It is important that you apply to register your product design as a trademark at the right time, or you may find yourself in the position that Lindt did last month. The Swiss chocolatier failed in its appeal to trademark its ubiquitous chocolate bunny when the European Union’s General Court ruled that the bunny shape, wrapping and decoration was not distinctive enough to identify their commercial origin. A rival chocolatier, August Storek, also had their application for a trademark for their rectangular chocolate blocks with a mouse in relief refused on similar grounds.

Both cases serve as a reminder to businesses to ensure that when developing new products, part of that development should include considering whether they can be protected from other people copying them or otherwise gaining an advantage from them. Failure to consider this at an early stage could leave those innovative designs incapable of protection.

To protect your product design, you have to show something unique which can be identified with you. You also need to ensure your application is not similar to someone else’s trademark that is already registered. An application can be blocked if it is similar and is likely to cause confusion with another organisation’s trademark. This could cause expense as you may be liable to costs if you decide to pursue your application and lose.

The General Court stated: “The General Court observes first of all that, concerning their shape, a rabbit, a reindeer and a small bell are typical shapes in which chocolate and chocolate goods are presented at certain times of the year, in particular at Easter and Christmas,” said the statement. “The General Court notes next that, in the sector of packaging of chocolate and chocolate goods, other undertakings wrap those goods in gold foil. Finally, with regard to the red ribbon with a small bell, the General Court states that it is common to decorate chocolate animals or their wrapping with knots, red ribbons and small bells. As mere decoration, the red ribbon with a small bell therefore has no distinctive character.”

So the lesson from these cases for DMA members is to consider the intellectual property rights in any new product being developed and if the product proves successful, apply for registration of the relevant intellectual property rights as soon as possible. You would make the application to register a UK or European trademark to the Intellectual Property Office in Newport, Wales. You also need to decide in what areas you wish to apply for protection, as you need to pay for a trademark registration and to renew it. There are 45 classes of protection, with the initial application in one class attracting a fee of £200 plus each additional class requiring a fee of £50. It doesn’t end there either – trademarks need to be renewed every 10 years.

However as the Lindt case proves, there is a very small trademark application window, which you ignore at your peril. Had Lindt made an application for trademark protection when it first started making the product, it may have had better luck. It did manage to trademark it in Austria in 2000 but European protection now seems unlikely.

Find out more from the DMA by contacting Janine Paterson on 020 7291 3360 or janine.paterson@dma.org.uk