Lindt’s chocolate rabbit registrable as a trade mark?

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The chocolate maker Lindt & Sprüngli AG (“Lindt”) has distributed chocolate Easter rabbits wrapped in gold foil and wearing a red ribbon around their necks and a small bell for many years. In order to protect the shape of this rabbit the Swiss manufacturer of premium chocolate filed for 4 applications to register three-dimensional signs as Community trade marks in 2004 and 2005. However, the European Court recently ruled that the shape of Lindt’s chocolate rabbits is not capable of being protected by trade marks.

Capable of distinguishing

The distinctiveness of a trade mark is a key requirement for trade mark registration. Only if the sign, (such as words, designs, the shape of goods and their packaging) is capable of distinguishing goods or services as originating from a particular source will a trade mark be granted. When considering the distinctiveness of a sign it is necessary to focus on what the average consumer of goods and services in question would regard as distinctive. According to the European Court such distinctive character was not met by Lindt’s trade mark applications.

The European Court’s reasoning was this: a rabbit is a shape in which chocolate and chocolate goods are usually presented at Easter and therefore, a rabbit is a common, non distinctiveness sign.

The Court thought that the consumer would not be able to know the commercial origin of chocolate rabbits purely by reference to the various elements making up Lindt’s trade mark applications, namely the shape, the gold wrapping or the red ribbon. It said that there are many different chocolate rabbits available on the market, and consumers would consider the Lindt rabbit as a further shape of a chocolate rabbit offered during Easter. The ribbon as well as the small bell is only a decorative feature which are not protectable under a registered trade mark. For these reasons the European Court refused the trade mark for Lindt’s chocolate rabbits.

No trade mark protection for chocolate rabbits?

This does not mean there is no trade mark protection at all for Lindt. In fact Lindt is, inter alia, the trade mark owner of a German three-dimensional registered trade mark which protects the shape of the respective rabbits. In contrast to the Community trade mark application the German trade mark was granted by the German Patent and Trademark Office without any difficulty. Moreover, the German Federal Supreme Court assumed the distinctiveness of Lindt’s three-dimensional trade mark in a trade mark dispute from 2010.

National or community trade mark application

As the Lindt case highlights it can make a difference whether a business files for protection of its mark as a Community Trade Mark or as a national trade mark. Although, the registration requirements are supposed to be equivalent due to the harmonization process in Europe the application of the laws, can often lead to different results. Therefore, companies trading only in one or two European countries should consider registering national trade marks rather than a Community trade mark, in particular if the registration is more likely to succeed in the national registers. This case also underlines that trade mark registrations are never black and white and there are often surprises during the application process.