Judgment of 10 May 2016 in Case T‑806/14 August Storck KG v EUIPO

In 2013, August Storck KG filed an International Registration designating the European Union to protect the following packaging design as a trade mark:

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The application covered “confectionery, chocolate, chocolate products, pastries, ice-cream, preparations for making the aforementioned products” in class 30.

The General Court confirmed the EUIPO’s finding that such packaging design is insufficient to identify the origin of the goods and that it was therefore not capable of registration based on lack of distinctive character according to Article 7(1)(b) of Regulation No 207/2009 (the EUTMR).

According to the applicant, the EUIPO wrongly assumed that the mark applied for was a three-dimensional mark and not a figurative mark. The applicant also claimed that colours are generally of great importance in the confectionery sector and that the image featured on the packaging represents snow-covered hills against a blue sky which endows the packaging with distinctive character. The applicant also argued that the average consumers of confectionery and chocolate products have a high level of attention given that the goods are purchased and consumed for pleasure and are likely to have an impact on their health.

The General Court was not convinced by these arguments and found that the goods concerned are inexpensive, everyday consumer goods, generally sold in supermarkets, and purchased without much reflection and concluded that the level of attention is therefore low. It also confirmed the well-established case law that when a figurative mark consists of a two-dimensional representation of the goods or their packaging, the case law relating to three-dimensional trade marks and the shape of goods will apply. As regards the importance of colours in the confectionery sector, the General Court upheld the Board of Appeal’s finding that the colours used are ordinary and common and will therefore be perceived as being aesthetic or presentational elements only. The General Court also confirmed the Board of Appeal’s view that the alleged representation of snow-covered hills against a blue sky would more likely be seen by consumers as a simple decorative pattern consisting of a curved diagonal line and not as an indication of origin. Finally, the General Court endorsed the Board of Appeal’s finding that basic geometrical forms, such as squares or rectangles, are obvious for a packet of chocolate or of a similar candy bar and that it was therefore entitled to consider the shape of the mark applied for evidently essential for the goods concerned.

In light of the overall impression conveyed by the combination of the shape, colours and graphic element of which the mark applied for consists, the General Court confirmed that the EUIPO was entitled to refuse it registration on the basis that it is devoid of any distinctive character for the goods concerned.

Whilst not unexpected in light of previous case law, the Court’s conclusions are, unfortunately, at odds with market reality and research which confirms that colour, in particular, is a key driver of consumer purchasing of FMCG goods, and that similarity of colour is the number one reason given by shoppers for why they perceive packaging to be similar[1].

The protection of a product’s distinctive trade dress via trade marks is extremely important for Fast Moving Consumer Goods brand owners to fight the well-established problem of parasitic copying and lookalike products, especially in those member states where unfair competition law is relatively narrowly construed. This case sadly shows that achieving trade mark registrations for stripped-out packaging is increasingly difficult, and that brand owners will need to turn to other intellectual property mechanisms, such as design protection, to protect their rights.