ECJ Rules On Requirements For Distinctive Character Necessary To Protect 'Gold Bunny' As A CTM

Chocoladefabriken Lindt & Sprüngli AG v OHIM, Case C-98/11 P, 24 May 2012

Where an unusual mark, in this case the three dimensional image of the well known Lindt Gold Bunny chocolate product, is not inherently distinctive in every member state of the EU, it cannot be protected as a CTM unless there is evidence that it has acquired distinctiveness through use in the remaining part of the EU. Thus distinctiveness must be established throughout the EU whether inherently from the outset, or through evidence of distinctiveness acquired through use, or a combination of the two.

As a Community Trade Mark is a unitary right covering the whole of the EU as a single market, a trade mark which lacks distinctive character in part of the EU will be refused registration as a CTM. However, it is possible to obtain registration under Article 7(3) of the Community Trade Mark Regulation (CTM Regulation) if it can be established through evidence that the mark has acquired a distinctive character through use. In the "Gold Bunny" case, the CJEU has upheld the EU General Court's decision that a threedimensional mark comprising the shape of a chocolate rabbit with a red ribbon was devoid of distinctive character within the meaning of Article 7(1)(b) of the CTM Regulation for chocolate and chocolate products, and that there was insufficient evidence to demonstrate that Lindt had acquired distinctiveness throughout the EU through use. The CJEU declined to substitute its own assessment of the facts for that of the General Court as this would go beyond the scope of a review by the CJEU in the context of an appeal.

Lindt had originally applied for registration as a CTM in 2004 but the application was rejected; the sign was held to be devoid of distinctive character in the EU and had not acquired distinctive character through use (the original evidence of use submitted related to Germany only). The applicant's appeal to the Fourth Board of Appeal was subsequently dismissed. It was held that none of the elements which constituted the mark for which application was sought (namely, the shape, gold foil and red ribbon with bell) considered separately or as a whole, could give the mark distinctive character. Further an examination of the documents submitted supported the decision of the OHIM examiner; the documents detailed use in relation to Germany only, not use throughout the EU. Lindt appealed to the General Court.

The General Court considered all three of the elements...