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Home | ECJ sends chocolate bunny battle back to Austria

ECJ sends chocolate bunny battle back to Austria

12 June 2009

The European Court of Justice (ECJ) has ruled national courts should determine if trade marks have been applied for in bad faith - meaning two chocolate bunny makers must go back to Austria to settle a trade mark dispute.

Facts

Swiss chocolatier Lindt sued Austrian chocolatier Hauswirth for infringing its 3D community trade mark by producing a gold, chocolate rabbit similar in style to Lindt's own gold, chocolate bunny.

Hauswirth counterclaimed, saying Lindt's 3D trade mark should be declared invalid, alleging that the trade mark was registered in bad faith.

Hauswirth argued that it had been marketing chocolate bunnies since 1962, and that chocolate rabbits have been produced and wrapped in gold foil for decades.

Hauswirth therefore believes that Lindt's registration of a 3D mark for a gold, chocolate bunny in 2000 was made in bad faith, and should therefore be declared invalid.

Ruling

The ECJ ruled that in order to determine whether a brand owner has applied for a trade mark in bad faith, it is for the national courts to decide the matter, taking all relevant factors specific to the individual case into consideration, in particular:

• whether the applicant knows or must know that a third party is using an identical or similar trade mark capable of being confused with the trade mark being applied for
• whether it is the applicant's intention is to prevent that third party from continuing to use its trade mark
• the degree of legal protection enjoyed by the applicant and the third party

What does this mean?

The importance of the ECJ decision will only be felt once the Austrian court has applied the relevant factors to this case.

If Lindt is found to have applied to register its 3D chocolate bunny trade mark in bad faith, it will open up the way for similar claims to be made by third parties in defence of infringement claims brought by trade mark owners.

What should you do?

• register trade marks as soon as possible, especially if they are likely to be copied or replicated
• continue to monitor the market for any infringements of your trade mark
• document and keep details of when your trade mark or sign goes to market, design drawings and details of any competitor's products that are on the market at the same time

© Shoosmiths. This page is for general information: it is not legal advice. Please read our full terms and conditions for details of the disclaimers and exclusions which apply.

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Gary Assim

Partner
T: 03700 86 8411
I: +44 (0)1908 48 8411
E: gary.assim@shoosmiths.co.uk