Protecting The Easter Bunny

While the Easter holidays mark an important event in the religious calendar, little kids everywhere (including the little kid inside of us all) also know it as a holiday filled with chocolate eggs and bunnies.

It is also the time of year when chocolate companies rub their hands with glee as sales sky rocket. Companies use this opportunity to create Easter branded products you may even begin to recognise on the shelves based on their unique appearance. While you are munching away through your stash of chocolate treats, here is a little food for thought:

Is that chocolate bunny subject to IP protection? The European Court of Justice was asked to rule on that very issue.

On 18 May 2004, Lindt filed an application for registration of a Community trade mark. Registration was sought for the three-dimensional mark consisting of the shape of a chocolate rabbit with a red ribbon and which, according to the description in the application was red, gold and brown.

The goods in respect of which registration was sought was in Class 30 of the Nice Agreement of 15 June 1957 and corresponded to the following description “Chocolate and chocolate products”. By decision on 14 October 2005, the examiner rejected the application on the basis that the mark was devoid of any distinctive character. The examiner also held that the mark did not acquire distinctive character through use as the evidence provided only related to Germany.

Lindt filed an appeal to the decision and on 11 June 2008, the Appeal Board held that the shape, the gold foil and the red ribbon with a small bell, considered separately or as a whole, could not give it distinctive character in relation to the goods concerned. It was held that rabbits are one of the typical shapes which chocolate products may take, especially at Easter and the mark was held to be devoid of distinctive character. A further appeal was filed the European General Court, who upheld the decision of the Appeal Board.

The matter was then referred to the European Court of Justice (“ECJ”). Lindt argued that the crouching bunny in combination with the gold foil, red ribbon and bell were distinctive as customers were able to distinguish their products based on this unique appearance. Lindt also argued that the mark had acquired distinctive character through use in Germany and Austria and the United Kingdom.

The ECJ held that an assessment of whether the shape of the rabbits on the market are similar or whether there is, from the point of view of the consumer, a difference between the rabbit at issue and the other shapes of rabbit, so that the shape of rabbit at issue has distinctive character is a question of assessment of the perception of consumers and therefore a question of fact. The ECJ held that the facts could not be reassessed as there was no mistake in the interpretation thereof. The General Court’s ruling in this regard was therefore upheld.

It was also held that in order to prove that a mark has acquired distinctive character through use; proof thereof must be provided at the time of filing. As Lindt had not provided this proof at the time of filing, it was held that the mark did not have distinctive character and the appeal was dismissed.

So it appears that the Easter bunny is not, in fact, distinctive.

Hillary Brennan – Attorney
hillary@rademyer.co.za