Recent decisions provide an occasion for mentioning chocolates, and more than this, chocolates having a specific shape. For once, said shape is not the one of an animal (such as a bunny, a mouse or a reindeer), but the main question is still the same: is the shape of the product a valid trade mark?

What is especially interesting here is that this very question has been addressed by Benelux, French and German courts (which is when an international team of bloggers comes handy).

The sign at stake (shown below) was claimed as a tri-dimensional trade mark and described by its owner –Révillon Chocolatier-, as "the shape of the product which is that of a vine stem" (“la forme du produit évoquant un sarment de vigne”).

The mark was registered in France and extended abroad via Benelux and international registrations.

As Révillon Chocolatier invoked its trade mark against the Dutch company Trianon Chocolatiers BV, the latter challenged the validity of the French company’s trade mark.

In the Benelux and French decisions, the discussion mainly focuses on whether the “vine stern” shape was capable of fulfilling the function of a trade mark.

In this regard, at least since the Henkel decision of 29 April 2004 (joined Cases C-456/01P and C-457/01P, paragraph 39), a specific criteria for assessing the validity of marks consisting of the shape of products is to be taken into account: the shape has to depart significantly from the norm or customs of the sector in order to be able to fulfils the essential function of the mark.

In France, both the first instance and the appeal courts considered the mark to be valid. In the appeal decision, the judges first held that the mark is not descriptive, since the twisted twig shape was not imposed by the nature of chocolate products, nor was it dictated by the function of such products. The appeal judgement also affirms that the examined shape does not confer the substantial value to the products, even if it is attractive. Chocolate consumers would rather seek palatability, consistence and inherent qualities of the product rather than its external appearance.

Then, the court went on to the ability of the shape to fulfil the function of a trade mark. Considering the evidence submitted by Trianon as regards the aspect of competing products, it decided that the shape of those other chocolates wass rather more massive, evoking a bar, a stick or a finger, but not the thinness, sinuosity and “chocolate colour” (not quite a distinctive feature here…) all along the stern.

Another piece of evidence also submitted by Trianon consisted in a survey made in 2006. It showed that 46% of the people did not associate the shape with a maker against 26% who did (whatever the maker…). The second figure was found significant by the court, as it showed that for almost one third of the consumers, this shape is immediately capable of fulfilling the function of a trade mark.

The mark was thus considered as valid.

This appeal decision was held by the Cour de cassation in a 26 October 2010 decision. Not prone to draw the same conclusion on the interpretation of the survey, the French Supreme Court nevertheless held that the appeal court had correctly motivated its decision: the vine stern shape sufficiently departs from that of competing products for the shape to fulfil the function of a trade mark.

In Benelux, litigation went through first and second instance stages. First the judgement of the District Court considered that the public was not used to derive the origin of a chocolate product from its shape. While noting the shape being meandering and featuring small bulges, it did not find such shape to be so unusual or deviating from other chocolate products for which such a shape is used or another shape derived from nature. The public would thus not be able to perceive the shape as an indication of origin.

The appeal court however took a different position. It stated that chocolates had various shapes, the most common of which (eggs, animals, letters, candy bars ...) are not perceived as indication of origin by consumers.

The court of appeal considered as a next step that Trianon argued that stick shapes are common for chocolate products. The court had a close look at the evidence that Trianon filed for this statement and concluded that Trianon did not present evidence that the stick shapes were already on the market on March 7, 2003 (filing date of the Revillon trade mark in Benelux).

Furthermore the court of appeal found that the stick shape of Revillon significantly differs from the sticks shapes presented by Trianon as evidence for its statement. Most of those stick shapes were significantly/considerably thicker than Revillon's. Above that none of the stick shapes had the characteristics of the Revillon stick: made of chocolate, slim and meandering and small chocolate protrusions. No sticks apparently had the same appearance as the Revillon stick: that of a “vine stern”. Accordingly the sign can function as an indication of origin and therefore be a trade mark.

The court did not take into account the results of a market research filed by Trianon, considering that what counts is not whether or not consumers can link a product to a certain producer, but only whether or not the stick shape is able to distinguish a chocolate product from products of a different origin.

Also rejected was the argument on the shape giving its essential value to the product, since the essential value of chocolate lies in its taste and substance. The shape mark was therefore held to be valid and Trianon was found to infringe said trade mark.

On the German side, the problem was interestingly seen from a different angle.

An intermediate decision from the Bundespatentgericht of 15 December 2010 raised some questions on the representation of the mark. The key point is “whether the 3-dimensional trade mark is sufficiently and unambiguously defined and thus fulfils the requirements of graphic representation (…) since only a single side view had been filed”, and the scope of protection of the mark, should it be considered valid. The BPatG may still state a lack of distinctiveness at a later stage.

Further details are provided in a previous post by Robert Börner.

While it was not the ground of confrontation between Révillon and Trianon, in Sweden the mark was rejected by the Office. The decision was held after Révillon’s recourse (Patentbesvärsrätten, 31 May 2010).

This post was collectively written by Benedetta Cordovado, Gino Van Roeyen, Frédéric Glaize and Robert Börner.