Swiss chocolate maker Lindt and German confectioner August Storck had challenged a ruling of the EU's trademark office that the designs of several of their chocolate shapes and ornaments were not unique before the EU General Court.
But the General Court agreed with the trademark office that "a rabbit, a reindeer and a small bell are typical shapes in which chocolate and chocolate goods are presented at certain times of the year, in particular at Easter and Christmas."
The court ruled that the various chocolate designs were not unique enough for a consumer to be able to identify each chocolate's brand based on the shape alone. It also noted that many confectionery makers package their products in gold foil.
In 2004 and 2005, Lindt tried to register trademarks for a chocolate rabbit and a chocolate reindeer covered in gold foil and adorned with a small bell on a red ribbon. The chocolate maker also sought trademark status for the bell collar itself as well as for another chocolate rabbit covered in gold colouring. German manufacturer Storck also applied to trademark the shape of its rectangular chocolates decorated with a relief of a rabbit.
Brian Clayton, senior trademark agent at law firm Eversheds, told our sister site BakeryandSnacks.com recently that the right to register shape as a trademark exists in the EU under the 1989 amendments to IP legislation but national courts, and the UK patent courts in particular, have been notably hostile to bids aiming to enforce shape trademarks.
“In principal, a company can register a shape within the EU, but in practice this has proved difficult.
There is understandable caution on behalf of national trademark offices and IP judges, with concerns that a shape trademark would give companies perpetual protection, unlike patents or industrial design registrations where, typically, there is a maximum period of protection of 15 to 20 years ,” he said.
Clayton explained that the onus is on the food and drink manufacturer to show that the public perceive that the shape of its bottle or its food functions as a ‘badge of origin’ for the brand in order to satisfy valid trademark requirements.
However, he cites notable international failings in this regard, noting Unilever's unsuccessful attempt to safeguard the wavy shape of its Viennetta ice-cream, citing survey evidence to establish public perception of its multi-layered gateau’s shape as being unique.
And he said that due to the challenging nature of shape trademark registration, his advice to clients now is to opt instead for the registered industrial design route, which affords protection for products for up to 25 years.