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LINDT CHOCOLATE BUNNIES NOT SO SWEET-FRAUD IN EU TRADEMARK DESIGN
© Cheryl Hodgson 2009 | Posted on October 1, 2009
They look cute, covered in their delectable chocolate goodness. But sometimes beneath those deep brown eyes lie the heart of an intense and shrewd business bunny. Most recently the chocolate bunnies of the Lindt Chocolates empire were accused to have invalidly trademarked their chocolate design.
The Lindt chocolate bunnies started hopping around Europe in 1950. The design is protected under CTM registration 1698885 filed by Lindt on June 8, 2000, covering “chocolate and goods of chocolate” in Class 30. It is known that when Lindt filed the CTM application, it knew of the existence of similar chocolate bunnies hopping around Europe. Let’s just say, the other bunnies are NOT happy, and are currently plotting revenge from their Bavarian holes!
Most do not know that trademarks can also include the shape of a good or its packaging. In the United States this is often referred to as trade dress, but the practice of protecting designs is not as common in the U.S. as it is in Europe where designs can also be registered as an “industrial design.” The practice of protecting a design via a trademark application is most common in the wine and champagne sectors where vintners are constantly trying to develop the newest and most sleek bottle designs.
In Chocoladefabriken Lindt & Sprüngli AG v. Franz Hauswirth GmbH , the European Court of Justice (ECJ) handed down its first decision on the interpretation of “bad faith” as grounds for invalidity under Article 51(1)(b) of Council Regulation No 40/94 of the Community Trade Mark (now contained in Article 52(1)(b) of Council Regulation (EC) No 207/2009, which came into force on April 13, 2009). Although a definitive ruling has not yet been handed down on whether the Lindt chocolate bunny design is invalid, the above cited case lays out the requirements of proving Article 51(1)(b).
Article 51(1)(b), an absolute ground for invalidity, provides:
A Community trade mark shall be declared invalid on application to the [OHIM] or on the basis of a counterclaim in infringement proceedings . . .where the applicant was acting in bad faith when he filed the application for the trade mark.
The ECJ addressed the factors specified in the referred questions:
• the fact that the applicant knows or must know that a third party is using in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought;
• the applicant’s intention to prevent that third party from continuing to use such a sign; and
• the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought.
Stay tuned as the bunny showdown continues…
Technorati Tags: Intellectual Property, trademark, trademark infringement, trademark registration, trademark selection, Trademarks
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