Return of the Chocolate Bunnies

Just when you thought it was safe to go back to the confectioners, Europe's chocolate bunnies have announced their return.  The Curia website brings news of the appeal which has been lodged by Chocoladefabriken Lindt & Sprüngli AG against the judgment of the General Court (First Chamber) in Case T-336/08 Chocoladefabriken Lindt & Sprüngli AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs).  For those of you who are new to this weblog, that was the ruling last Christmas on the registrability of the shape of Easter bunnies as Community trade marks (see here for background).

The appeal has been given a brand-new case reference number (Case C-98/11 P) and, for those folk who appreciate legal details, where are the pleas in law and main arguments:

The present appeal is brought against the judgment of the General Court, by which it dismissed the appellant's claim seeking annulment of the Decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (OHIM) of 11 June 2008 on the rejection of its application for registration of a three-dimensional mark comprising the shape of a chocolate rabbit with a red band. 

The appellant bases its appeal on an infringement of Article 7(1)(b) and Article 7(3) of Regulation No 40/94. 

As regards the first ground of appeal, concerning the assessment of the marks' distinctive character, neither the assessment by OHIM nor the judicial review by the General Court satisfied the requirements in law, since both decisions were based on conjecture. OHIM speculated that the finding that a chocolate Easter bunny is a typical shape for Easter is valid for all Member States of the European Union and that that was not in dispute. That assertion has, however, always been in dispute, since the appellant has expressly disputed that assertion, adducing substantial evidence. OHIM and the General Court should have taken that into account in order correctly to fulfil their obligation of assessment under Article 74(1) of Regulation No 40/94. Further, the General Court reached the conclusion that the use of gold foil to wrap chocolate Easter bunnies is usual on the market, despite the fact that the judgment referred to only three other kinds wrapped in gold foil. Such a small number of goods cannot, in the view of the appellant, lead to that feature being regarded as 'usual in the market'. 

The fact that the assumption made by the General Court, that the mark has no inherent distinctive character throughout the European Union, is unfounded also becomes clear from the fact that the mark in question is registered as a trade mark in 15 Member States of the European Union. 

The second ground of appeal concerns the ruling of the General Court that the mark must have acquired distinctive character through use throughout the European Union, which is incorrect for two reasons. 

First, the General Court misses the point that distinctive character must be acquired by use only in those places where the mark has no inherent distinctive character. In the 15 Member States where the mark in question has inherent distinctive character, there is no need to require the acquisition of distinctive character through use. If the view were to be accepted that, as part of the assessment, distinctive character had to be ascertained again in the individual Member States, the factual circumstances pertaining there would have to be established. Since, pursuant to Article 74 of the regulation, distinctive character is to be assessed by OHIM of its own motion, OHIM should thus have made specific findings for each individual Member State of the European Union. OHIM and the General Court failed to do so. 

Second, the considerations of the General Court cannot be reconciled with the principle of homogeneity of Community trade marks. In an assessment of registrability and, specifically in this case, distinctive character, the European Union is to be regarded as a common homogeneous market. If, as regards a significant part of the total population of the European Union, there is inherent distinctive character, that must also be sufficient for protection throughout the European market. That approach alone ensures that current national entities continue, despite their actual size, to be regarded as smaller or larger as necessary.

The IPKat is not saying anything at all about the over-intellectualisation of European trade mark law: he just wishes he could say with confidence that he understands what is meant by "That approach alone ensures that current national entities continue, despite their actual size, to be regarded as smaller or larger as necessary".  Merpel says, the funny thing about cases involving rabbits is that you start off with just a couple of them and, before you know it, they're all over the place ...

Why bunnies shouldn't eat chocolate here
Why are young rabbits called bunnies? here
Bunny boiler here
Vampire rabbit here