In the post below IPcopy takes a quick look at some recent decisions in the world of chocolate and other types of confectionary on the topic of colour and 3D trade marks. The overview highlights some trends in EU jurisprudence on the distinctiveness requirement for the registrability and enforceability of such marks. Get ready to read about chocolate bunnies, jelly bears and many more.

The war of the golden bunnies

Lindt’s chocolate bunny has seen plenty of action in court with no less than three different cases to look at: one in Germany, one in Austria and one at the CJEU. In each case Lindt was involved though the opposing party changed.

In Germany, a 12 year battle (!) between Swiss chocolate manufacturer, Lindt, and a German competitor, Riegelein, over the scope of protection of Lindt’s 3-dimensional bunny shaped trade mark has come to a final decision. Would different colours of ribbon and differing expressions on the two chocolate bunnies at the centre of the argument be sufficient to avoid any confusion?

Well as it turns out, the Swiss chocolate company has suffered a major setback at the hands of their German competitor, with German judges finding that Lindt can not protect its bunny-shaped chocolate under trade mark law. Lindt argued a likelihood of confusion between its chocolate bunny and that of its competitor. The German company Riegelein replied by saying that Lindt had not invented chocolate bunnies. German judges considered that the shape of the Lindt bunny was traditional and was not sufficiently distinctive to be registered as a trade mark. This decision came as a blow for Lindt and is in contrast with a favourable decision obtained by the company in 2012 in respect of an Austrian competitor in a similar case in a case in Austria.

Lindt’s bunny offensive has also reached the highest Court in Europe. In 2012, the Court of Justice of the European Union (CJEU) had to decide whether the Easter bunny shape was devoid of distinctive character. The bunny was found to have inherent distinctiveness in all of the EU except Germany. Whilst OHIM and the Appeal Tribunal had refused the application because the mark was not considered distinctive in all countries – the European Court of Justice considered that it was unreasonable to require evidence of distinctiveness to be provided in each EU country because a Community Trade Mark has a unitary character. Nevertheless, the applicant failed to provide sufficient proof of acquired distinctive character through use in the EU and the CJEU decided against Lindt. It was considered that the shape of a sitting bunny is typical for chocolate products, particularly during Easter time.

Jelly bear wins court battle

Lindt has also been sued by Haribo, who claimed that Lindt’s chocolate golden bear was too similar to their famous jelly bear. Whilst Lindt tried to argue that a bear is a bear, the German court decided against the company, finding that Lindt’s chocolate bears inevitably had similar characteristics of Haribo’s bears.

The Court of Justice refused protection for the shape of a chocolate mouse

In the ‘August Storck v OHIM’ case (C-96/11 P) in 2012, the CJEU dismissed Storck’s appeal, confirming the General Court’s earlier decision and OHIM’s previous refusal to register the three-dimensional shape of a chocolate mouse as a Community Trade Mark.

Sarment du Medoc and Kit-Kat: a form of chocolate distinctiveness

The failures and difficulties described above in obtaining trade mark protection for bunny and mouse shapes should not make us believe that it is impossible to register a chocolate shape as a mark. And, in fact, the Sarment du Medoc case has shown the contrary. Three-dimensional marks for chocolate shapes do exist but it is usually required that the shape of the product is sufficiently far from that of competitors to be capable of satisfying the requirement for distinctiveness of a trade mark. On this basis, the French Supreme Court held in 2010 that Sarment du Medoc could prevent competitors from copying their characteristic shape. The Court considered that the shape of the mark filed ‘is characterised by a certain finesse, significant elaborate features and the chocolate colour on the entire branch’ and ‘no chocolate product has a fine shape, short, twisted, suggestive of a vine shoot and coated with chocolate on its entire surface’. So, a chocolate shape was recognised as having a specific distinctive shape, but this time not as an animal but as chocolate twigs, Sarment du Medoc.

Nestlé & Cadbury

Is the form of the Nestlé Kit-Kat bar distinctive? OHIM’s Board of Appeal said “yes” in a decision in December 2012 but the UKIPO said “no” in a more recent decision in June 2013. The two cases (which both involved Cadbury) took slightly different approaches in assessing Nestlé’s Kit-Kat bar shape with OHIM finding that there was acquired distinctiveness and the UKIPO deciding that the shape mark was only present to achieve a technical purpose (i.e. to break up the bar!). An interesting divergence of opinion which leaves Nestlé without a UK trade mark for the Kit-Kat shape but with a Community Trade Mark, which obviously covers the UK!

Nestlé and Cadbury have also been in court in the UK over Cadbury’s registration of the colour purple (more specifically the purple defined by Pantone 2685C). In a case that has gone back and forth a couple of times Cadbury has, of course, recently lost in the UK’s Court of Appeal.

KitKat Pop Choc v Maltesers: ball shapes are not similar

Chocolate ball shapes are not by themselves distinctive, but they could be enforced when the word mark is copied. The Swiss Supreme Court found that the KitKat Pop Choc was not likely to cause confusion with the look of Maltesers.

Moreover, in a Belgian case from 2009, the Court held that Maltesers used a combination of elements which are often found in relation to sweets and, accordingly, there was a lack of distinctiveness. Maltersers had not acquired distinctiveness through use because the trade mark merely comprised balls presented on a red packaging and this was always used in combination with the word ‘Maltesers’.

[ipcopymark: an interesting snap shot of the “Chocolate wars” from Amélie there. I can’t quite believe that some of these cases have been rumbling on for 12 years! In our house the life expectancy of a chocolate bunny is more likely 12 minutes!”]

Amélie Gérard   22 October 2013