In terms of the South African Trade Marks Act, a shape is capable of registration as a trade mark, provided that the shape meets the same criteria for registrability as any other trade mark, namely, the mark “shall be capable of distinguishing the goods or services of a person in respect of which it is registered or proposed to be registered from the goods or services of another person...”. In order to qualify for registration, a shape trade mark must be either inherently capable of distinguishing, alternatively, the mark must have acquired distinctiveness through use.

In an appeal against a decision of the Registrar of Trade Marks, the full bench of the Transvaal Provincial Division of the High Court dealt with the registrability of shapes in Weber-Stephen Products Co v Registrar of Trade Marks 1994 (3) SA 611 (T).

Section 2(3)(a) of the 1963 Trade Marks Act indicated that a trade mark is a mark used or proposed to be used in relation to goods and provided that references in the Act to the use of a mark in relation to goods are to be construed as references to the use of a mark upon, or in physical or other relation to, goods. The Court held that it followed from that requirement that a mark had to be something different from the thing marked. The shape, if applied to the product, could not be the shape of the product. Therefore, the appellant could not, under the aegis of trade mark protection, seek monopolistic rights in its design of the shape of its product, no matter how distinctive that might be.

The 1963 Act was replaced by the 1993 Act but the provisions of Section 2(3)(a) were carried over into the later Act. As a result, it may follow that the same interpretation applies, in which case the shapes of products cannot be registered as trade marks in respect of the products themselves.

However, the Act does provide for the registration of containers as trade marks, although they would, in effect, be registered as shapes applied to their contents and not for the shapes of the containers.

In the case of Die Bergkelder Bpk v Vredendal Koop Wynmakery and Other 2006 4 SA 275 (SCA), although the court was faced with an assessment of the distinctiveness of a shape of a container and not a shape per se, the Supreme Court of Appeal held that the average consumer is less likely to view a non-traditional trade mark, such as a shape, as a “source identifier”. Accordingly, in general, shape trade marks are not likely to fulfil a distinguishing function or be capable of registration.

Of course, South African law is not applicable internationally and shapes have been registered as trade marks in various countries. In seeking registration, it is advisable to keep comprehensive evidence of use to try to establish distinctiveness because trade mark offices will often require proof of distinctiveness.

However, even if a proprietor is able to establish that a mark has been used on a substantial scale, this use does not necessarily prove distinctiveness, as emphasised by Jacobs J in British Sugar plc v James Robertson & Sons Ltd case (1996) RPC 281 (ChD) 302 and adopted by the Supreme Court of Appeal in the Beecham Group plc case (2002) 4 All SA 193 (SCA). In other words, voluminous evidence of use submitted in support of a non-distinctive mark will not necessarily be of assistance where the mark, by its nature, can never serve a distinguishing function.

Against this background, judgment was recently handed down in the case of Chocoladefabriken Lindt & Sprüngli AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs)(C-98/11 P)(24 May 2012) by the Fourth Chamber of the European Court of Justice. The court’s judgment, which contains a synopsis of the earlier court’s findings, illustrates some of the difficulties faced by proprietors in securing trade mark protection for their shapes in Europe.

Chocoladefabriken Lindt & Sprüngli AG (“Lindt”) had filed an application with OHIM (Office for Harmonisation in the Internal Market) for registration of its three dimensional chocolate rabbit, often referred to as “the Lindt bunny”, as a European community trade mark in class 30 in respect of “Chocolate and chocolate products’. A depiction of the Lindt bunny is set out below.

Click here to see bunny.

OHIM considered that the features of the mark are the shape, the gold foil and the red ribbon with a bell. It rejected the application for registration of the community trade mark on the basis that, first, the individual features of the mark and the mark as a whole were devoid of distinctive character and, second, Lindt had not shown that the mark had acquired distinctive character through use throughout the whole of the European Union having lodged evidence only in respect of Germany.

In 2005, Lindt filed an appeal with OHIM against the examiner’s decision. The Appeal was dismissed on the basis that the mark was devoid of any distinctive character. It was held that “rabbits are one of the typical shapes which chocolate products may take, especially at Easter”. The Appeal Board further confirmed the examiner’s finding that the mark had not acquired distinctiveness through use, in light of the fact that all the evidence of use presented to OHIM had been in respect of use in Germany.

An application against OHIM’s decision was subsequently lodged by Lindt with the General Court Registry (the second highest court in the EU) in August 2008. In essence, the court found that the elements that make up the Lindt bunny shape are “not sufficiently different from those of the basic shapes commonly used for wrappers for chocolate and chocolate products and, more specifically, chocolate rabbits”. Furthermore, the court held that the bow and the elements that are painted on the bunny, such as its eyes and paws, do not render the bunny distinctive but, rather, are ordinary elements that many chocolate rabbit shapes may exhibit. The court also held that there was no concrete evidence that the Lindt bunny had acquired distinctiveness through use, due to Lindt’s failure to show evidence of distinctiveness of the bunny shape throughout the European Union as a whole. Accordingly, the General Court dismissed Lindt’s appeal.

Lindt thereafter asked the European Court of Justice to reconsider the court a quo’s conclusion that the Lindt bunny was devoid of any distinctive character.

Lindt argued that the court’s earlier judgment had contained conclusions and assessments that were based upon mere conjecture. In this regard, Lindt argued that it was mere conjecture that rabbits are one of the typical shapes that chocolates and chocolate products take. It was further argued that the court’s conclusion that use of gold foil for chocolate Easter bunnies is usual in the market also amounted to conjecture. Lindt also submitted the argument that the Lindt bunny shape had been registered in 15 member states, which served as further evidence of its distinctiveness.

OHIM, in response, argued that Lindt’s appeal was based largely on contentions of fact, including whether the shape of a rabbit in gold foil is a common shape in the industry or not. As an appeal is restricted to points of law, OHIM submitted that Lindt’s arguments were inadmissible and that the appeal should be dismissed.

When the court handed down its judgment, it confirmed the principle that “only a mark which departs significantly from the norm or customs of the industry is not devoid of distinctive character for purposes of registration”. The court also held that the General Court had carried out a proper analysis of industry norms and of the perception of the average consumer before arriving at its conclusions. The court also dismissed Lindt’s technical argument regarding the Lindt bunny’s acquired distinctiveness and confirmed that the mark had not acquired distinctiveness throughout the whole of the European Union.

The court also held, with regard to Lindt’s criticism of the finding of the earlier court that the shape of the Lindt bunny and gold wrapping are common in the industry, that it was essentially being asked to substitute the General Court’s assessment of the facts with its own, which went beyond the scope of the court’s powers on appeal. As far as Lindt’s allegation that the mark was distinctive because it had already been registered in 15 member states is concerned, OHIM was under no obligation to follow the assessments of national authorities.

Whilst South African trade mark law contains its own provisions relating to registration, the difficulties faced by Lindt in the European Union serve as a guide to the potential problems in securing registration for shape marks in South Africa. If a mark is unable to meet the registrability requirements laid down by the Act, no amount of use will assist in securing registration.