The European Court of Justice has rejected Hershey’s appeal against the European Office for Harmonisation in the Internal Market (Trade Marks and Designs) decision to deny a trademark for its foil wrapped kiss candy, finding it devoid of a distinctive character. Hershey has been ordered to pay costs.
The Office found that the sign reproduced in the trademark application represented the shape of a confectionery product wrapped in aluminium foil which Hershey described as a kiss device with plume.
The Office’s Board of Appeal concluded that such a sign would be perceived by consumers as common and usual for wrapping confectionery products of the kind in question.
Hershey argued it was denied the right to be fully heard and that the Office failed to recognise that its mark had been recognised by national trademark offices.
The court found the Office was under no obligation to invite Hershey to present its views on the words ‘kiss device with plume’ entered on the form by the applicant itself, since there did not appear to be an obvious error on the application.
In addition the court said that the Office “examiner’s decision of 12 May 1999 had already affirmed that the mark simply consists of the ordinary representation of a kiss, and that it is commonplace that kisses are round-shaped and wrapped in paper or foil as represented in the above mark. Thus, the reasoning of the examiner’s decision enabled the applicant to take cognisance of why its application for a Community trade mark registration was refused and to challenge that decision effectively before the Board of Appeal.”
The court has consistently held that trademarks registered in member states, or even in non-member States, are not a decisive factor for granting a Community trademark.
“Because of the unitary character of the Community trademark, the Community trademark regime is an autonomous legal system with a set of objectives peculiar to itself; it applies independently of any national system. Consequently, the eligibility of a mark for registration as a Community trademark must be assessed solely on the basis of the relevant Community legislation. It follows that national trademark registrations are factors which are not binding on the Office. They may nevertheless be taken into consideration in the examination of the absolute grounds for refusal,” the court held.
In this case, the court said the Office stated that it had taken into account prior national registrations. It dismissed Hershey’s criticism that the Office’s reasoning was inadequate and noted that Hershey had not given any specific information on the national registrations which would have called for a detailed examination by the Board of Appeal before it could be discounted.
The court also dismissed Hershey’s argument that the Office failed to comply with the obligation to avoid contradictory judgments.
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