Just a few days before Europe headed into the 2010 Christmas break the General Court released a range of decisions that had a very festive topic as if the Court had scheduled it right on time to get into the right Christmas mood. The Court dealt with the question whether the three-dimensional form of a chocolate object and/or its wrapping was suitable to be registered as a Community Trademark. In this specific case, the decisions dealt with a particular shape of a sitting chocolate Easter Bunny (Case No. T-395/08), the same bunny but in a golden wrapping and a red pleated ribbon with a bell around its neck (Case No. T-336/08), a reindeer, also in a golden wrapping with the same red ribbon and bell around its neck (Case No. T-337/08) and finally the red pleated ribbon with the bell itself (Case No. T-346/08).   The photographs show samples of the chocolate bunny and the ribbon as they are currently on sale in German stores.       All cases were brought to the Court by the famous Swiss chocolate producer Lindt & Sprüngli, which apart from the applications that were subject to the above mentioned proceedings, has already registered the gold wrapped bunny as a 3D trademark as CTM No. 008577298, however, in a version where the name “Lindt” is printed on the golden paper. So the question that was raised now was whether the 3D-form itself without the name "Lindt" would be distinctive enough to be registered.

The photograph shows a Lindt Bunny in the version of CTM No. 008577298

  In essense, the Court found that none of the elements of the trademark application (neither shape, golden paper, red ribbon or bell) by themselves or even in combination give the trademark sufficient distinctiveness for the goods. The decision whether a trademark is distinctive or not has to be based on the general impression of the trademark, which does not mean that first of all the singular elements of the trademark have to be examined. The Court states that a rabbit belongs to the typical range of shapes that is used for chocolate, especially during the Easter season - similar to the reindeer during Christmas. The argument that the bunny was particular because sitting and the combination of the bunny with the golden wrapping and the red ribbon was unique on the market did not change the Courts view. A rabbit is a rabbit. Its position, the length of its ears, the size of its eyes or any additional elements do not change this, sustained OHIM and was confirmed by the Court. Additonally, the Court had to evaluate the reindeer.  The shape, even in the most simplified or abstract form is part of the typical range of animal shapes for chocolate during the Christmas period. All graphic elements such as antlers, paws, mouth and eyes are common elements and not of such artistic level that they could be considered as a sign of origin by the relevant public. The golden wrapping was judged to be within what is normally and commonly used for chocolate on the market, even though it might have been that 50 years ago the applicant had brought it on the market as novelty. The red ribbon was also seen as a commonly used decorative element for chocolate - especially during the festive seasons. The fact that this particular ribbon was pleated was not seen as a distinctive element either. According to the Court it is sufficient that the Board of Appeal had based its opinion on the general practical experience in the commerce of chocolate goods that is known to everybody. As an overall assessment the Court therefore came to the conclusion that the trademarks under examination where not distinctive as they did not differ much from commonly used shapes and packaging of other chocolate products. The fact that the applicant already obtained the CTM registration No. 008577298 (the bunny with the name “Lindt” written on the golden wrapping) and had used it successfully in several infringement cases against similar products was seen as a proof that the risk of a monopolization of the respective golden wrapping exists. This would coincide with the general interest of the absolute grounds of refusal of the registration according to Art. 7 I b) CTMR. Finally, the Court also denied the acquired distinctiveness as it considered it not to be proven that such distinctiveness had been acquired in territories outside of Germany.  

If you are interested in obtaining a trademark or a design you surely have visited the websites of the relevant offices like GPTO (DPMA), OHIM or WIPO and you will have discovered that they provide a useful guidance and all necessary forms you need for registering your trademark or your design. So why should you spend money hiring an IP-lawyer? Why shouldn’t you do it all by yourself, you might ask yourself. It’s true you can do it all by yourself. Most offices do not require that you are represented by a lawyer. But registering trademarks and designs by yourself bears a great risk that can most probably make the registration an extremely expensive adventure that might not even end with obtaining the trademark or the design. Here are four reasons why hiring us as your IP-lawyers is a good investment: 1. In Germany and Europe trademarks and designs need to match certain requirements. A trademark must be distinctive and not descriptive for the goods and services for which protection is sought. The trademark „chair“ for example cannot be registered for furniture, but „Apple“ can be very well registered for computers. A design has to feature peculiarity. That means it has to be distinguishable from yet existing designs. There is a wide variety of case law that define which trademark is distinctive and which is descriptive, which design is peculiar or not. Only an experienced IP-Lawyer can give you advice and guidance whether your trademark or design matches these criteria. Without consulting a lawyer you might risk that an office rejects your application. 2. Registering a trademark or a design always carries the risk of infringing someone else’s prior rights. This can lead to expensive and long opposition and court proceedings that you would rather avoid. Therefore, it is absolutely necessary before the application to conduct a search for identical of similar trademarks and already existing and registered designs. Such a search has to be done by a professional because a self-conducted search might be suitable to find identical trademarks. However, it will never cover similar (visual, phonetic or conceptual) marks. Without an experienced IP-lawyer you will also not be able to evaluate the risk of a similarity because in order to do that, experience and excellent knowledge of the office and court decisions are absolutely necessary. 3. If you need to protect your trademark or your design in more that one territory it is also extremely important to set up the right strategy how to register because on an international level there are different ways with different time frames and costs that lead to the same result. Only an experienced IP-lawyer that specializes in the field of trademark and design law is able to find the right strategy for you. 4. After you have become proprietor of a trademark or a design you want to make sure that no one else infringes your rights by registering something that is identical or similar to your trademark or design or even by using a similar or identical trademark or design on the market. Therefore, you need someone who monitors published applications and also the market in order to make sure that you can act against any infringements right on time to safeguard your intellectual property. Only an experienced IP-lawyer, such as the attorneys of LexDellmeier, is able to recognize infringements and suggest suitable means to stop them.

