Background

The chocolate maker, Lindt, has attempted to use its Community trade mark relating to the gold-foil wrapped 'Goldhase' chocolate bunny to prevent competitors producing similar products in a series of cases taking place in Germany, Poland and Austria. This has culminated in the Austrian court making a reference to the European Court of Justice (ECJ) for a preliminary ruling on the issue, which is expected about a year from now.

The Austrian Case

Lindt originally took the Austrian chocolate maker Franz Hausworth GmbH (Hausworth) to the Austrian court in 2006, alleging that the rival company, also selling chocolate Easter bunnies wrapped in gold foil with red ribbons round their necks had infringed Lindt's Community trade mark. Hausworth rejected the suggestion of Lindt's lawyers that its competing bunnies adopt bronze wrapping instead of gold and green instead of red ribbons around their necks.

Lindt's Community trade mark was registered in 2000, although Lindt has been producing the bunnies for approximately 50 years. Hausworth has been producing chocolate bunnies since the 1960s, although Lindt has stated that although it was aware of competitors, it was not aware of Hausworth's similar product until 2003, when it came to the Lindt's attention at a trade fair in Switzerland.

Making its case before a five judge panel at the ECJ, Hausworth argued that Lindt's Community trade mark should be cancelled as it was registered in 'bad faith', for the sole reason of blocking competitors from making similar products. Lindt's lawyer on the other hand argued that Hausworth's bunnies are confusingly similar to its own, adding that "We don't go for all the bunnies on the market, but we do when the overall appearance and image is so close to ours".

The ECJ now has a choice whether to cancel Lindt's Community trade mark on the grounds that the application was made in 'bad faith', or whether to uphold the trade mark or to force competitors to change the look of their products.

Comment

The ECJ's decision is likely to have a significant impact on the protection offered to 'three-dimensional' trade marks in Europe. Lindt's Community trade mark has been registered in relation to the 3-D shape, name and colour of the ribbon around the rabbit's neck.

The Community Trade Mark Regulations 1996 provide that any signs capable of being represented graphically are eligible for trade mark protection, provided that such signs are capable of distinguishing the goods or services of one undertaking from another. The shape or packaging of the goods is specifically referred to as a possible trade mark, although a 3-D trade mark cannot be registered if the shape is determined by the nature of the goods, a technical function of the product, or a means of adding substantial value to goods.

In Rieglien, another case involving the Lindt chocolate bunny, the German Federal Supreme Court stated that the shape and colour must be taken account of when forming an overall impression when assessing the similarity of particular goods. The Lindt bunny's sitting rabbit shape, golden colour and red collar with a ribbon and bell provided a high degree of distinctiveness to the 3-D trade mark as well as the word element "Lindt Goldhase" printed on the side.

The ECJ has thus far been reluctant to grant trade mark protection to 3-D shapes without taking into consideration logos and other features. Allowing one owner to 'monopolise' a particular shape would impair competition and cause a disadvantage to consumers. However, if the ECJ adopts a similar approach to the German Supreme Court, 3-D trade marks look set to become a more important form of trade mark.