August Storck KG v OHIM, Case C-96/11
On 6 September 2012, the Court of Justice of the European Union ("CJEU") rejected an appeal and confirmed that there could be no registration for a 3D mark consisting of a block with the bas-relief shape of a chocolate mouse on the top.
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The most interesting ground of appeal was that the General Court had incorrectly applied Article 7(1)(b) of Regulation No 40/94 (now replaced by Regulation No 207/09) and therefore wrongly concluded that the mark applied for lacked distinctive character.
Storck argued that, because the mark had a graphical element in the form of a mouse in bas-relief, it should have been assessed using the case law applicable to figurative marks and the General Court was wrong to apply the case law on 3D marks without graphical elements or word elements.
The Court disagreed and emphasised that the evaluation for distinctive character is always whether the mark is able to identify the trade origin of the product or its services and distinguish it from others. This evaluation is no different from the criteria used for other categories of mark, although the average consumer would generally find it easier to identify the origin of a 3D mark, which included an independent distinctive verbal or graphical sign.
Where a 3D mark features a figurative element which is not an independent sign but simply decorative, that mark need not be assessed using the approach appropriate to verbal or figurative marks which are independently distinctive. In this case, the General Court had found that figurative elements on chocolate products in the confectionary market were likely to be considered decorative so it was correct to apply the case-law on pure shape marks and find a lack of overall distinctiveness in the mark.
Although the Court confirmed that the same criterion for distinctive character applies to all categories of trade mark, the case law has shown that it is easier to satisfy this for some types of marks than others. Shapes incorporating independent signs are more likely to fulfil the criterion than marks which do not. 3D marks that include decorative figurative elements but do not include independent distinctive signs will need to be significantly distinct from the norm within the given sector if they are to be registrable.