In recent decisions by the EU General Court, it has been held that the three dimensional shapes of rabbits, reindeer and mice lack distinctive character under Article 7(1)(b) of the Community Trade Mark Regulation (40/94/EEC, now replaced by 207/2009/EC) for chocolate goods and therefore cannot be registered as Community trade marks.

Between February 2004 and November 2005, Chocoladefabriken Lindt & Sprüngli ("Lindt") filed Community trade mark applications with The Office for Harmonisation in the Internal Market ("OHIM") for three dimensional shapes in respect of chocolate goods including the shape of a chocolate rabbit in the colours red, gold and brown with a red ribbon; the shape of a chocolate reindeer in the colours red, gold and brown with a red ribbon; and the shape of a small bell with a red ribbon.

At a similar time, chocolatier August Storck KG ("Storck") applied for a registered trade mark with OHIM for its rectangular block with the shape of a mouse on top for chocolate goods.

OHIM dismissed those applications for registration, particularly on the ground that the trade marks were devoid of any distinctive character. Lindt and Storck brought actions against the decisions of OHIM before the EU General Court.

The EU General Court confirmed that the distinctive character of a trade mark means that the trade mark in question allows the goods for which registration is sought to be identified as originating from a particular undertaking and therefore to distinguish those goods from those of other undertakings.

In respect of the trade mark applications by Lindt and Storck, the EU General Court held that there was no distinctive feature of the chocolate animals to allow a consumer to identify the commercial origin of the goods as being from Lindt or Storck. In a statement, the EU General Court stated: "The lack of distinctive character results in particular from the fact that the consumer will not be able to ascertain the commercial origin of the goods designated on the basis of the various elements making up the marks applied for, namely the shape, the gold wrapping or the red ribbon – for the marks applied for by Lindt & Sprüngli – and the shape and colour of the mark applied for by Storck."

The EU General Court held that animal shapes are common shapes for chocolate goods and as such are not sufficiently distinctive to warrant the protection of registered trade marks: "A rabbit, a reindeer and a small bell are typical shapes in which chocolate and chocolate goods are presented at certain times of the year, in particular at Easter and Christmas."

The EU General Court then went on to explain that neither the packaging nor the decoration of the chocolate animal with a ribbon are distinctive: "The General Court notes next that, in the sector of packaging of chocolate and chocolate goods, other undertakings wrap those goods in gold foil. Finally, with regard to the red ribbon with a small bell, the General Court states that it is common to decorate chocolate animals or their wrapping with knots, red ribbons and small bells. As mere decoration, the red ribbon with a small bell therefore has no distinctive character."

With regards to the trade mark applied for by Storck, the EU General Court stated that "it is made up of a combination of standard presentation elements, typical of the goods concerned. It seems to be a variation of the basic shapes commonly used in the confectionery sector and does not significantly differ from the norm or the conventions of that sector. Therefore, it does not allow Storck’s confectionery to be distinguished from that with a different commercial origin."

The EU General Court's conclusion, in respect of Lindt and Storck's trade marks, was that none of the elements of the trade marks, whether taken separately or together, could confer any distinctive character for the goods in question and therefore the EU General Court could not grant registered trade mark protection for the trade marks.

Could this signal a population explosion in chocolate bunnies for sale this Easter?