Stick to it! More chocolate shapes for the Court of Justice

Chocolate bunnies are already on the menu of Europe's highest court -- and now the Luxembourg judges can look forward to another tasty treat in store, this time involving chocolate twigs.  It's Case C-2/12 Trianon Productie BV v Revillon Chocolatier SAS, a reference for a preliminary ruling from the Hoge Raad der Nederlanden (the Dutch Supreme Court). While the application was lodged with the CJEU on 3 January of this year, details of the reference are not yet available on the Curia site.  Fortunately this weblog has received this very helpful explanatory note, prepared and translated into English by the Kat's friend Stephen Vousden.

"The parties make chocolate-sticks. In 1998 the defendant French company, Revillon, began making theirs in the form of 'un sarment de vigne' – a long-wiggly, tiny-bobbled, vine-shoot. The chocolate-sticks came in different flavours and were sold by the box. The box's packaging depicted a bunch of chocolate-sticks tied together with a coloured ribbon, and bore the names both of Revillon and Les Sarments. In 2003, Revillon registered a three-dimensional shape of a product mark evoking 'un sarment de vigne'.

In 2004 the claimant Dutch company, Trianon, also started to sell wiggly-bobbled chocolate-sticks. Trianon's too came in various flavours, and were sold by the box. The packaging also depicted a ribboned-bundle of chocolate-sticks but bore the names of Trianon and Les Rameaux. In 2006 Trianon commenced legal proceedings against Revillon, alleging the invalidity of Revillon's mark. Trianon's action had two heads of claim. First, Revillon's stick-mark was devoid of distinctive character for the purposes of the Benelux IP Convention. Secondy, the form of Revillon's stick could not be a trade mark under Art. 2.1 of the same Convention, because a mark cannot be granted where the sign consists exclusively of a shape that gives 'a substantial value' to the goods.

The Dutch courts could not agree on how the law should be interpreted. At first instance the Den Bosch District Court agreed with the Dutch company, Trianon, and found the mark invalid on the basis that Revillon's registered shape was devoid of distinctive character. However, the Den Bosch Court of Appeal rejected both of Trianon's claims and, influenced by Benelux trade mark law, it overturned the District Court's judgment.

More specifically, on the first ground the Den Bosch Court of Appeal held that any form which differed in a significant way from the norm in the relevant industrial sector fulfilled the essential function of denoting origin, and thus had a distinctive character. Here, Revillon's stick-form was considerably thinner than the majority of those in the sector, and none was in the form of a vine-shoot. Thus the stick-form was not the mere variation of the norm for stick-forms; its original appearance added value to the product through which it gained a distinctive character. In that respect, this stick-form could fulfil the function of denoting origin.

On the second ground, the Den Bosch Court of Appeal held that Trianon had insufficiently supported its claim. However, in principle, a potentially attractive form of chocolate could not be said to exert a real influence on the intrinsic value of the good because the substantial value of chocolate lies in its taste and substance. Since Trianon had not proved otherwise, their claim failed.

On appeal, the Dutch Supreme Court's Advocate General Verkade, an expert in IP law, flagged up that Revillon's mark had already started to generate case law in both France and Germany. He went on to explain, in a richly footnoted Opinion, why he thought it was no longer safe to assume that Benelux trade mark law corresponded to the current approach of EU trade mark law.

On reading this, the Dutch Supreme Court acknowledged that the Den Bosch Court of Appeal had applied the correct test for assessing the distinctive character of a shape (Joined Cases C-456/01 P and C-457/01P Henkel KGaA v OHIM; Case C-25/05 August Storck KG v OHIM and Joined Cases C-53/01, C-54/01 and C-55/01, Linde AG). For that assessment there were no other requirements than those applicable to two dimensional marks (Linde). It was incorrect to attach importance to consumers being able to attribute the product for it will suffice if the mark enables the public to identify the specific company as the source and thus to distinguish this from other companies (Linde).

However, the Dutch Supreme Court was unsure how to apply Article 3(1)(e)(iii) of Directive 89/104/EEC [now repealed and re-enacted as Directive 2008/95], and therefore, asked (author's translation):

1 Does the ground for refusal or invalidity in Article 3(1)(e)(iii) of Directive 89/104/EEC, as codified by Directive 2008/95 (that a shape of product trade mark cannot consist exclusively in a shape which gives a substantial value to the goods), relate to the incentive(s) for the purchasing decision of the relevant public? 

2 Does 'a shape which gives a substantial value to the goods' in that provision:
(a) only apply when that shape must be considered to be the primary or dominant value as compared to other values (such as taste and substance, in the case of foodstuffs); or,
(b) can that also be the case when, alongside the primary or dominant value, there are other values which can also be said to be substantial to the goods?

3 Does the answer to Question 2 depend on the perception of the majority of the relevant public, or is it sufficient that from a part of that public, a judge makes a finding about whether the value concerned is 'substantial' within the meaning of that provision? 

 If the answer to the last part of Question 3 [is yes], then which requirements ought to be set to determine the scope of the part of the relevant public?"

Now's the time to start thinking about the answers -- and for European readers to decide whether to encourage their governments to submit  representations to the CJEU.