How distinctive is the Easter Bunny? Or Rudolph the red-nosed trademark?

Just a few days before Europe headed into the 2010 Christmas break the General Court released a range of decisions that had a very festive topic as if the Court had scheduled it right on time to get into the right Christmas mood. The Court dealt with the question whether the three-dimensional form of a chocolate object and/or its wrapping was suitable to be registered as a Community Trademark. In this specific case, the decisions dealt with a particular shape of a sitting chocolate Easter Bunny (Case No. T-395/08), the same bunny but in a golden wrapping and a red pleated ribbon with a bell around its neck (Case No. T-336/08), a reindeer, also in a golden wrapping with the same red ribbon and bell around its neck (Case No. T-337/08) and finally the red pleated ribbon with the bell itself (Case No. T-346/08).   The photographs show samples of the chocolate bunny and the ribbon as they are currently on sale in German stores.       All cases were brought to the Court by the famous Swiss chocolate producer Lindt & Sprüngli, which apart from the applications that were subject to the above mentioned proceedings, has already registered the gold wrapped bunny as a 3D trademark as CTM No. 008577298, however, in a version where the name “Lindt” is printed on the golden paper. So the question that was raised now was whether the 3D-form itself without the name "Lindt" would be distinctive enough to be registered.

The photograph shows a Lindt Bunny in the version of CTM No. 008577298

  In essense, the Court found that none of the elements of the trademark application (neither shape, golden paper, red ribbon or bell) by themselves or even in combination give the trademark sufficient distinctiveness for the goods. The decision whether a trademark is distinctive or not has to be based on the general impression of the trademark, which does not mean that first of all the singular elements of the trademark have to be examined. The Court states that a rabbit belongs to the typical range of shapes that is used for chocolate, especially during the Easter season - similar to the reindeer during Christmas. The argument that the bunny was particular because sitting and the combination of the bunny with the golden wrapping and the red ribbon was unique on the market did not change the Courts view. A rabbit is a rabbit. Its position, the length of its ears, the size of its eyes or any additional elements do not change this, sustained OHIM and was confirmed by the Court. Additonally, the Court had to evaluate the reindeer.  The shape, even in the most simplified or abstract form is part of the typical range of animal shapes for chocolate during the Christmas period. All graphic elements such as antlers, paws, mouth and eyes are common elements and not of such artistic level that they could be considered as a sign of origin by the relevant public. The golden wrapping was judged to be within what is normally and commonly used for chocolate on the market, even though it might have been that 50 years ago the applicant had brought it on the market as novelty. The red ribbon was also seen as a commonly used decorative element for chocolate - especially during the festive seasons. The fact that this particular ribbon was pleated was not seen as a distinctive element either. According to the Court it is sufficient that the Board of Appeal had based its opinion on the general practical experience in the commerce of chocolate goods that is known to everybody. As an overall assessment the Court therefore came to the conclusion that the trademarks under examination where not distinctive as they did not differ much from commonly used shapes and packaging of other chocolate products. The fact that the applicant already obtained the CTM registration No. 008577298 (the bunny with the name “Lindt” written on the golden wrapping) and had used it successfully in several infringement cases against similar products was seen as a proof that the risk of a monopolization of the respective golden wrapping exists. This would coincide with the general interest of the absolute grounds of refusal of the registration according to Art. 7 I b) CTMR. Finally, the Court also denied the acquired distinctiveness as it considered it not to be proven that such distinctiveness had been acquired in territories outside of Germany.