In a judgment delivered on 24 May 2012, the Court of Justice of
the European Union (the "ECJ") confirmed a judgment of
the General Court of the European Union (the "GC") that
the shape of Lindt's chocolate rabbit figures cannot be
registered as a Community trade mark ("CTM").
In an earlier edition of this Newsletter, we reported on the
attempted registration by Chocoladefabriken Lindt &
Sprüngli AG ("Lindt") to register the shape of its
chocolate rabbit figures as a trade mark in Austria (See VBB on
Belgian Business Law, Volume 2009, No. 6, p. 9, available at
www.vbb.com). In addition, the chocolate manufacturer also
sought to protect the shape of the chocolate rabbits wrapped in
golden foil with red ribbon and a bell around their necks as a CTM
with the Office for Harmonization in the Internal Market (the
"OHIM"). The OHIM dismissed the application on 11 June
2008, holding that the chocolate rabbit figures did not have
sufficient distinctive character. Upon appeal brought by Lindt
before the GC, the GC held that the OHIM had not erred in law in
its decision (See VBB on Belgian Business Law, Volume 2010, No.
12, p. 13, available at www.vbb.com).
Lindt further appealed this judgment to the ECJ. According to
Lindt, the GC incorrectly found that rabbit shapes and gold foil
correspond with the norms and customs of the relevant industry.
Moreover, Lindt argued that the fact that the shape at issue is
validly registered as a trade mark in 15 EU Member States supports
the distinctive character of the trade mark. Finally, Lindt argued
that the GC was wrong to decide that the trade mark at issue must
have obtained distinctive character through use in all EU Member
states in order to qualify for registration as a result of the use
which has been made of it.
The ECJ upheld the GC's decision with regard to its
appreciation of the norms and customs of the relevant industry. The
ECJ held that it cannot be asked to review the GC's assessment
of the facts at hand. According to the ECJ, such request does not
fall within the scope of a review by the ECJ in the framework of an
appeal. Further, the ECJ pointed out that the OHIM has to assess a
CTM application on the basis of the relevant EU rules and, as a
result, is not bound by the assessments made by the competent
national authorities with regard to the registration of a national
Finally, the ECJ addressed the issue of acquired distinctive
character through use and confirmed the GC's reasoning that
Lindt had not demonstrated that its trade mark had acquired
distinctive character through use throughout the EU. The ECJ thus
refused to grant CTM protection to Lindt's rabbit-shaped
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