The Court held that in this case there is no sufficient distinctive power.

Distinctive acquired through the use?

In principle, a shape that is as such not perceived as a trade mark, may eventually legally still become a 'trade mark' as well by its use.

The appealing bunny which is to some degree well-known in the Netherlands was not rescued from the legal collapse. Lindt has not been able to substantiate that the animal had acquired distinctive character through the use throughout the whole territory of the Union.

In practice, European brands will thus not easily acquire distinctiveness through the use. This underlines the importance of local trade mark registrations, eg in the Benelux, in addition to registration of a European Community trade mark.

Has the court killed the golden bunny?

Under EU trademark law yes.

But Lindt may on other grounds (such as copyright or slavish imitation/passing off) still come pretty far in its endeavours to protect its design against counterfeit. And if the Lindt bunny with ribbon has been registered as a model, that right can also be used.

The scope of protection, however, varies per country and per legal framework.

You may find the judgement here (EU Court of Justice, 24 May 2012, Lindt & Sprüngli vs OHIM).



publicatiedatum: Friday, June 01, 2012