When browsing the supermarket shelves we are confronted with chocolate products in all kind of shapes, such as bunnies, hearts and chickens. Along with the fact that for most people chocolate is a sweet and lovely treat, it is interesting to take a closer look at the shape of chocolate from a legal point of view as well.
Would you for instance be able to distinguish the shape of a chocolate product from those of a different origin? If you do, you are most probably not the average consumer in the view of the Court of Justice of the European Union (CJEU).
After all, both the General Court and the CJEU, (formerly the ECJ) are to say the least not a big fan of three-dimensional figurative trade marks (“shape marks”). In general both European courts find it hard to believe that the average consumer is actually able to perceive a shape as an indication of origin. Recent case law shows that this concern has also been applied to different shapes of chocolate. Just before Christmas last year the General Court ruled that rabbits, reindeer and mice are typical shapes in which chocolate products are presented particularly at Easter and Christmas, and are therefore devoid of distinctive character (General Court 17 December 2010, cases T-336/08, T-337/08, T-346/08, T-395/08 Chocoladefabriken Lindt & Sprüngli v OHIM and T-13/09, Storck v OHIM).
Although in theory it is confirmed that the same criteria of distinctiveness apply to all categories of signs, the CJEU finds that it may be more difficult in practice to establish distinctiveness in relation to a shape mark than for a word or figurative mark. Consequently, specific requirements are imposed on shape marks before they can be considered to have met these criteria. For instance the shape has to depart significantly from the norm or customs in the sector in order to be able to fulfill its essential function as a trademark. In addition to this, the relevant public should be able to distinguish immediately and with certainty the shape of the product concerned from those manufactured by other producers. As to chocolate: the well known and widely sold Bounty chocolate bar could not meet these criteria and was considered as being devoid of any distinctive character by the General Court. 
Contrary to the CJEU and the General Court, the Court of Appeal of Den Bosch, in the Netherlands apparently has a “sweet tooth” since it considered that a chocolate stick in the shape of a vine twig should be considered a valid trademark .
In the light of the current case law of both the General Court as the ECJ this decision is very remarkable.
The chocolate stick was registered by the French company Revillon as a Benelux trademark in 2003:
At first instance the Dutch company Trianon alleged the invalidity of this trade mark before the District Court of Den Bosch and requested the Court inter alia to cancel the trade mark due to lack of distinctive character. The Court ruled in favour of Trianon and considered that the shape of the chocolate stick was devoid of any distinctive character on the basis that the shape concerned was not sufficiently uncommon from other chocolate stick-shaped products available on the market. Consequently the average consumer would not be able to perceive the chocolate vine twig as an indication of origin.
However, the Court of Appeal reversed the judgment of the District Court. Unlike the District Court, the Court of Appeal found that the shape of the chocolate stick significantly differs from the chocolate stick-shaped products of other manufacturers. The Court was of the opinion that most of the chocolate stick-shaped products were thicker than the chocolate stick of Revillon and that none of the shapes presented to the Court by Trianon were slim and twisted with chocolate protrusions. As a result of this the Court came to the surprising decision that the trade mark concerned is capable of fulfilling the function of indicating origin and therefore is a valid trade mark. This is all the more surprising, since the much better known chevrons of the Bounty chocolate bar did not save that shape mark from invalidity, whereas the protrusions of the Revillon mark apparently could do the trick.
The Court did not take into account the results of a market survey such as that submitted by Trianon which showed that only 5% of the respondents were able to link the shape of the chocolate vine twig to Revillon. The Court stated that the fact that the chocolate vine twig is able to distinguish a chocolate product from products of a different origin is decisive for the validity of the trade mark. 
In addition to this, the Court also rejected Trianon’s claim that the shape of the trade mark gave substantial value to the product. According to the Court the essential value of chocolate lies in its taste and substance, not in its shape. The Court ruled that only one aspect of a mark can be of essential value, whereas Trianon considers that there may be more than just one; taste and attractive shape could both be of essential value for the trade mark, in which case it would be invalid.
So far life is sweet for owners of shape marks in the Benelux. However, in the light of the fact that the judgment is not in line with current case law of the European Courts, Trianon lodged an appeal to the Dutch Supreme Court which is currently pending. As you know, life is like a box of chocolates, you never know what you’re going to get. So we will have to wait for the decision of the Dutch Supreme Court to know whether life remains sweet for the trade mark owners in the Benelux…
 General Court, 8 July 2009, T-28/08 (Mars vs. OHIM)
 Court of Appeal Den Bosch, 12 January 2010 (Revillon-Trianon)