Community trademarks may consist of any signs capable of being represented graphically, for example, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. In theory, the criteria for assessing the distinctive character of three-dimensional marks consisting of the shape of the product itself are no different from those applicable to other categories of trademarks. However, many applicants fail to meet the requirements for the registrability of shape marks, set by case law, as did Lindt & Sprüngli. The European General Court has upheld decisions of the Office for Harmonization in the Internal Market (OHIM – the European Union’s trademark office) refusing applications for three-dimensional marks due to lack of distinctiveness.1
It is possible to overcome a refusal based on lack of distinctiveness by showing that the mark has acquired distinctive character in consequence of the use of that mark made before the application date.
The Lindt & Sprüngli case teaches, first and foremost, that a carefully thought through and implemented strategy is necessary to educate the public that the shape or color of a particular product functions as a trademark. Second, at least in connection with Europe-wide community trademarks, the distinctive character acquired in consequence of the use of that mark must be demonstrated in a substantial part of the European Union.
Between February 2004 and November 2005, Lindt & Sprüngli applied to register the following three-dimensional marks as community trademarks for chocolate and chocolate products in international class 30:
- the shape of a chocolate rabbit with red ribbon2;
- the shape of a chocolate reindeer3;
- the shape of a chocolate rabbit without red ribbon4; and
- the shape of a small bell with a red ribbon5.
These shape marks did not bear the Lindt logo mark on their packaging. Lindt & Sprüngli is proprietor of a community trademark registration for its chocolate rabbit with a red ribbon which, contrary to the cases decided by the General Court, includes the Lindt mark on its foil wrapping.6
As to the above shape marks, i.e., without the Lindt identifier, the General Court dismissed Lindt & Sprüngli’s argument that the combination of the shape of the rabbit and reindeer with the red ribbon and the color of the packaging enabled the public to identify the commercial origin of the chocolate products. In referring to well-established case law, it held that the perception of the average consumer is not necessarily the same as with regard to word or figurative marks whose subject matter is unrelated to the appearance of the product it designates. The average consumer is not in the habit of making assumptions as to the origin of products based on their shape in the absence of any graphic or word element, and it may thus be difficult to establish the distinctiveness of such a shape mark.7
Case law further suggests that, with regard to marks consisting of a shape of a product or its packaging, the norm or custom in the business sector at issue is the relevant area for assessing the distinctiveness of the mark. Subsequently, only those packaging shapes that “significantly depart” from the normal custom in the sector in question have a distinctive character.8
Lindt & Sprüngli failed to prove such distinctiveness. The General Court found the shapes of a chocolate rabbit, a reindeer and a small bell with a ribbon not to be distinctive because this form of chocolate packaging was already in general use in the European Union. It therefore concluded that the shape of the rabbit and reindeer were not unusual enough to distinguish them as indication of the specific commercial origin of chocolate products in this sector. Finally, with regard to the red ribbon with a small bell, the General Court stated that it was common to decorate chocolate animals or their wrapping with knots, red ribbons and small bells. As a mere decoration, the red ribbon with a small bell had, in the court’s view, no distinctive character.
It is possible to overcome a refusal based on lack of distinctiveness by showing that the mark has acquired distinctive character in consequence of the use of that mark made before the application date. This will, however, in many cases be difficult and costly to prove. In the case at hand, the court held that in order for a mark to be accepted the distinctive character acquired in consequence of the use of that mark must be demonstrated in a substantial part of the European Union where it was devoid of any such character. It dismissed the argument that the shapes were not known beyond the geographical scope of Germany, Austria and the UK and that it was thus sufficient to prove acquired distinctiveness in these European Union countries only. It therefore dismissed this motion. A note of caution: the evidence must show that the shape mark has been used and is perceived by consumers as indicating origin and not, for instance, as simply an indication of the product in question.
Applicants who wish to register a mark consisting of a shape of a product or its packaging are well advised to choose a “radical” new shape for the product. The more the shape differs from the norm and custom of the business sector, the more likely the European trademark authorities will consider the mark as inherently registrable. In this scenario, trademark applications are best filed before the product launch. The potential downside of this approach is that the applicant will be unable to produce any evidence of acquired distinctiveness before the application date in case the examiner objects to the registration. In any event, to be able to claim acquired distinctiveness through use the applicant of a community trademark will have to significantly invest in marketing the product. Only if consumers are able to perceive the shape as an indication of origin will the applicant be able to overcome an objection of lack of distinctiveness based on the mark’s use. Moreover, acquired distinctiveness must be shown in a substantial part of the European Union. What accounts as a substantial part is often unclear, and the case law appears inconsistent in this respect. After all, if trademark protection is too difficult to achieve, registered designs remain the most appropriate means of protecting product shapes within Europe.