This article first appeared on WTR Daily, part of World Trademark Review, in (May/2016). For further information, please go to www.worldtrademarkreview.com

On May 10 2016 the General Court ruled in August Storck KG v EUIPO (Case T-806/14). The court confirmed the EU Intellectual Property Office’s (EUIPO) rejection of a trademark registration comprising white and blue square-shaped packaging for lack of distinctive character under Article 7(1)(b) of the EU Community Trademark Regulation (207/2009).

In 2013 August Storck KG filed an application for an international mark (designating the European Union) for goods in Class 30 – specifically, “confectionery, chocolate, chocolate products, pastries, ice-creams, preparations for making the aforementioned products, included in this class”.

The figurative mark consisted of a blue and white squared shape of a packaging of chocolate (see below).

The first-instance examiner rejected the mark on August 14 2013 due to the absence of distinctive character in relation to the goods claimed in Class 30. In spite of the applicant’s arguments in reply, the EUIPO Examination Division confirmed the refusal on January 13 2014.

The applicant appealed. However, the EUIPO Fifth Board of Appeal dismissed the appeal and confirmed that the mark had no distinctive character for the relevant average public (ie, with a low level of attention) since it was a mere combination of features that were typical of the packaging of the relevant goods already on the market, without any fancy element.

The applicant had submitted a survey carried out in Germany in order to prove the level of distinctiveness of the mark. However, the Board of Appeal considered the submitted survey insufficient to demonstrate acquired distinctiveness across the European Union.

Arguments before General Court
In its action before the General Court, the applicant first argued that the Board of Appeal wrongly considered the mark to be a three-dimensional (3D) mark – and not a figurative mark – and wrongly applied the criteria relating to 3D marks to the contested mark.

The applicant further contested that the Board of Appeal did not consider the overall impression given by the mark, instead considering the features of the mark separately.
The applicant held that the shape of the packaging of the mark was unconnected with its function; the fact that it could have been designed in a different way, the applicant argued, contributed distinctiveness to the applied mark. Further, the use of the colours blue and white may serve as an indicator of origin, since colours usually catch a consumer’s attention when they are faced with a range of similar products.

General Court decision
The General Court confirmed the EUIPO’s decision. It held that the ‘relevant public’ was the average EU consumer with a low level of attention – not, as claimed by the applicant, a high degree of attention. The mark consisted merely of a combination of presentational features without any fancy elements to provide distinctiveness. In addition, the applicant did not demonstrate that the blue and white colours could be perceived as an indication of origin, since the public was accustomed to seeing colourful elements on the goods concerned.
The court upheld the EUIPO’s rejection of the applicant’s claim that the device on the packaging could be perceived as a snow-covered hill and a blue sky, since it was not an immediate and obvious interpretation.

It further held that the results of the public survey were insufficient to establish distinctiveness across the European Union, since it was restricted to Germany.

Finally, as far as 3D marks are concerned, the court confirmed that “the more closely the shape for which registration is sought resembles the shape most likely to be taken by the goods in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Article 7(1)(b) of [the Community Trademark Regulation]”.
The applicant’s action was thus dismissed.