mardi, février 08, 2011

Germany: Court rules on naked chocolate Easter bunny

Court rules on naked chocolate Easter bunny

Contributed by Klinkert Zindel Partner



A recent Federal Patent Court judgment addressed the question of whether Lindt & Spruengli's 'naked' chocolate Easter bunny could be registered as a three-dimensional trademark for goods in Class 30.
(1)

Legal context

Section 3(2) of the Trademark Act states that signs shall not be eligible for protection as trademarks if they consist exclusively of a shape which:

  • results from the nature of the goods themselves;
  • is necessary to obtain a technical result; or
  • gives substantial value to the goods.

Section 8(2) of the act sets out the absolute grounds for refusal. It states that the following signs shall not be registered:

  • trademarks which are devoid of any distinctive character with respect to the goods or services; and
  • trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or rendering of the services, or to designate other characteristics of the goods or services.

Section 8(3) states that these restrictions on registrability shall not apply if:

"the trademark has, before the date of the decision on registration and following the use which has been made of it, established itself in affected trade circles as the distinguishing sign for the goods or services for which it has been filed."

Facts

In August 2003 Lindt applied to register the shape of its chocolate Easter bunny in the colour gold as a three-dimensional trademark for goods in Class 30 with the Patent and Trademark Office.

The sign was registered as a trademark in November 2003. Two years later, another chocolate manufacturer requested the Patent and Trademark Office to cancel the trademark, arguing that the shape of the Easter bunny had been induced by the mechanical production process, since the shape is particularly suitable for wrapping using a foil wrapping machine. As such, the rival manufacturer argued, the sign violated Section 3(2) of the act, since its shape was necessary to obtain a technical result. The rival manufacturer also argued that the sign further violated Section 3(2) in that it lacked distinctive character. Moreover, according to Section 8(2) of the act, the manufacturer argued that the sign was to be kept free for others to use, since were it not protected, the shape would be widely used.

In February 2008 the Patent and Trademark Office denied a violation of Section 3(2) of the act on the grounds that shape of the sign could not be considered to be necessary to obtain a technical result. However, it stated that the sign was not distinctive at time of its registration and therefore violated Section 8(2). In such circumstances, only a mark which departs significantly from the norms or customs of the sector – thereby fulfilling its essential function of indicating origin – has the requisite distinctiveness of character for the purposes of Section 8(2). Moreover, the Patent and Trademark Office affirmed a need for other traders to be able to use the sign.

Nevertheless, the Patent and Trademark Office held that due to its use in the course of trade, the sign had acquired a secondary meaning as a trademark within the relevant trade circles and therefore, according to Section 8(3), the aforementioned absolute grounds for refusal did not apply. This was evidenced by market research, which found that in 2006 approximately 74% of the German population associated the Easter bunny shape with Lindt. As a result, the Patent and Trademark Office refused the request for cancellation.

The plaintiff appealed to the Federal Patent Court.

Federal Patent Court ruling

In its February 25 2010 decision the Federal Patent Court confirmed the Patent and Trademark Office's ruling.

The court first held that there was no violation of Section 3(2), since finding such a violation would imply that the essential functional features of a product's shape were attributable to a technical result only, even if that technical result could be achieved by other shapes. It is obvious that certain three-dimensional shapes are more suitable for manufacturing and packaging than others. Further, each machine-made and packaged product has a technical context in that they require technical measures such as the making of moulds and the like. In the case of chocolate bunnies, for which a variety of shapes could be produced, the shape was not merely designed to obtain a technical result, but also had an aesthetic purpose.

The court confirmed the violation of Section 8(2). The sign could not be considered to be capable of identifying the commercial origin of the product. The lack of distinctive character resulted in particular from the fact that the consumer would be unable to ascertain the commercial origin of the product on the basis of the elements making up the mark applied for (ie, the shape and gold colouration). The Lindt bunny shape appeared to be merely a variation of the basic shapes commonly used in the confectionery sector and did not significantly differ from the sector's norm or conventions. The court also noted that other undertakings in the chocolate and chocolate goods sector often wrap their goods in gold foil.

However, the court also affirmed that the sign had acquired a secondary meaning. Thus, in line with Section 8(3) of the act, the request for cancellation was denied.

Comment

In December 2010 the General Court of the European Union also dismissed four appeals of Lindt against decisions of the Office for Harmonisation in the Internal Market. The court noted that none of the following could be considered to be capable of identifying the commercial origin of the goods that they designated:

  • a chocolate rabbit shape decorated with a red ribbon, in the colours red, gold and brown;(2)
  • a chocolate reindeer shape decorated with a red ribbon, in the colours red, gold and brown;(3)
  • a bell shape decorated with a red ribbon, in the colours red and gold;(4)nor
  • a chocolate rabbit shape in the colour gold.(5)

Concerning their shape, a rabbit, a reindeer and a bell were typical shapes in which chocolate and chocolate goods were presented at certain times of the year (in particular, Easter and Christmas). With regard to the red ribbon and small bell combination, the court stated that it was common to decorate chocolate animals or their wrapping with knots, red ribbons and small bells. As mere decoration, a red ribbon with a small bell therefore had no distinctive character.

In light of these decisions, the registration of three-dimensional signs as trademarks will remain difficult. Such trademark applications will be approved only if the sign departs significantly from the norms or customs of the sector. However, as can be seen from the Federal Patent Court decision, another way for a trademark to obtain protection is by acquiring a secondary meaning in the relevant trade circles. That said, this can generally be achieved only as the result of extensive marketing efforts.

For further information on this topic please contact
Thomas Körber at Klinkert Zindel Partner by telephone (+49 69 972 65 600), fax (+49 69 972 65 6099) or email (t.koerber@klinkert.pro).

Endnotes

(1) Decision 25 W (pat) 33/09.

(2) Decision T-336/08.

(3) Decision T-337/08.

(4) Decision T-346/08.

(5) Decision T-395/08.