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The Court of First Instance ruled that the three-dimensional shape of
the bar is devoid of any distinctive character and Mars has not proved
that the shape has acquired distinctive character through use in the
entire Community.
According to the Community Trade Mark Regulation (1), a trade mark which is devoid of any distinctive character may not as
a general rule be registered. Nevertheless, such a mark may be
registered if it has acquired, in respect of the goods or services for
which registration is sought, distinctive character following the use
made of it.
On 24 April 2003, following an application by Mars
Inc., the manufacturer of the Bounty chocolate bar, OHIM, the Office
which controls Community trade marks, registered the three-dimensional
shape of that bar as a Community trade mark.
In
December 2003, Ludwig Schokolade, a German chocolate maker, filed an
application for a declaration that the Community trade mark was invalid
on the ground that it was devoid of any distinctive character.
In
October 2007, OHIM declared the registration of the trade mark in
question invalid because the mark did not have the distinctive
character required as its appearance does not depart significantly from
the norms and customs of the relevant sector. Furthermore, it found
that the documents submitted by Mars were insufficient to demonstrate
distinctiveness acquired through use in connection with the goods
concerned.
Mars brought an action against that decision before the Court of First Instance.
The
Court points out that, for a three-dimensional mark, constituted merely
by the shape of a product, to be registrable, that shape must depart
significantly from the norms and customs of the sector to enable the
average consumer to distinguish immediately and with certainty the
product concerned from those of other undertakings. In the present
case, the allegedly distinctive characteristics, namely the rounded
ends of the bar and the three arrows or chevrons on top of it, cannot
be sufficiently distinguished from other shapes commonly used for
chocolate bars.
Furthermore,
the Court states that the acquisition of distinctive character through
use of a mark requires that at least a significant proportion of the
relevant section of the public identifies the goods or services
concerned as originating from a particular undertaking because of the
mark. In addition, the acquisition of that distinctive character must
be demonstrated in the part of the Community where the mark was
initially devoid of any such character. Given that neither the market
shares of the Bounty bar nor the rate of recognition of the product
concerned are uniform throughout the Community, it is not possible to
extrapolate to the rest of the Community market the results of the
surveys carried out only in six of the then fifteen Member States,
namely the United Kingdom, Belgium, France, Germany, Italy and the
Netherlands.
In
so far as the shape of a Bounty bar is not distinctive in the entire
Community, Mars should have filed more evidence as regards the other
nine States which were part of the Community at the time to show that
the shape had acquired distinctive character through use in the entire
Community.
Accordingly, the Court dismissed the action.
(1) Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78,
p. 1).
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