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Wednesday, 17 October 2007

Amanda and the chocolate mouse

'Amanda and the chocolate mouse' sounds like a great title for a children's story -perhaps a sequel to 'Charlie and the chocolate factory'. But it certainly wasn't child's play for August Storck (a name quite reminiscent of Augustus Gloop) to secure registration of this charming mouse in the teeth of UK Registry resistance, until the reassuringly kindly intervention of Amanda Michaels in her capacity as Appointed Person (August Storck KG's international application, decision O-302-07, 9 October 2007, as yet unavailable on the UKIPO website).

This was an international application under the Madrid Protocol, seeking to register this meltingly charming representation as a trade mark in Class 30 for 'confectionery, chocolate and chocolate products, pastries'. The Registry objected that the mark, being "essentially of the device of a mouse being a representation of the goods", was devoid of distinctive character for confectionery products in the form of a mouse. For the applicant it was said that the mark might allude to the goods but that it was not a representation of them. The Registry conceded that the mark was more than a mere representation of the goods alone, but could not be persuaded to shift from its position that the mark was not distinctive. The application was therefore refused.

Following a hearing, the application was still refused - but this time on shifting grounds, the hearing officer questioning whether, given the present state of consumer attitudes towards animal-shaped confectionery products, consumers would regard the mark as a trade mark at all. In her opinion the mark, found on the outside of the applicant's box, would give the consumer an indication of what goods it might find inside the box.

Amanda Michaels, allowing the applicant's appeal, took a different view. She accepted that the mark was not a representation of the goods, these being "small, individually wrapped, basically trapezoid, filled chocolate sweets". She added: "The sweets are moulded roughly into the shape of an animal, which one might take to be a mouse, but which I think could just as easily be taken to be a cat". As such, the product did not resemble the mark.

Left: the correct test is one of whether the relevant consumer would identify the mouse as a trade mark or as the product itself

Continuing with a review of the relevant ECJ case law on the subtle difference between three-dimensional marks and two-dimensional pictures of three-dimensional items, the Appointed Person observed that figurative marks that do not represent a three-dimensional product labour under none of the difficulties inherent in the notion of registering a product shape as a trade mark for itself, in terms of the impact such marks make on the relevant consumer. Here, while the mouse mark alluded to the type of product the consumer might expect, it did not depict the product. The colours and the "milk spill" - where one might expect to see a word mark or logo - both went further than merely representing the chocomouse and the combination of the various parts of the mark added up to more than the distinctiveness of its individual parts. Accordingly, despite the modest nature of its distinctive character, the mouse was registrable.

Is this a little boy mouse or a little girl mouse, asks the IPKat? A little empirical research revealed yesterday that almost all of an admittedly small sample of female respondents assumed that the mouse was male, while the majority of fellas thought it female (two respondents considering it to be gender non-specific).

Chocolate mouse here
Chocolate mousse here

2 comments:

Ilanah said...

Neither. It's an old age mouse. You just assume it's a young mouse because it's made out of chocolate...

Anonymous said...

My son,aged 5, proclaims it to be male on the basis that it is bald and the milk spill conceals a portly tum. This probably reflects his opinion of me.

When asked whether he thought it was nevertheless a registrable trade mark he looked rather blankly as if to say, I really do think it's about time you got a proper job, Dad.

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