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Friday, October 30, 2009

Happy Halloween From Attorney Taylor

As Halloween is fast approaching, my thoughts go to countless amounts of chocolate and treats. So, in honor of this cavity-induced holiday, I thought it would be a perfect time for a tasty trademark issue, even if it is about bunnies, and not pumpkins.

The issue involves whether a chocolate bunny can in fact be trademarked.

Currently, Switzerland’s Lindt & Sprungli are battling chocolate maker Hauswirth of Austria over the gold-wrapped chocolate rabbits, with ribbons around their necks that we all know so well. In 2001, Lindt received a trademark on the three-dimensional shape of its bunny. Following its trademark ruling, Lindt went into full-scale legal attack on many companies which make similar-looking items.

Hauswirth has stayed its ground and questioned the trademark’s validity, arguing that Lindt’s trademark was granted in bad faith (“bad faith” occurs when the applicant knew that identical or similar products already existed in other parts of the European Union, or if the applicant intended to prevent other companies from selling such products).

Historically, three-dimensional trademarks have been surrounded by a slew of controversy. There have been similar problems with chocolate bars, bars of soap, and even Lego toy blocks. And while Americans and Europeans allow logos, graphics, words, and even shapes (in theory), to be trademarked, courts have been hesitant to go down the three-dimensional route. Trademark law does not allow a three-dimensional shape to be registered if the shape is functional. In support of its mark, Lindt says its bunny deserves a chance, and that it is quite complicated to manufacture, citing considerations of structural integrity and high-speed foil wrapping devices.

So, what was the ultimate decision in this delectable chocolate-covered fiasco? Well, that is still being decided by Austria’s high court, which must rule on the bad faith issue, specifically when filing the application for trademark, the relevant factors to consider are:

--the fact that the applicant knows or must know that a third party was using an identical or similar sign for an identical or similar product cable of being confused with the sign for which registration is sought;

--applicant’s intention to prevent that third party from continuing to use such a sign;

--the degree of Legal protection enjoyed by the third party’s sign and by the sign for which registration is sought.

So, before we peel off those foil and plastic wrappers from all those tiny little candies, perhaps we should give a thought to what is inside and how it got there. And perhaps maybe we will get a decision on that very thing just in time for the Easter Bunny.

Kelly L. Swan Taylor, Esq.

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