The European Court of First instance (Court) has rejected Mars’ attempt to register the shape of its coconut chocolate bar, Bounty, as a trademark. In short, the Court held that the Bounty bar was just another chocolate bar, and there was nothing special or distinctive in its shape.
Mars argued that the distinctive elements of the Bounty bar were its rounded ends, and the three chevrons on top of the bar. The Court disagreed, holding that many other chocolate bars had rounded ends, and that the average customer would only view the chevrons as serving a decorative purpose. According to the Court, “the allegedly distinctive characteristics, namely the rounded ends of the bar and the three arrows or chevrons on top of it, cannot be sufficiently distinguished from other shapes commonly used for chocolate bars”.
Further, the Court held that because the bar was sold in an opaque wrapper, customers would pay more attention to the marks on the wrapper than to the shape of the bar.
Mars also failed to show that the shape had acquired distinctiveness through use, with the Court holding: “(Bounty is) devoid of any distinctive character and Mars has not proved that the shape has acquired distinctive character through use in the entire Community”.
Mars had originally filed for registration of the trade mark on 7 May 1998. The mark was registered on 24 April 2003. This was challenged by Ludwig Schokolade GmBH & Co. KG, a German chocolate maker which also produces chocolate-covered coconut bars for supermarkets such as Aldi. The case made its way through several hearings until the Court of First Instance’s judgement on 8 July 2009 confirmed that the trademark was invalid.
The decision highlights the difficulties in registering a shape as a trade mark, and is a lesson for future applicants on the need to gather substantial proof that the product’s shape is distinctive. Customers are more likely to pay attention to wrappings then the actual shape of the product. Let’s face it – how many of us can accurately describe the shape and decoration of our favourite chocolate bars?
