European Court makes trade marks ruling on BOUNTY
10/07/2009

On 8 July 2009, the European Court of Justice’s Court of First Instance handed down another decision that relates to the registerability of shapes as trade marks. The matter related to an appeal that was brought against a decision of the European Trade Mark Registry’s (OHIM) Board of Appeal to cancel a trade mark that consisted of the shape of Mars Inc's famous BOUNTY chocolate.

The registered trade mark (front portion indicated below) displayed three "chevron" designs on the top and, according to Mars, consisted of uniquely rounded edges. The mark originally proceeded to registration on the basis that the “chevron” designs and the shape of the chocolate had acquired a distinctive character through extensive use in the course of trade.

The Court upheld the OHIM Appeal Board's decision to cancel the trade mark following an application seeking its cancellation by Ludwig Schokolade GmbH & Co. KG, a competitor of Mars. The Court held that the shape of the chocolate did not deviate substantially from shapes that are customary in the trade. The three "chevron" devices were held not to perform a trade mark function and more likely to be perceived by consumers to be decorative features that do not function as a badge of origin.
A main consideration in making its ruling was that the Court found that the evidence of acquired distinctiveness that Mars produced was insufficient. Mars' evidence related mainly to market surveys and research that was conducted in the United Kingdom, Belgium, France, Germany, Italy and the Netherlands, the argument being that the evidence, by analogy, could be extended to all 15 member states for which registration was sought. The Court rejected this argument and referred to evidence that indicated that Mars' market share differed substantially across the region. To prove that the mark was distinctive in the Community, Mars would have been required to prove distinctiveness on a country by country basis. It had failed to do so.

Christophe van Zyl
Professional Assistant
Christophe-v@adamsadams.co.za