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The Lindt and F1 case studies: European Court of Justice jurisprudence on the distinctive character of trademarks

This year, the European Court of Justice has made two rulings which are particularly important, given that they involve two symbolic trademarks belonging to two world-famous companies.
Lindt versus OHIMThe first case involves a three-dimensional Community trade mark and affects the Lindt & Sprüngli AG chocolate company. The European Court of Justice upheld the decision of the General Court, which rejected the claim brought by the company and the refusal of the Office for Harmonisation of the Internal Market (OHIM) to grant the three-dimensional community mark requested.

According to the OHIM, gold-coloured bunny with a red bow is devoid of any distinctive character to be recognised as a trademark. As far as the OHIM is concerned, an average consumer would not interpret the shape as a trademark but as a traditional figure associated with Easter. Neither did the documentary evidence submitted by the applicant lead to the conclusion that the mark for which registration was sought, demonstrate distinctive character through use. It should be noted that the evidence submitted must relate to the entire European Union, and may consist of market research studies, surveys, investments in advertising, etc., which would prove that the general public perceives the sign as a trade mark.

F1 versus F1.

The other important ruling concerned whether the “F1” word mark is descriptive, generic and void of distinctive character for matters and products involving motoring.

In this case, the European Court of Justice ruled against the arguments of the OHIM and set aside the judgement of the General Court (GC), on the grounds that the registration of national trademarks is solely a matter for the Member States and that, therefore, OHIM and the General Court are not competent to deal with either the registration or the declaration of invalidity of those trademarks with regard to the products or services in question.

The CJEU referred the case back to the General Court for the appropriate ruling, ordering it to take these statements into consideration.

Carmen Sánchez-Puelles