Taking ‘Storck’ of the situation – back to square one?

In this decision, the General Court (GC) upheld the Board of Appeal's refusal on the ground of Article 7(1)(b) of the European Union Trade Mark Regulation (EUTMR) to register a figurative mark for square-shaped packaging comprising the colours blue, white and grey. The applicant, August Storck (Storck) was no stranger to such refusals, having previously been denied registration for a figurative mark for the shape of a gold-coloured sweet wrapper (C-25/05 P) and a 3D mark for the shape of the sweet itself (C-24/05 P).

Storck had applied for an international registration (IR) designating the European Union (EU) in class 30 for "Confectionery, chocolate, chocolate products, pastries, ice-cream, preparations for making the aforementioned products, included in this class". The white and blue colours were separated by a curved diagonal line, with grey at the edges of the packaging. Finding that the colours and shape did not render the mark distinctive, the Board of Appeal considered that the sign was merely a combination of presentational features typical of the packaging of the goods concerned.

Another dimension

On appeal to the GC, Storck submitted that the Board of Appeal had incorrectly applied the criteria for distinctiveness relating to 3D marks to the application and had wrongly assumed the mark to be a 3D mark rather than a figurative mark.

Referring to an earlier CJ decision also involving Storck (C-25/05 P), the GC noted that the case law applicable to 3D marks consisting of the appearance of the goods themselves also applied in this case, as the application denoted a figurative 2D representation of the goods such that it was not unrelated to the appearance of the goods.

Character assessment

The GC confirmed that the relevant public was the average EU consumer with a low level of attention, which was not increased by the impact of the goods on consumer health or their pursuit of pleasure. Indeed, the products in question were of regular, speedy and low-cost consumption.

Storck's contention that the application had not been assessed on its overall impression, but rather on its individual features, was rejected and the GC confirmed the Board of Appeal's finding that the mark applied for was insufficiently distinguishable from other shapes present on the market and lacked fanciful elements:

• Square-shaped packaging is common, obvious and evidently essential to the relevant goods.
• Colours rarely inherently convey origin. The three distinct colours in this application were commonplace and would be perceived as aesthetic or presentational elements such that their combination would not enable consumers to immediately distinguish origin.
• The curved diagonal line, alleged by Storck to represent an image of a snow-covered hill against a blue sky, was not described as such in the application. This interpretation would not be obvious to the relevant consumer, or different to other packaging images on the market. Further, the affixed image and grey edges were likely to be seen by consumers as simple, decorative patterns rather than indicators of origin.

Evidence perception

A survey of 1,000 participants conducted in Germany regarding the level of distinctiveness was previously held by the Board of Appeal to be insufficient in scope or extent to establish inherent distinctiveness across the EU. The GC confirmed this finding and observed the inappropriate nature of the evidence, noting that Germany was Storck's established and domestic market and that the majority of participants were already familiar with the mark prior to the survey. This meant inherent distinctiveness could not be proven as the evidence did not demonstrate that consumers had not merely become accustomed to the mark by virtue of its use; to be inherently distinctive, a mark must immediately indicate origin.

Storck submitted new survey evidence regarding the Austrian public's perception on the level of distinctiveness after the contested Board of Appeal decision, however this was deemed inadmissible. The GC may review the legality of Board of Appeal decisions, but not new facts. In any event, it is unlikely that the GC would have considered this additional evidence to have been sufficient in scope or extent to establish distinctive character.

Interestingly, it does not appear that Storck put forward a substantiated claim for acquired distinctiveness through use.

In short

This case demonstrates the challenges associated with securing registration for product packaging and is a good reminder for applicants to put forward claims and to ensure the suitability of survey evidence.

Case details at a glance

Jurisdiction: European Union
Decision level: General Court
Parties: August Storck KG v EUIPO
Citation: T-806/14
Date: 10 May 2016
Full decision: http://dycip.com/t-80614

Jurisdiction: European Union
Decision level: Court of Justice
Parties: August Storck KG v EUIPO
Citation: C-25/05 P and C-24/05 P
Date: 22 June 2006
Full decisions: http://dycip.com/c-2505p and http://dycip.com/c-2405p