Community trade mark
ECJ: Mark lacking distinctive character may not be registered
By Sophie Petitjean | Thursday 24 May 2012
The shape of a chocolate rabbit with a red ribbon cannot be registered as a Community trade mark. In a judgement handed down on 24 May (Case C-98/11), the EU Court of Justice dismissed the appeal brought by Lindt & Sprüngli AG concerning one of its products, holding that its shape was devoid of any distinctive character.
On 18 May 2004, Lindt filed an application with the Community trade mark office OHIM for a three-dimensional sign representing the shape of a chocolate rabbit with a red ribbon. The OHIM rejected the application on the ground that the mark applied for was devoid of any distinctive character. Its decision was based on Regulation (EC) No 40/94 on the Community trade mark, which establishes that the shape of a product and its packaging may constitute a Community trade mark provided they present a distinctive character. Lindt brought an action before the EU General Court, which dismissed the appeal.
In its ruling, the Court of Justice points out that the distinctive character of the trade mark applied for must be assessed, first, by reference to the goods or services for which registration is sought and, second, by reference to the perception of the relevant public. The Court of Justice held in that regard that the General Court had correctly identified and applied those criteria by carrying out an evaluation both of current practices in the industry and the perception of the average consumer. As regards the acquisition of distinctive character through the use of the mark applied for, the court upheld the reasoning of the General Court, which found that Lindt had not proved that distinctive character had been acquired through use across the EU.