The matter at hand
The German company Storck sought to register a figurative sign representing the shape of a white, grey and blue square-shaped packaging as a trade mark. The application for registration covered, inter alia, confectionery, chocolate, chocolate products, pastries and ice-creams.
The EUIPO examiner refused registration, taking the view that the mark lacked distinctive character. The refusal was upheld by the Examination Division, after which Storck appealed, unsuccessfully, to the Board of Appeal and the General Court. The latter dismissed Storck's appeal, holding that the mark did not significantly depart from the standard or customs of the sector and was therefore devoid of distinctive character.
In the appeal before the ECJ, Storck argued that the General Court infringed Article 7 (1)(b) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, by applying the stricter requirements set for three-dimensional marks consisting of the appearance of the product itself, to a figurative mark consisting of a two-dimensional representation of the product and containing a further graphic element intended to represent, according to Storck, a snow-covered mountain against a blue sky.
The judgment of the ECJ
The ECJ first of all notes that it already held in its judgment of 22 June 2006 in Storck v OHIM (C-25/05), that the criteria developed in case-law for assessing the distinctive character of three-dimensional trade marks consisting of the shape of the product itself, also apply in respect of figurative marks consisting of the two-dimensional representation of the product. The rule that only a mark which departs significantly from the standard or customs of the sector is not devoid of any distinctive character therefore also applies to figurative marks consisting of the two-dimensional representation of a product (paragraphs 35 and 36).
The ECJ holds that, contrary to what Storck claims, the presence of a graphic element on the figurative mark does not change this. In this connection, the ECJ refers to its judgment of 6 September 2012 in Storck v OHIM (C-96/11 P), in which it held that "where a three-dimensional mark incorporates a figurative element not consisting of a sign which is independent of the appearance of the products, but constitutes, in the mind of the consumer, only a decorative configuration, that mark cannot be assessed under the criteria for word and figurative marks which consist of a sign independent of the appearance of the products which they designate" (paragraph 40). In that regard, the General Court found that the graphic element was, for various reasons, likely to be seen by consumers as a mere decorative pattern and not as an indication of origin.
"Consequently (...) the General Court was entitled to find that the mark applied for was devoid of any distinctive character, such an assessment in relation to a two-dimensional mark containing a figurative element not being based, contrary to what Storck claims, on criteria not laid down in the case-law of the Court of Justice or too strict in relation to that case-law" (paragraph 43).