Publications > The curious case of the chocolate mouse and the spilled milk mark

Case O-302-07: Appeal to the Appointed Person, Amanda Michaels, 9 October 2007.
In the matter of International Registration No 852022 in the name of August Storck KG of Berlin to protect a device mark in Class 30.

In this case the Appointed Person overturned the decision of the Hearing Officer who, it was deemed, applied the wrong test for distinctiveness of a figurative mark. If a device mark alludes to the shape of a product but does not represent it, then the case-law about shape marks that represent goods, and to their two-dimensional variants, does not apply.

Background

The applicant, August Storck AG (of gold-coloured sweet wrapper infamy - ECJ Case C-25/05) failed at a hearing taken by Mrs L Adams on behalf of the Registry to overcome the notice it had received of total provisional refusal to provide protection in the UK for International Registration 852022. The mark was for a device, pictured below, which looks a bit like a chocolate mouse with a milk spill or even a cloud across its body. The colours white, light blue and brown were claimed and protection was sought in Class 30 in respect of: ‘Confectionery. Chocolate and chocolate products, pastries’.

The notice of refusal was based on an objection under section 3(1)(b) of the Trade Marks Act 1994, which reads: ‘The following shall not be registered - (b) trade marks which are devoid of any distinctive character’. It was said that the mark consisted ‘essentially of the device of a mouse being a representation of the goods, and so was ‘devoid of distinctive character for confectionery products in the form of a chocolate mouse’.

At the hearing, Mrs Adams maintained the Registry’s objections. She raised concerns about the capacity of the sign to function as a trade mark, in the light of the trade in novelty animal confectionery. This confectionery was primarily aimed at children or adults buying for children, the products being animal-shaped. In her written reasons for her decision Mrs Adams elaborated that the sign applied for would probably be taken as being decorative or indicative of the shape of the product rather than individualising the trader’s goods from those of another. She accepted that although the mark was not a faithful representation of the holder’s goods, it was not ‘sufficiently different from the norm’ to be capable prima facie of acceptance. There was not in her view anything distinctive about the arrangement of the constituent parts of the device nor in the colours claimed. The mark merely informs the customer that the goods sold under it are chocolate mice. Citing case law, in particular Case C-25/05 P, (August Storck KG v OHIM) referred to above, and which the applicant’s attorneys would know well, she concluded that ‘only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of distinctive character and I do not consider that to be the case here’.

The Appeal and the Appointed Person’s Decision

The main thrust of the appeal against the Registry’s intransigence was that they had got their facts wrong, i.e. that the device mark is not a two-dimensional representation of the product, or put another way, consisting of a sign not ‘unrelated to the appearance of the products it covers’. This error fatally undermines the Hearing Officer’s findings that the mark lacks distinctiveness.

The Appointed Person, Amanda Michaels, concurred. Indeed, her own findings on inspection of a sample of the products were that ‘the sweets are moulded roughly into the shape of an animal, which one might take to be a mouse, but which I think could just as easily be taken to be a cat’ [!]. This being so, the case law which had been cited by the Hearing Officer could not be applicable, since this was all to do with average consumers not being in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element. Case C-25/05 thus, in summarising previous case law, noted: ‘In those circumstances, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation no 40/94 [and its UK TMA equivalent of s. 3(1)(b)]. That case-law, which was developed in relation to three-dimensional trade marks consisting of the appearance of the product itself, also applies where... the trade mark applied for is a figurative mark consisting of the two-dimensional representation of that product. In such a case, the mark likewise does not consist of a sign unrelated to the appearance of the products it covers’. (par. 28-29) This had been cited by Mrs Adams. However, in the mind of Amanda Michaels, the figurative mark in question actually belonged to that category which ‘make an allusion to the nature of the products without being a representation, faithful or not, of the products in question’. The allusion was to a product made of chocolate that might be mouse-shaped or mouse-decorated, but it could also be an allusion, in the context of pastries, also part of the specification, to gingerbread. ‘In my judgment’, she continues, ‘the case-law does not indicate that such marks suffer from the same intrinsic problems as ‘shape’ marks and marks which represent a particular product in terms of their impact upon the average customer’.

The Registry’s Work Manual (‘Manual of Trade Marks Practice’), 3.8.1, states that: ‘The fact that a mark strongly alludes to characteristics of the goods/services is NOT a proper basis for a Section 3(1)(b) objection. Applicants can therefore expect an objection that the mark will be seen as a description of the goods/services listed in the application to be raised under Section 3(1)(c) or not at all’. No objection was raised under 3(1)(c), indicating that the mark is not descriptive.

The overall conclusion was that the Hearing Officer erred in principle by applying the wrong test. Exercising her prerogative to determine the case in the ‘interests of proportionality’ the Appointed Person judged that the mark which had ‘no more than a modest degree of distinctiveness’, and not being ‘subject to any specific level of linguistic or artistic creativity or imaginativeness’ (cf. SAT.1, Case c-329/02 P par 14) was not precluded from registration by section 3 (1)(b). No order as to costs was made.

This article first appeared in the January/February 2008 issue of the ITMA Review