Country: EU
Tribunal: European Court of Justice (ECJ)
Case No.: C-24/05 and C-25/05
Parties: August Storck KG v OHIM
Author: , R G C Jenkins & Co
First published: Make Your Mark newsletter, Autumn 2006, R G C Jenkins & Co

In June, the ECJ handed down judgment at last on the registrability of the Werther’s Original butterscotch sweet shape and packaging. Not entirely unexpectedly, the ECJ dismissed Werther’s appeal against the rejection of its CTM applications for the shape of the sweet and its twist-ended packaging. The ECJ held that the CFI had been right to consider its own practical experience of the shapes and colours of commonly sold sweets in assessing whether the Werther’s sweet departed significantly from the norm or customs of the sector, and was thus capable of acting as an indicator of origin.
The ECJ acknowledged that, following the ruling in Case C-353/03 Nestlé, a mark may acquire distinctive character through use in conjunction with another mark. Hence, the mere fact that the Werther’s sweet had been used in conjunction with the WERTHER’S ORIGINAL word mark was not fatal to the applicant’s efforts to prove acquired distinctiveness. However, the ECJ considered that it was harder to prove acquired distinctiveness in respect of shapes, which the public was less accustomed to perceiving as trade marks, especially where the shape was obscured by packaging at the point of purchase.
The mere fact that the packaging showed a two-dimensional image of a pile of the unwrapped sweets did not assist Werther’s, since the image was not used as a trade mark, but rather as a depiction of what was inside the pack in a form which did not show all the features of the mark applied for.