Three-Dimensional Trade Marks: The Mars and Lindt Cases

Three dimensional shapes have proved to be problematic for both the Court of Justice and the Court of First Instance. Council Regulation 40/94 on Community Trade Marks outlines the law relating to trade marks. Of particular importance is Article 4. Article 4 provides a list of signs, including shapes, words and designs, which may be trade mark protected. However, section 4 requires that signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. Article 7 (1) (a-k) provides absolute grounds for refusal. A trade mark will be not be registered if it lacks distinctive characteristics, the sign is incapable of distinguishing the goods or services of an undertaking from those of another, signs that contain language that is customary within the trade, shapes that result from the nature of the goods themselves, and a shape that is necessary to obtain a technical result. Three-dimensional shapes fall within the ambit of Article 4. These grounds of refusal were recently challenged by two confectionary companies who argued that their respective shapes, namely the Lindt Bunny and the Bounty Bar, were distinctive shapes that warranted trade mark protection. Both courts were to hold otherwise as the following discussion demonstrates.