Case C-2/12, Trianon Productie – trade marks and 3D shapes

Can the particular shape of a chocolate stick be protected under the EU Trade Mark Directive 89/104?

Facts

Both the claimant and defendant companies make chocolate-sticks. In 1998 the defendant French company, Revillon, began making theirs in the form of ‘un sarment de vigne’ – a vine-shoot. The chocolate-sticks came in different flavours and were sold by the box. The box’s packaging depicted a bunch of chocolate-sticks tied together with a coloured ribbon, and bore the names both of Revillon and Les Sarments. In 2003, Revillon registered a three-dimensional shape of a product mark evoking ‘un sarment de vigne’.

In 2004 the claimant Dutch company, Trianon, also started to sell chocolate-sticks. Trianon’s too came in various flavours, and were sold by the box. The packaging also depicted a ribboned-bundle of chocolate-sticks but bore the names of Trianon and Les Rameaux. In 2006 Trianon commenced legal proceedings against Revillon, alleging the invalidity of Revillon’s mark. Trianon’s action had two heads of claim. First, Revillon’s stick-mark was devoid of distinctive character for the purposes of the Benelux IP Convention. Secondly, the form of Revillon’s stick could not be a trade mark under Art. 2.1 of that Convention because a mark cannot be granted where the sign consists exclusively of a shape that gives ‘a substantial value’ to the goods.

The Dutch courts could not agree on how the law should be interpreted. At first instance the Den Bosch District Court agreed with the Dutch company, Trianon, and found the mark invalid on the basis that Revillon’s registered shape was devoid of distinctive character. However, at the Den Bosch Court of Appeal both of Trianon’s claims were rejected and, influenced by Benelux trade mark law, the Den Bosch Court of Appeal overturned the District Court’s judgment.

The first plank of the Den Bosch Court of Appeal’s judgment held that any form which differed in a significant way from the norm in the relevant industrial sector fulfilled the essential function of denoting origin, and thus had a distinctive character. Here, Revillon’s stick-form was considerably thinner than the majority of those in the sector, and none was in the form of a vine-shoot. Thus, the stick-form was not the mere variation of the norm for stick-forms; its original appearance added value to the product through which it gained a distinctive character. In that respect, this stick-form could fulfil the function of denoting origin.

The second plank of the Den Bosch Court of Appeal’s judgment held that Trianon had insufficiently supported its claim. However, in principle, a potentially attractive form of chocolate could not be said to exert a real influence on the intrinsic value of the good because the substantial value of chocolate lies in its taste and substance. Since Trianon had not proved otherwise, their claim failed.

The Den Bosch Court of Appeal’s judgment was appealed to the Dutch Supreme Court. The Supreme Court’s Advocate General in this case was IP law expert Professor Verkade. He flagged up that Revillon’s mark had already started to generate case law in both France and Germany. He went on to explain, in a richly footnoted Opinion, why he thought it was no longer safe to assume that Benelux trade mark law corresponded to the current approach of EU trade mark law.

In light of his Opinion, the Dutch Supreme Court acknowledged that the Den Bosch Court of Appeal had applied the correct test for assessing the distinctive character of a shape (Joined Cases C-456/01 P and C-457/01P Henkel; Case C-25/05 August Storck; and Joined Cases C-53/01, C-54/01 and C-55/01, Linde). For that assessment there were no other requirements than those applicable to two dimensional marks (Linde). It was incorrect to attach importance to consumers being able to attribute the product for it will suffice if the mark enables the public to identify the specific company as the source and thus to distinguish this from other companies (Linde).

Questions Referred

However, the Dutch Supreme Court was unsure how to apply Article 3(1)(e)(iii) of Directive 89/104/EEC. According to the Curia website, it therefore, asked:

As regards the grounds for refusal or invalidity in Article 3(1)(e)(iii) of Directive 89/104/EEC,  as codified in Directive 2008/95  – according to which (shape) marks cannot consist exclusively of a shape which gives a substantial value to the goods – do these concern the reason (or reasons) for the purchasing decision of the relevant public?

Is a shape a ‘shape which gives substantial value to the goods’ within the meaning of the provision referred to above

(a) only if that shape must be regarded as the main or overriding value in comparison with other values (such as, in the case of foods, their taste or substance); or

(b) also where the goods have other values, which must be regarded as equally substantial, in addition to that main or overriding value?

Is the answer to Question 2 to be determined on the basis of the view of the majority of the target public, or can the courts rule that the view of just part of that public is sufficient for the value concerned to be deemed ‘substantial’ within the meaning of the provision referred to above?

In so far as the answer to Question 3 falls to be answered as indicated in the latter part of that question, what requirement is to be applied as regards the size of the relevant part of the public?

Update
The Dutch Supreme Court has withdrawn its Questions. The case was taken off the CJEU’s list on 19 April 2012.

Update
In 2013, the Dutch Supreme Court sent another reference to the CJEU about trade marks and 3D shapes. See further, Case C-205/13, Hauk – the evolving shape of trade mark law.