Chocolate Wars: Protecting Chocolate Through Trademark
European regard for chocolate was brought to international attention in the late 1990s, when the European Parliament debated chocolate purification standards, arguing over the ingredients required for chocolate to be referred to as “chocolate.” More recently, however, chocolate is receiving attention not for its sugary content but for the “unique” shape manufacturers adopt for their product and the increasing effort to protect these shapes from confectionary competition through trademark registration.
Trademarks indicate the commercial origin of a particular good and therefore provide the consumer with an indication of product quality. A trademark is traditionally considered a word or symbol that distinguishes a particular product from similar products. Over the years, trademark protection has expanded in some instances to protect a particular color, scent, or shape associated with certain products. Chocolate manufacturers in Europe have attempted to protect their products through this type of trademark protection; however, these non-traditional trademarks can prove more challenging to secure.
Prominent Swiss chocolate manufacturer, Lindt & Sprüngli AG, acquired trademark protection in the European Union in 2001 for the shape of its chocolate bunny with a small red ribbon and the word “Lindt” emblazoned across a gold-foil wrapper. In 2004, however, Lindt attempted to expand its rights by registering the shape, ribbon, and wrapper for trademark protection—without the word “Lindt” on the wrapper.
On May 24, 2012, the top court of the European Union Court of Justice (ECJ) denied trademark protection to the gold foil covered chocolate bunnies after finding the chocolate design lacked distinctiveness. This ruling upheld the decision of the General Court, which found the elements that constituted the mark—the bunny shape, gold foil, and red ribbon—were not distinctive when considered either separately or as a whole. The court also considered public perception of the product and held that rabbits are a typical shape for chocolates—especially at Easter—and therefore a chocolate bunny is unlikely to confuse consumers by indicating Lindt manufactures the chocolate.
Distinctiveness is an important component of trademark registration. The decision of the General Court was supported by a ruling from the Office of Harmonisation in the Internal Market (OHIM), which also found the chocolate bunny to lack the distinctiveness required for Community Trade Mark protection in the European Union. In the European Union, Article 7(1)(b) of Regulation 40/94 permits Community Trade Mark recognition for the shape of a product but prohibits registration of a trademark if the product does not exhibit a distinctive character. In 2004, the European Union General Court denied trademark protection to the shape of Werther’s Original candy because the round candy with a center indent was not distinctive. The General Court also denied trademark protection to the shape of the Mars Bounty Bar in 2009. It is not impossible, however, for a confection to acquire trademark protection for its particular shape; Toblerone’s unique geometric shape has received international protection for years.
Within Europe, however, companies can acquire non-traditional trademark protection for three-dimensional shapes within individual countries as well. Lindt successfully protected its bunny-shaped chocolate and wrapping in a 2006 case against Reigelein & Sohn in Germany. Lindt also brought action against Austrian chocolate manufacturer Hauswirth. The case made it to the European Court of Justice on the issue of bad faith registration and was then sent back down to the Austrian courts to determine whether or not Lindt can enforce its trademark rights against Hauswirth’s similarly shaped and wrapped chocolate bunny.
The ECJ’s denial of Lindt’s attempt to procure a Community Trade Mark indicates the high threshold for non-traditional trademark protection in the European Union—even though individual countries can still provide trademark protection for non-traditional marks. This non-traditional trademark protection poses challenges to intellectual property integration between the European Union and its member states.