WIPO Lex

This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.

Session 1: Emerging Issues in Trademarks

Court of Justice of the European Union (Fourth Chamber) [2012]: Chocoladefabriken Lindt & Sprüngli AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs), Case No. C-98/11 P

Date of judgment: May 24, 2012
Issuing authority: Court of Justice of the European Union
Level of the issuing authority: Final Instance
Type of procedure: Judicial (Administrative)
Subject matter: Trademarks
Plaintiff: Chocoladefabriken Lindt & Sprüngli AG
Defendant: Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) [now the European Union Intellectual Property Office (EUIPO)]
Keywords: Appeal, Community trademark, Absolute ground for refusal, No distinctive character, Three-dimensional sign

Basic facts: On May 18, 2004, Chocoladefabriken Lindt & Sprüngli AG (Lindt) filed an application for registration of a Community trademark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Regulation No. 40/94. Lindt sought registration of the three-dimensional sign below, consisting of the shape of a chocolate rabbit with a red ribbon, in the colors red, gold and brown:

The goods in respect of which Lindt sought registration were in Class 30 of the Nice Agreement and corresponded to the following description: ‘Chocolate and chocolate products’.

In its decision of October 14, 2005, the OHIM examiner rejected Lindt’s application for registration of a Community trademark on the basis of Article 7(1)(b) of Regulation No. 40/94, finding that the sign at issue was devoid of any distinctive character. Furthermore, the OHIM examiner found that the mark had not acquired distinctive character through use, as provided for under Article 7(3) of Regulation No. 40/94, because the supporting evidence related only to Germany.

Lindt filed an appeal with OHIM against the examiner’s decision. In a decision issued on June 11, 2008, the Fourth Board of Appeal of OHIM dismissed Lindt’s appeal, finding that whether considered separately or as a whole, none of the elements constituting the mark, namely, the shape, the gold foil and the red ribbon with a small bell, gave the mark a distinctive character in relation to the goods concerned. Accordingly, the Fourth Board of Appeal held that the Lindt mark was devoid of any distinctive character throughout the European Union within the meaning of Article 7(1)(b) of Regulation No. 40/94.

Further, the Fourth Board of Appeal held that because the documents submitted as evidence by Lindt related only to Germany, they did not lead to the conclusion that the mark had acquired distinctive character for the goods at issue through use throughout the European Union, in accordance with Article 7(3) of Regulation No. 40/94.

By application lodged with the General Court of the European Union on August 18, 2008, Lindt brought an action against the Fourth Board of Appeal’s decision of June 11, 2008, putting forward two pleas in law, alleging infringement of Articles 7(1)(b) and 7(3) of Regulation No. 40/94.

Regarding Lindt’s first plea in law—alleging infringement of Article 7(1)(b)—the General Court held that the Fourth Board of Appeal rightly found that the Lindt mark was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No. 40/94.

Regarding Lindt’s second plea in law—alleging infringement of Article 7(3)—the General Court considered that it was in the European Union as a whole that the mark must have acquired distinctive character through use in order to be registrable under Article 7(3) of Regulation No. 40/94. Consequently, the General Court also rejected the second plea in law.

On appeal to the Court of Justice of the European Union, Lindt seeks to have set aside the judgment of the General Court of the European Union, in which the Court dismissed its action for annulment of the decision of the Fourth Board of Appeal of OHIM concerning its application to register as a Community trademark a three-dimensional sign comprising the shape of a chocolate rabbit with a red ribbon.

Held: The Court of Justice of the European Union (Fourth Chamber) dismissed Lindt’s appeal, rejecting its first plea in law as inadmissible in part and unfounded in part, and rejecting its second plea in law as unfounded.

Relevant holdings in relation to emerging issues in trademarks: Under Article 7(1)(b) of Regulation No. 40/94, trademarks devoid of any distinctive character shall not be registered. Only a mark that departs significantly from the norm or customs of the industry and thereby fulfills its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b).

The Court of Justice of the European Union held that during its assessment of distinctive character of the Lindt mark, the General Court correctly identified and followed the criteria established by the relevant case law. By seeking a new evaluation of the distinctive character of the mark, Lindt called into question, without alleging a distortion of the facts, the accuracy of the General Court’s factual findings. Because this goes beyond the scope of a review by the Court of Justice in the context of an appeal, the Court held the first plea in law to be inadmissible in part.

Lindt further argued that the existence of trademark registrations in 15 Member States supported the distinctive character of its mark. The Court of Justice found that the General Court did not err in law by finding, in accordance with settled case law of the Court of Justice, that registrations already made in Member States are only one factor that may be taken into account in connection with the registration of a Community trademark. As such, OHIM was under no obligation to follow the assessment of the competent national authorities or to register the Lindt mark as a Community trademark on the basis of those considerations. Therefore, the Court of Justice also held Lindt’s first plea in law to be unfounded in part.

Under Article 7(3) of Regulation No. 40/94, the absolute ground for refusal set out in Article 7(1)(b) does not preclude registration of a trademark if the mark has become distinctive in relation to the goods or services for which registration is requested through the use which has been made of it.

A mark can be registered by virtue of Article 7(3) only if evidence is provided that the mark has acquired, through the use which has been made of it, distinctive character in the part of the European Union in which it did not initially have such character. However, the Court of Justice of the European Union determined that it would be unreasonable to require proof of such acquisition of distinctive character for each individual Member State.

Nonetheless, the Court of Justice held that in the present case, Lindt had not sufficiently proved that its mark had acquired distinctive character through use throughout the European Union. Thus, the Court rejected Lindt’s second plea in law as unfounded.

Relevant legislation:
Article 7 of Council Regulation (EC) No. 40/94 on the Community trade mark