February 04, 2011
The European Court of Justice has ruled that the shape of a chocolate rabbit or reindeer, in a particular colour, with a red ribbon, cannot be registered as a trade mark under Community trade mark law.
The case was brought by the chocolate companies Lindt amp; Sprüngli AG and August Stork.
It is possible to register the shape of a product or its packaging as a trade mark. However, the shape or packaging must be distinctive enough to allow the general public, without paying particular attention, to distinguish the goods concerned from those of other traders. There is also an added requirement in relation to shape marks in that the examiner or court must take account of the public interest in not giving a monopoly in a characteristic shape to one undertaking only, by granting it a registered trade mark. Here, it was held that the shapes in question were devoid of the necessary distinctive character.
In another decision, the UK High Court upheld a trade mark infringement case brought by online casino business 32Red against the bookmaker William Hill. The court ruled that William Hill’s use of 32Vegas and 32V for casino services had infringed 32Red’s European Community registered trade marks for 32Red which cover casino services. The court agreed that the marks were similar enough to cause a real likelihood of confusion between the businesses on the part of the public and that use of the marks by William Hill had caused ‘detriment to [32Red marks’] distinctive character and repute.’
