Chocolate: the “flavour of the month” in European intellectual property law too …

It’s good to see that European intellectual property lawyers are grappling with issues surrounding the appearance and packaging of chocolate as much as we are here in Australia (albeit in a slightly different context).

Last week the European Court of Justice (ECJ) handed down its findings on what factors courts should take into account in determining whether a company has acted in “bad faith” in registering a mark (Case C-529/07 Chocoladefabriken Lindt & Spruengli).  The case, which has been remitted to an Austrian court for further determination, concerns the well-known Swiss chocolate manufacturer, Lindt – best known for its small Easter bunny wrapped in gold foil and decorated with a red ribbon and miniature bell.

Lindt began producing its chocolate bunnies in the 1950s and now sells millions of them worldwide each year.  In 2001, Lindt was granted a European trade mark for the three-dimensional form of its packaged Easter bunny.  Since then, Lindt has invested considerable time and effort in attempting to prevent other chocolatiers from producing similar Easter bunnies.  In 2003, Lindt commenced proceedings in Austria against a local chocolatier, Hauswirth, for producing their own gold-wrapped Easter bunny.

In its defence, Hauswirth argued that Lindt acquired its trade mark in “bad faith”, as Lindt knew that similar products existed at the time of its application.  The proceedings bounced around the Austrian judicial system for several years until recently, when an Austrian court asked the ECJ to intervene and respond to the question of whether a company knowing, or being in a position to know, that the trade mark they are applying for is similar to one already being used by a competitor, would constitute “bad faith”.

In considering this issue, the ECJ made it clear that the ultimate question as to whether the Lindt trade mark was obtained in “bad faith” would be an issue for the Austrian court to determine.  However, the ECJ did give guidance as to some of the more important factors that need to be taken into account in determining whether a company has acted in “bad faith” in registering a mark. These include:

  • the fact that the applicant knew, at the time of filing the application, that a third party was using an identical or similar sign for an identical or similar product, where that sign was capable of being confused with the applicant’s sign;
  • the applicant’s intention to prevent that third party from being able to use the sign in the future; and
  • the degree of legal protection already enjoyed by both the third party’s sign, as well as the applicant’s sign.

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