Instead of the ©, there might be a reference to §§ 53, 54 UrhG, which regulate the admissibility of replication and the duty of compensation, and to § 106 UrhG, regulating the criminal liability of unauthorized use.

The protection begins with the creation of the work, lasting throughout its creator´s lifetime and being upheld for further 70 years after his death (as the right of his legal heirs). Concerning anonymous works, the protection ends 70 years after their publication.

1. Lingual works as writings, speeches, computer programs
2. Works of music
3. Pantomimical works and dance art
4. Fine arts, including architecture and applied art, as well as there outlines
5. Photographical works, including similarly constructed works
6. Film works including similarly developed  works
7. Scientific and technical representations e.g. drawings, plans, maps, outlines, etc.

The copyright comes into existance with the creation of the work, not depending on its publication. An unpublished manuscript contains the same copyright protection as a painting exhibited in a museum. In contrast to trademarks, designs and patents, the copyright does not have to be registered and no fees. The copyright automatically receives its validation, beginning with its creation. Through the so called „Berne Convention for the Protection of Literary and Artistic Works” (a treaty in International Public Law), the copyright is automatically protected in more than 160 countries. Proprietor of the copyright is the creator or the creators if it is a work that was created by more than one person. The proprietor must be a natural person. Important: Proprietor is not the employer of the creator. The copyright itself always remains with the creator. It cannot be transferred, which makes German copyright law very different from the anglo-american copyright law. The copyright owner can only grant certain rights of use regarding his work to third parties.

There are two possibilities: -    Application and registration at the GPTO (DPMA)/ OHIM / WIPO (so called Registered Designs). After application and registration, the design provides protection for 5 years, at first. Afterwards, the protection can be maintained, up to a maximum term of 25 years, by paying the obligatory extension fees every 5 years. -  No registration, but commencement of use. The right automatically emerges with its publication (meaning: an exhibition, offering it for sale, a press release) EU-wide, with a term of protection of 3 years (so called Non-Registered Design). Read why you need us to help you with the registration of a design.

A design is a commercial property right, which assigns an exclusive right of use for an esthetic design - meaning the outer appearance of products - to its proprietor. As designs, you could protect: Two- or Three-dimensional appearances, with a certain design or color, form, shape, material, logos, icons, surface structure (e.g. the outward appearance of a mobile phone, an electrical device, a handbag, a lamp etc.). BUT: No computer programs, no appearing attributes that only depend on their technical function, or those having to be rebuilt to enable the construction of another product.

™  is the abbreviation of „Trademark“; ®  is the abbreviation of „Registered“ In Germany those symbols do not constitute a trademark but a registration is required. The use of these symbols is though only permitted in relation to a registered trademark. Otherwise there is an infringement of Competition Law.

A trademark is obtained in most countries via a registration (not mere use). The protection of a  trademark covers only the territory and the goods and services for which the trademark was registered. On a territorial level there are different  possibilities: -     Application and registration at the German Patent and Trademark Office (GPTO) in Munich for German trademarks (http://www.dpma.de/).  German trademarks can claim protection in Germany only -     Application and Registration at the Office for Harmonization in the Internal Market (OHIM) in Alicante, Spain, for Community Trademarks (http://www.oami.eu/).  A Community Trademark or EU-Trademark covers all EU Member States (currently 27) -     Application and Registration at the World Intellectual Property Organization (WIPO) in Geneva, Switzerland, for International Registrations (http://www.wipo.org/).  Via an International Registration you can achieve the protection of the trademark in more than 85 countries. -     Acquisition of secondary meaning as a result of using a non-registrable or a descriptive trademark. Goods and services: The applicant has to indicate the goods and services for which he is seeking protection. The goods and services are subdivided in 45 classes (the so called „Nice Classification“). E.g. electronic goods are contained in class 9, paper goods in class 16, advertising services in class 35. You can research the classes and appropriate goods and services at OHIM's Euronice Database. Term of protection: The trademark is protected for 10 years from the day of its application. With payment of the renewal fee, the trademark can be protected endlessly every 10 years. Read why you need us to help you with a registration.

A trademark is a sign protected by law, serving to distinguish goods and services of one enterprise from those of another. Besides it implies the following functions of: -  origin -  communication -  guarantee There are different types of trademarks: -  Expressions, letters or numbers  (wordmark), -  A picture or logo (figurative mark), as well as the combination of words and pictures (word-design mark); -  A color or a combination of colors (color mark); -  Three-dimensional shapes (3-D-mark), -  Radio-jingles or a combination of a melody (sound mark); -  Slogans and even gestures (move mark)